Australian Broadcasting Corporation v Commercial Radio Australia Ltd

[2010] ATMO 46

TRADE MARKS ACT 1995

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

Re:Opposition by AUSTRALIAN BROADCASTING CORPORATION to registration of trade mark application 1113206 (35, 38, 41, 42) - COMMERCIAL RADIO AUSTRALIA - filed in the name of COMMERCIAL RADIO AUSTRALIA LTD.

Delegate:	Heath Wilson
Representation:	Opponent: Julian Cooke of Counsel instructed by Baker & McKenzie, Solicitors. Applicant: Rohan Singh of Spruson and Ferguson, Patent and Trade Mark Attorneys.
Decision:	2010 ATMO 46 Section 52 opposition - grounds pursued under sections 43, 58A and 60 of the Trade Marks Act 1995 – Trade mark does not carry an inherent connotation - whether honest concurrent use under s44(3)(a) provides an exception to a successful s58A ground – 58A established and provisions of s44(3)(a) applicable – Reputation under section 60 established and Trade mark refused – Costs awarded against applicant.

Background

1. Commercial Radio Australia Ltd (“the applicant”) filed trade mark application no. 1113206: on 10 May 2006 claiming the following services:

   Class: 35 Professional association services being the promotion of interests of commercial radio broadcasters and commercial radio stations and people associated with commercial radio broadcasters and commercial radio stations; advertising, marketing and promotional services, including the dissemination of advertising matter; business management, advisory and consultancy services; technology based business development and consultancy services; business administration; office functions; compilation of information in relation to radio, broadcasting, telecommunications, electronic communications and transmission and systemisation of communications, industry compliance and regulations; strategy consulting

   
   Class: 38 Information and technical services in relation to broadcasting; transmissions of information via on-line services in this class; transmission of information by means of electronic communications networks including the global computer network; none of the aforesaid services including the broadcasting of radio programmes

   
   Class: 41

   Education and providing of training; entertainment services; including the organisation of and convening of trade fairs, exhibitions, competitions and the like; publishing, including on-line and electronic publishing; production of radio programs, including digital radio programs; recording studio services; information, advice and consultancy, including online information relating to education, training, entertainment, news and current affairs and politics in this class

   
   
   Class: 42

   Legal compliance, regulatory and licensing services, including the development of commercial radio codes of practice, program standards and licensing conditions; legal research services; development, planning and design of telecommunications, information and transmission services and telecommunication networks

2. The above trade mark application was determined to be deceptively similar to the opponent’s trade mark registration no. 997219 during the examination stage. As a consequence, the ground for rejection under section 44 of the Trade Marks Act 1995 (“the Act”) was raised by the examiner. The details of this cited trade mark are:

Trade Mark	Filing Date	Class / Statement of Services
RADIO AUSTRALIA	8.04.04	Class: 38 Telecommunications, computer aided and digital transmission of messages and images, radio and television programming; broadcasting and telecasting services; news agencies and wire services; telecommunications services provided by global computer networks Class: 41 Production of films, videos (including music videos), audio tapes, compact discs and other recordings; production and presentation of live performances, concerts and other stage events; production of radio programmes, television programmes and global computer network programmes; organisation and conduct of competitions; organisation and conduct of seminars and conferences; publication of books, magazines and texts including publication by electronic means including via global computer networks; organisation of exhibitions for cultural or educational purposes; dissemination of information for training, educational, entertainment and recreational purposes, entertainment services being planning of parties and special events Endorsements: Provisions of subsection 41(5) applied.*

1. The applicant then produced evidence consisting of a statutory declaration of Joan Warner, the Chief Executive Officer of the applicant (with exhibits “JW-1” to “JW-7”) dated 12 April 2007. The opposed application was accepted on the basis of prior use under section 44(4), and subsequently advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 10 May 2007. The Australian Broadcasting Corporation (“the opponent”) then filed a notice of opposition on 31 July 2007, nominating all available grounds.

   Evidence

   Evidence in Support

   ·Statutory Declaration of Christine Gabrielle Pintabona dated 31 January 2008 with Annexures A to K (“the Pintabona declaration”).

