Australian Olympic Committee, Inc v Aristocrat Technologies Australia Pty Ltd

[2001] ATMO 33

TRADE MARKS ACT 1995

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

Re:Opposition by Australian Olympic Committee, Inc. to registration of trade mark application 790246(9) - FLAME OF OLYMPUS - now in the name of Aristocrat Technologies Australia Pty Limited.

Background

Application 790246 was originally filed by Aristocrat Leisure Industries Pty Limited on 1 April 1999, in respect of 'Gaming machines, including poker machines, in this class and parts and accessories therefor in this class', in class 9 of the International Classification of Goods and Services. That entity has since changed its name to Aristocrat Technologies Australia Pty Limited the present applicant in this matter. The trade mark, which is the subject of this application, is the word mark, FLAME OF OLYMPUS.

Following examination, the application was advertised as accepted in the Australian Official Journal of Trade Marks of 18 November 1999. The Australian Olympic Committee, Inc (the opponent) filed a notice of opposition to this acceptance on 18 February 2000. Service of its evidence in support of this opposition followed on 18 May 2000. The applicant chose not to respond to this evidence with evidence of its own.

The opponent has been one of the parties involved with the task of organising last year's Sydney 2000 Olympic Games and in providing advice to the Government on how best to supply the infrastructure necessary to successfully administer the event. One of the obligations of the opponent is to protect the Olympic Symbol, the Olympic motto, various insignia, indicia, and the Olympic mascots and certain terms such as the words 'Olympic', 'Olympiad' and various combinations of words involving 'Olympian', 'Olympics', 'Bronze', 'Games', 'Gold', 'Green and Gold', 'Medals', 'Millennium', 'Silver', 'Spirit', 'Sponsor', 'Summer', 'Sydney', 'Two Thousand' and '2000'. As a result of these protective functions, the opponent has launched opposition proceedings against a number of parties that have applied for registrations of trade marks that it believes are too close to any of these legally protected Olympic signs and symbols. The present matter involves a trade mark application for the words FLAME OF OLYMPUS to be used on gaming machines.

The matter came before me in Sydney on 12 March 2001. The applicant was not represented at the hearing but Mr Wayne Willis, of F.B. Rice & Co, filed written submissions on its behalf. Ms Julia Baird, of Counsel, instructed by Browne & Co, Solicitors & Consultants represented the opponent.

The Evidence

The evidence comprises a single declaration with one annexure, from Alan Grover, Director of Marketing for the opponent. This declaration reports a history of the Olympic Movement, with a particular emphasis of the details that led up to Sydney hosting the XXVII Olympiad in 2000 and also goes to show the opponent's responsibilities to the Olympic Movement. The opponent is a signatory to the Host City Contract, which contract defines the scope of the opponent's obligation to protect the various Olympic indicia and to develop a marketing plan for the Games. Acts of Parliament, such as the Sydney 2000 Games (Indicia and Images) Protection Act 1996 (C'wealth) and the Sydney Organising Committee for the Olympic Games Act 1993 (NSW), the SOCOG Act, supply the opponent with the legal framework necessary to fulfil these functions.

The annexure to the declaration of Mr Grover depicts a copy of a registered Olympic design, number OD016, a representation of which is shown below:

I intend to make reference to this Design in the course of the Reasons later in this decision.

Submissions and Discussion

The grounds of opposition listed in the notice of opposition are those under ss.58 and 60 and, in terms of s.57, those involving ss.41, 42 and 43.

Ms Baird, for the opponent, began her submissions with an indication that four of these grounds would be pursued - those under ss.41, 42, 43 and 60. In relation to the ground under s.58, I find that the opposition has not been established.

Ms Baird took me through the Grover declaration, emphasising that it is uncontroverted and she then presented arguments for the separate grounds of opposition.

(a) Section 41 - Trade mark not distinguishing applicant's goods or services

In relation to this ground of opposition, the relevant legislation reads:

41.(1) 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).

(2) 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 (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.

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)....

(6)....

Under this ground of opposition, Ms Baird submitted that the present mark is apt for normal description, that of indicating an association with the Olympic Movement, in respect of any of the goods in the applicant's specification. She added that the phrase FLAME OF OLYMPUS is readily derived from both the words OLYMPIC FLAME and the spoken description of the registered Olympic design OD016, a representation of which is shown in The Evidence section above. It is a phrase, Ms Baird asserted, that others would wish to use to indicate a link between their goods and the Olympic Games. Any party that had acquired rights to use the words 'Olympic' or 'Olympiad', by agreement with the Olympic Movement, could require the use of this mark, she claimed. Because of this descriptive element, the applicant would need to provide evidence of use of the mark, in terms of s.41(5) or s.41(6) to enable the mark to proceed, she said. Ms Baird claimed that this it had not done - neither had the applicant entered into any form of licensing arrangement through either the opponent or the Sydney Organising Committee for the Olympic Games (SOCOG). Thus, the mark ought to be refused, she said, because it does not meet the requirements of s.41[1].