   Evidence in Answer

   ·Statutory Declaration of Joan Warner dated 2 March 2009 with Exhibits JW-1 to JW-10. (“the Warner declaration”).

   Evidence in Reply

   ·Statutory Declaration of Hugh Bennett and Hanh Tran dated 15 July 2009 (“the Bennett Declaration”).

   Reasons

2. At the Sydney hearing held on 19 March 2010, Julian Cooke of Counsel appeared for the opponent instructed by Baker and McKenzie, and Rohan Singh of Spruson and Ferguson, Patent and Trade Mark attorneys appeared for the applicant. I heard the matter as a Delegate of the Registrar of Trade Marks. While the opponent had nominated all possible grounds of opposition, it specifically pressed only sections 43, 58A and 60 at the hearing, which I will address in detail. The opponent bears the onus of establishing one of these grounds of opposition on the balance of probabilities.[1] For completeness, I find that the remaining grounds nominated by the opponent in the notice of opposition have not been established.

   [1] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26].

1. Section 43: Trade mark likely to deceive or cause confusion

   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.

2. Mr. Cooke submitted that the reputation in the opponent’s trade mark was such that a connotation would arise from the applicant using the expression “Radio Australia” in its trade mark. However, to establish a ground of opposition under section 43 of the Act, there must be an inherent connotation within the trade mark. Wilcox, Kiefel and Emmett JJ in Big Country Developments Pty Ltd v TGI Friday's Inc (2000)[2] stated:

   The case on deception and confusion sought to be made by Big Country and Friday’s Australia in the present proceedings is one that falls outside the reasons specified in those sections. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by s43.

   [2] Big Country Developments Pty Ltd v TGI Friday's Inc (2000) 48 IPR 513 at 521 (and later affirmed by Gyles J in Pfizer Products Inc v Karam (supra) at [53]).

3. The opponent has not pursued any argument under this ground other than that a connotation results from the similarity of the applicant’s mark to the opponent’s trade mark due to its accrued reputation. A section 43 ground may be appropriate if the connotation within the applicant’s trade mark would lead the consumer to mistakenly believe that the opponent sponsors or was in some way affiliated with the applicant as addressed in Amalgamated Television Services Pty Ltd v Clissold[3]. In that case, while section 60 was unsuccessful, there was still found to be a connotation with the conflicting trade mark under section 43 of the Act. However, on the facts and the strength of the opponent’s evidence, I do not find that a connotation of that nature exists in the “Commercial Radio Australia (& device)” trade mark. On the balance of probabilities, I find that the ground of opposition under section 43 has not been established.

   [3] Amalgamated Television Services Pty Ltd v Clissold (2000) 52 IPR 207.

4. Section 58A: Opponent’s earlier use of similar trade mark

   (1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

   (a)subsection 44(4); or

   (b)a similar provision of the regulations made for the purposes of Part 17A.

   Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

   (2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

   (a)first used the similar trade mark in respect of:

   (i)similar goods or closely related services; or

   (ii)similar services or closely related goods;

   before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

   (b)has continuously used the similar trade mark in respect of those goods or services since that first use.

   Note:For predecessor in title see section 6.

5. Section 58A is a relatively new and untried ground of opposition introduced by section 29 of the Trade Marks Amendment Act 2006. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 sheds some light on the purpose of the section (at 4.9.2):

   As it stands the owner of the earlier registered mark has no basis on which to oppose registration of a trade mark accepted under subsection 44(4), even where their use pre-dates that of the accepted application.

6. This intended purpose was affirmed by the Hearing Officer in the STEPS[4] decision as follows:

   The new ground of opposition undersection 58Awas intended by the drafters to complement the ground available to common law owners under section 58. It attempts to address an apparent anomaly which previously existed within the opposition framework. This allowed a party to achieve acceptance of their deceptively similar trade mark in the face of an earlier trade mark, based onprior use, which then became immune to an opponent’s claim to ownership in terms of section 58, because it did not fall into that provision’s strict parameters of substantial identity…

   [4] Southern Training Employment & Placement Solutions Inc v STEPS Disability QLD Inc [2009] ATMO 6 (at 31).

7. If not for the introduction of this ground, the opponent in this matter would only have been be able to rely on the reputation in its trade mark under section 60, as the opposed application and “Radio Australia” are clearly not substantially identical, (a requirement for section 58). However, the application of section 58A is narrow, in the sense that it is only available as a ground of opposition if the opposed trade mark has been accepted under the provisions of subsection 44(4) - as has occurred here. The opponent’s mark RADIO AUSTRALIA was the conflicting trade mark to the opposed application at the examination stage, and the opponent must now establish that it has used this mark prior to the first use of the applicant’s trade mark. The Act requires both a consideration of the similarities between the conflicting trade marks, and any prior common law use of the opponent’s mark on similar services to that of the applicant’s mark.

8. For the applicant, Mr. Singh argued that as section 44(4) was only applied in relation to certain services determined by the examiner as conflicting, the opponent may therefore only argue section 58A in relation to those specific services, and not the remaining specification. However, once the section 44(4) endorsement is applied to a trade mark, it does not specifically refer to the conflicting services and is applicable to the trade mark application as a whole. The initial examination under section 44(4) solely considers the applicant’s prior use at common law (i.e. before the priority date of the conflicting mark), and it would contradict the legislative intention of section 58A to limit the potentially conflicting services under which the opponent may establish prior use in opposition proceedings. Perhaps most importantly, the wording of ss58A(2) of the Act clearly indicates that the question of similar goods/services (and whether the trade marks are deceptively similar) is reconsidered in the context of the respective parties’ use at common law.

   Deceptively Similar

9. Without pressing any argument that the trade marks are substantially identical, the opponent argued that its trade mark “RADIO AUSTRALIA” is deceptively similar to the applicant’s trade mark. In Australian Woollen Mills[5], Justices Dixon and McTiernan stated:

   the marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

   [5] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 Dixon and McTiernan JJ (at 658).

10. The expression RADIO AUSTRALIA is, on its face, one which other traders in the radio industry may desire to use in the ordinary course of trade. It is relevant that the opponent’s trade mark has been registered under the provisions of section 41(5) of the Act on the basis that it did or would distinguish the relevant services as being those of the opponent. If there is any doubt regarding whether the trade mark of the opponent lacks the inherent capacity to distinguish its services from those of other traders, I am satisfied that the extent of evidence provided by the opponent in these proceedings affirms its capacity to do so.

11. The opponent’s word mark “Radio Australia” is wholly encompassed within the applicant’s trade mark[6], albeit with the words having a particular placement. The word “Commercial” at the prefix of the applicant’s trade mark does not sufficiently differentiate the two marks as it would still be viewed by the consumer as a descriptive term overall. The presence of the device in the applicant’s trade mark does add some differentiation, but it is more than likely that the marks will be referred to by their word elements.[7] There is a danger that the average consumer would view these trade marks as being related to each other, with the applicant’s mark being a commercial version of the opponent’s trade mark. The overall impression is one of similarity and as a result, I find that the trade marks are deceptively similar.

    [6] See Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495; 31 IPR 375.

    [7] E.g. Sizzler Restaurants International Inc v Sabra International Pty Ltd (1990) 20 IPR 331 (Reg).

    Prior Use on Conflicting Services

12. The Warner declaration declares that the earliest date of first use for the applicant’s trade mark was July 2002, and attests that this use has been continuous since that date in relation to the services in classes 35, 38, 41 and 42. The applicant’s evidence indicates use on radio advertising promotions, media releases, tourist incentive schemes, and on the Internet providing information regarding online radio.

13. The opponent’s counsel highlighted various examples of use of its trade mark RADIO AUSTRALIA, the earliest example being in 1945 for providing its international shortwave radio broadcasting service. In 1996 its services had extended to the Internet via a multilingual website,[8] and there were a substantial number of weekly visitors to this website from 2000-2002 (prior to the applicant’s first use of its trade mark).

    [8] Pintabona Declaration, paragraph 13.

14. Under section 58A, the opponent must also establish that its use in relation to those earlier services has been continuous since that first use. However, the opponent’s evidence between 1945 and 1995 is patchy and only appears to be in relation to radio broadcasting services. It has been recognised that it is difficult to quantify the concept of continuous use in the context of s44(4), and I find that difficulty to be no different under subsection 58A(2)(b). Despite this, even if the opponent’s prior use is established from around 1995 and has been continuous from then until the applicant’s first use in July 2002, the section 58A ground of opposition will have been established to the extent of those services.

15. It is clear that for this ground to be established, all goods and 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”[9] I find that the service of radio broadcasting is still similar to the services claimed in class 38 despite the applicant’s later restricting its specification with the sentence: “none of the aforesaid services including the broadcasting of radio programmes.” While not technically the ‘broadcasting’ of radio programmes, transmissions via “podcasting” and other digital means would still amount to the same program albeit delivered through a different medium. To this extent these services are similar services as defined in subsection 14(2) and as discussed in Mid Sydney v Australian Tourism[10]. These differences in medium for radio are a result of technological and social changes which have occurred in Australia since the opponent’s first use in 1945, and also since 1995. In addition, the opponent is now also providing its services via these methods.

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

    [10] Mid Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616.

16. The opponent’s radio broadcasting services are also similar to “entertainment services” and the “production of radio programs, including digital radio programs” in class 41. However, the opponent has not established any prior use in relation to the services claimed in classes 35 and 42 of the opposed application as its prior use is primarily in relation to its radio broadcasting program and related internet activities. While the opponent has provided the number of visits to its website, there is no further dated evidence of how the trade marks appeared on the website prior to the applicant’s first use.

17. The remainder of the services would not, on the balance of probabilities, be likely to result in confusion with the opponent’s prior use within the industry of Australian radio broadcasting. Accordingly, I find that prior use of the opponent’s trade mark has been established in relation to services similar to the following contained within the applicant’s specification:

    
    Class: 38 Information and technical services in relation to broadcasting; transmissions of information via on-line services in this class; transmission of information by means of electronic communications networks including the global computer network; none of the aforesaid services including the broadcasting of radio programmes

    
    Class: 41 Entertainment services; production of radio programs, including digital radio programs.

1. In the event that prior use was established by the opponent, Mr. Singh further submitted that it was open for the delegate to find under the provisions of section 44(3)(a) of the Act as an alternative to the section 58A ground. The argument is that as the application of s44(3)(a) at the examination stage would not have triggered section 58A for the opposition, that avenue should still be open to the applicant in the opposition stage. I am of the opinion that the issue is broader than this and requires further analysis. The question before me is whether or not a successful section 58A ground of opposition may also override the application of honest concurrent use under subsection 44(3)(a) of the Act.

   Does section 58A prevail over section 44(3)(a)?

2. In relation to section 58A, the Explanatory Memorandum (at 4.9.1) refers to Item 29 of the Amendment Act 2006 and states (with my added emphasis):

   While other grounds may be relevant in a proceeding, the owner of the registered mark will need to establish that their use of the mark predates the use of the accepted application for an opposition to succeed under the new ground.

3. An analogous question was addressed in the McCormick decision[11] where Justice Kenny decided that section 60 was not subject to s44(3) (or section 44(4)) as it is a “new inquiry” regarding the reputation of the earlier trade mark. Section 58A considers the actual use of the opponent’s trade mark at common law which may lie outside the services specification for which it is registered. However, while section 58A is a new consideration from that contemplated under section 44, it is still dependent on section 44(4) being established for the trade mark. It is therefore intrinsically linked to section 44 and its provisions, along with the intention that it complements section 58 of the Act.

   [11] McCormick & Co Inc v McCormick (2000) 51 IPR 102 (at 132).

4. The Hearing Officer in Milners Pty Ltd v PI-Design AG [12] made the observation that the question of whether section 58 prevailed over s44(4) of the Act had not been addressed by the Federal Court at the time of that decision. With the introduction of section 58A, the wording of the section now indicates a clear intention to prevail over the applicant’s prior use established under section 44(4).[13] There is no equivalent provision relating to the treatment of section 44(3)(a) however, and I am of the opinion there was an intention to leave that avenue open, in the face of prior use at common law.

   [12] Milners Pty Ltd v PI-Design AG (2003) 59 IPR 577.

   [13] Shanahan’s Australian Law of Trade Marks and Passing Off (4^th edition) Lawbook Co. 2008 (at [40.3005]).

5. Therefore, it is clear that section 58A is intended to complement section 58 and override section 44(4), and allow the first user at common law to retain ownership of its trade mark. Despite this fact, I do not think that it precludes the honest concurrent use provisions. As a side note, it does not necessarily follow that s44(3)(a) could provide an adequate answer to a successful section 58, because while section 58A has a similar purpose to section 58, it is also linked with section 44 and the provisions it entails. The availability of section 58 is not so restricted in its application.

6. Finally, under section 57 of the Act a registration may be opposed on the same grounds as those available at the rejection stage. It follows that the other provisions in those grounds are also available to the applicant (unless specifically overridden, as 58A does to the application of 44(4)). While the opponent did not press the section 44 ground at the hearing, it did nominate that ground of opposition and the applicant may be able to establish honest concurrent use in these circumstances. Accordingly, I find it appropriate to deal with application under s 44(3)(a) of the Act. I will now address the relevant provisions which may be applied to the applicant’s trade mark.

   Honest Concurrent Use

7. The relevant provisions of section 44 provide:

   (3) If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   Note:For limitations see section 6.

8. In this instance, even where it is established that the opponent has prior use at common law for a refined set of services:

   The doctrine of honest concurrent user meant that a degree of confusion had to be tolerated within the system. The mere fact that the use of a mark would be likely to deceive or cause confusion was not necessarily sufficient to support an injunction restraining that use.[14]

   [14] NSW Dairy Corp v Murray-Goulburn Co-op Co Ltd (1990) 171 CLR 363; 18 IPR 385.

9. The criteria for section 44(3) consists of[15]:

   (1) the honesty of the concurrent use;

   (2) the extent of the use in terms of time, geographic area and volume of sales;

   (3) the degree of confusion likely to ensue between the marks in question;

   (4) whether any instances of confusion have been proved; and

   (5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.

   [15] John Fitton & Co Ltd’s Application (1949) 66 RPC 110 (UK Reg) and as applied in McCormick (supra) per Kenny J (at 30).

10. There is a degree of confusion which is likely to ensue between the trade marks due to their deceptive similarity and the similarity in their services. However, the extent of this confusion should be tempered with the fact that the trade marks are not substantially identical, and both trade marks have an element of descriptiveness to them which would affect how the average consumer perceives them. The inconvenience to the general Australian public if honest concurrent use were applied would therefore be significantly reduced.

11. With regards to the honesty requirement for concurrent use I am convinced that while the applicant admits to knowledge of the opponent’s trade mark it had no improper motive in adopting the trade mark and did not contemplate that any confusion would ensue from the use of this trade mark. This is mainly due to the nature of the trade marks and the differences in the respective organisations. In the words of Joan Warner, Chief Executive Officer of Commercial Radio Australia Ltd: “The Opponent is a broadcaster whereas the Applicant is an industry association.”[16]

    [16] Warner Declaration, paragraph 12.

12. While it may provide links on its website to online radio, the applicant does not appear to specifically provide radio broadcasting services. However, the services that it does provide are similar to the opponent’s. Additionally, the applicant made amendments to its specification in class 38 shortly before the hearing on 26 February 2010 (as addressed above in paragraph 19). Due to the extent of the applicant’s concurrent use of its trade mark, the inconvenience to the applicant if the mark were not registered would outweigh the detriment to the opponent.

13. Section 44(3)(a) contemplates a certain degree of confusion and does not preclude the Registrar from permitting the registration of trade marks such as these to proceed under certain circumstances. Considering the extent of the applicant’s use in its trade mark and the amount of time that the two trade marks have been operating concurrently along with the relative inconvenience which would be caused to the applicant, I find it possible to apply the provisions of subsection 44(3) to the opposed trade mark application.

14. In the event that I am incorrect and section 58A overrides s44(3)(a), the opponent has only demonstrated prior use in relation to radio broadcasting services. As the applicant has attempted to differentiate these services from its own, it has not removed all likelihood of confusion, but it has reduced the chances of that confusion occurring. In that instance, the opponent would have enjoyed at best a token victory under section 58A, which could have resulted in amendments further restricting the applicant’s similar services.

15. As it stands, I am satisfied that these two visible traders have been operating concurrently for a number of years in similar fields, with the applicant doing so honestly. Accordingly, the applicant has established honest concurrent use in relation to services similar to the opponent’s prior use on radio broadcasting. On the balance of probabilities, I find that the provisions of section 44(3)(a) may be applied to this trade mark application.

16. Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

    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.

17. The question of whether the amendments to section 60 introduced by the Trade Marks Amendment Act 2006 apply to this opposition matter was not argued or contested by either party. Consequently, as the amendments came into effect on 23 October 2006 and the filing date of this application was 10 May 2006, I find that the pre-amendment provisions (as set out above) are applicable.[17] In any event, the opponent is relying on the reputation of its trade mark “RADIO AUSTRALIA” which was also relied on for the section 58A ground. As I have already determined that the applicant’s trade mark and this trade mark are deceptively similar, I will now turn to the other element of section 60, being whether the opponent’s trade mark enjoyed a sufficient reputation at 20 May 2006 such that the use of the applicant’s trade mark would deceive or cause confusion in the marketplace.

    [17] See Apple Computer v TodayTech Group Pty Ltd [2007] ATMO 40 at [29]-[62].

18. Radio Australia is the opponent’s international radio broadcasting service which has been in operation under that name since 1945. The opponent’s program is broadcast in a number of different languages in Australia and in other neighbouring countries (such as Indonesia, Vietnam, Papua New Guinea, China and Cambodia), and is also accessible via its website. As a result, Radio Australia is likely to be known by various international communities living in Australia as well as those living or traveling overseas. In support of the second element of section 60, the evidence submitted by the opponent indicates its use of the trade mark in relation to radio broadcasting dating back to 1983. Prior to this date, the use of the trade mark was by its predecessor the Australian Broadcasting Commission. It is evident that the advertising expenditure for this government organisation in relation to the trade mark has been significant since 1993 and has substantially increased since 2004. Relevantly, in McCormick & Co Inc v McCormick (2000) 51 IPR 102 at 127, Kenny J said:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

19. As it has been in existence in Australia since 1945, “Radio Australia” clearly has a lengthy history. The Australian export of its overseas broadcasting services constitute use of the opponent’s trade mark in Australia,[18] and while the strength of its achieved reputation is via the provision of radio, online services and advertising predominately to the Asia Pacific Region, the opponent also engages particular migrant communities in Australia and radio listeners via the Internet. This case may be distinguished from the case of Le Cordon Bleu BV v Cordon Bleu International Ltee[19] where Justice Heerey commented:

    It is one thing to say… that a trader has a reputation in Australia as one who is known here and who might potentially do business here. It seems rather different when the essence of the trader’s business, as known in Australia, is that it is carried on at a particular place outside Australia.

    [18] See section 228 of the Trade Marks Act 1995 (Cth).

    [19] Le Cordon Bleu BV v Cordon Bleu International Ltee (2000) 50 IPR 1.

20. While the essence of the opponent’s current business is that it primarily exports to countries outside Australia via well-known radio broadcasting and related Internet services, the opponent in this case clearly operates and provides that service from within Australia and it also known by the general public here.  

21. Section 60 does not require the services of the conflicting trade marks to be similar or closely related and neither do the opponent’s and applicant’s businesses have to be of the same nature. Under this ground, a notional use of the applicant’s trade mark is compared against the actual demonstrated reputation in the services of the opponent’s trade mark. Mr. Singh submitted that the average consumers for the applicant were businesses in the radio industry, rather than the ordinary radio listeners or Internet users of the opponent. However, while the applicant may work in a narrower business-oriented field than reflected in its claimed services or has a different target consumer group to that of the opponent, these facts have little effect on the outcome of the section 60 ground. In any event, despite the different target audiences I find the opponent’s demonstrated services are similar to those contained within the specification of the opposed application.

22. The consideration for section 60 is not whether other traders in this industry would be confused, but whether the consumers of these services are likely to be confused due to the reputation in the opponent’s trade mark at the time. A substantial number of the relevant consumer must be likely to be confused for this ground to be established. What constitutes “substantial” depends on the nature of the relevant audience as determined by the services, which in this case are radio listeners in general, including those who access related material via the internet. However, as the opponent’s services are directed to a specific target audience, the required reputation in its mark would not need to be as extensive and the danger of confusion between the trade marks would be even more probable.

23. The evidence submitted by the opponent includes a substantial number of media releases and articles indicating use of the opponent’s trade mark over a period of three years prior to the filing date of the opposed application. These newspaper articles are from both Australia and overseas indicating continuous use of the trade mark, including instances both before and after the applicant’s priority date. The opponent’s recent instances of print advertising in the Pintabona declaration featuring the trade mark “RADIO AUSTRALIA” are usually accompanied by the instantly recognisable ABC “swirl logo.” However, two trade marks can operate concurrently and the nature of the opponent’s radio broadcasting services is such that the trade mark would be easily recognised without the “swirl logo”. The term “Radio Australia” has been consistently used over such a long period of time in Australia, that I find it to be recognisable without the identifier “ABC”.  

24. The evidence establishes that the opponent’s trade mark is held in high esteem in this particular industry and the opponent has submitted a survey regarding the community awareness of its trade mark. This evidence indicates that between June 2005 and June 2006, approximately half the people surveyed by the opponent were aware of Radio Australia.[20] This figure establishes that the trade mark is quite well-known for a specific radio service which is predominately broadcast outside Australia. In addition, the Hearing Officer in the Hugo Boss[21] case observed the following:

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the “recognition” component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the “esteem” component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, “contra deals” and so forth.

    [20] Pintabona declaration, Annexure K.

    [21] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, cited with approval by Kenny J in McCormick & Co Inc v McCormick (2000) 51 IPR 102 at 129.

    Actual Instances of Confusion

25. A successful opposition under section 60 does not require proven instances of confusion, but it may colour the proceedings if such an instance can be established. In the Bennett and Tran declarations, the opponent has produced evidence purporting to be an instance of confusion which refers to a conference in Singapore attended by both the opponent and applicant. Delegates from other various countries were confused between the applicant’s and the opponent’s marks, as one delegate queried “So what part of Radio Australia is Commercial then?”[22] after having been informed of the opponent’s nature as a non-commercial broadcaster. While the delegates are not the Australian public, it does indicate that the opponent’s radio listeners (particularly those based overseas) may become confused from the applicant’s trade mark use in Australia. The fact that this confusion has occurred at all, provides a telling indication of how it may occur in the future.

    [22] Bennett declaration, paragraph 13.

26. Despite the fact that section 44(3)(a) has been established in this matter, I find that section 60 may still be established by the opponent. For completeness, I find it necessary to reiterate Justice Kenny’s comments in McCormick, where s44(3) of the Act was found not to provide an exception to s60, citing the following reasons:

    Section 60, which is part of a division specifically setting out the grounds for opposing registration, is directed to the position after acceptance. Section 60 is not expressed to be subject to s 44(3), any analogous limitation, or even the Act generally….. s 60 is apparently intended to afford a ground of opposition that is additional to the grounds set out in Pt 4… On its face, there is no honest concurrent user exception to s 60.

27. On the balance of probabilities, I find that the lengthy history and reputation of the opponent’s trade mark combined with the esteem in which it is held, satisfies me that the opponent has discharged under section 60 in the trade mark “RADIO AUSTRALIA”. Consequently, the use of the applicant’s trade mark would be likely to cause confusion in the Australian marketplace and the ground of opposition under section 60 of the Act has been established.

    Decision

28. Section 55: Decision

    (1) 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.

29. A ground of opposition under section 60 has been established, and I therefore refuse to register trade mark application no. 1113206: “Commercial Radio Australia”.

    Costs

1. The opponent has been successful in these proceedings. As costs ordinarily follow the event in opposition matters, I accordingly award costs against the applicant to the extent allowed under the Official Scale contained in Schedule 8 of the Trade Mark Regulations 1995.

   Heath Wilson
   Hearing Officer
   Trade Marks Hearings
   18 June 2010