Mr Willis, in his written submissions on behalf of the applicant, challenged that the opponent has provided no evidence to support the proposition that the mark is not inherently capable of distinguishing the applicant's goods from those of other traders.

The argument that Ms Baird has raised here would seem directed towards a claim of a 'connotation in the mark', in terms of s.43, rather than a claim that the mark is 'not capable of distinguishing' the applicant's goods from those of other traders. However, I note that the s.43 ground is also argued, so for completeness I do intend to consider this matter in terms of s.41.

In order for the provisions of s.41(5) or of s.41(6) to apply, the opponent would need to show that a ground for rejection exists under the terms of s.41(2) and (3). Ms Baird's submissions raise two issues in need of discussion in this regard.

First, I will consider the opponent's registered Olympic Design OD016. Although I note that the Olympic Insignia Protection Amendment Act 1994 makes reference to a 'prescribed torch and flame', this registered design does not appear to have an official title or, if it does, it is not in evidence. I am of the opinion that, in spoken description, several possible variations come to mind - 'The Olympic Torch', 'The Olympic Torch and Flame', 'The Olympic Torch, Flame and Rings' and 'The Olympic Flame' are some of the more likely - but FLAME OF OLYMPUS, would not, I believe be the usual way to describe the design. The link from this design to the phrase FLAME OF OLYMPUS is, in my view, tenuous and no evidence has been put before me to lead me to believe otherwise. Thus, I do not accept that the phrase FLAME OF OLYMPUS is one that other traders would require to use - even where that trader had rights to use the registered design, or to use either of the words 'Olympic' or 'Olympiad' under some form of licensing agreement from the opponent or SOCOG.

Secondly, I turn to the phrase comprising the subject mark. I do not accept that the phrase FLAME OF OLYMPUS is one that traders would seek to use to indicate a direct connection with the Olympic Games. The phrase arguably supplies some sort of illusory reference to the Games through a common link to 'Mt Olympus' - the name of 'a mountain in the north of Thessaly, the fabled abode of the greater gods of ancient Greek mythology' (The Oxford English Dictionary [2^nd Edition]). However, this is too tenuous, in my opinion, to be seen as a reference that the goods are linked to the Olympic Movement, and therefore is not adapted to distinguish those goods as being those of a particular trader.

From the above, I find that the ground of opposition under s.41 has not been established.

(b) Section 42 - Trade mark scandalous or its use contrary to law

Under this ground of opposition, the opponent pressed s.42(b) only. The legislation allows:

[1] Blount v Registrar of Trade Marks (1998) 40 IPR 498

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

(a) ....
(b) its use would be contrary to law.

Under this ground, Ms Baird submitted three separate arguments. She claimed that because the applied for mark is a verbal description of the registered Olympic Design OD016, that it contains connotations of association with the Olympic Movement, the Olympic Games and of a representation of license by the opponent. As such, Ms Baird said, use of the mark by the applicant is likely to mislead or deceive the public in terms of ss.52 and 53 of the Trade Practices Act 1974 (TPA). A second line of argument involved the various pieces of legislation that have been enacted under the Commonwealth and New South Wales Parliaments in relation to protection for the Olympic Movement. Ms Baird claimed that the protection afforded to the opponent through this legislation leads to the conclusion that the applicant's mark ought to be refused as being contrary to law. In the third, and final, leg of her submissions under this ground, Ms Baird submitted that the opponent also has a case under a 'passing off' action, which also implied that use of the present trade mark would be contrary to law. She did, however, comment that the hearing of an opposition matter might not be the most appropriate forum for this particular submission.

In a recent, as yet unpublished decision, USA Detergents, Inc v Magnatex International PtyLimited, [2001] ATMO 29, I made the following observation in relation to s.42.

In order to succeed under this ground, the opponent must establish that use of the mark by the applicant would contravene accepted law. This could be shown by a judgement from a matter that had already been before the courts, or by evidence that verifies an unmistakable breach of a law. It is not within the competence of the Registrar to attempt a judicial interpretation of laws beyond the Trade Marks Act 1995 involving non-trade mark material. If a party believes that it has an arguable case under an Act other than the Trade Marks Act 1995, then the courts may be the most appropriate forum.

Ms Moore Chrysiliou submitted, under this ground of opposition, that any use of the mark by the applicant would amount to misleading and deceptive conduct, in terms of s.52 of the Trade Practices Act 1974 (TPA). She made this claim because of the existence of the opponent's corporate name comprising part of the applicant's mark. ....

As discussed above, I do not believe that it is within the competence of the Registrar to make an assessment under the TPA.

I believe that aspects of the present submissions are on all fours with the preceding case and decline to consider the submissions under either the 'passing off' provisions or of s.52 of the TPA, in relation to 'conduct that is misleading or deceptive'. Thus, I do not intend to consider the first and third submissions put to me under this ground of opposition.

However, where evidence verifies that a particular piece of legislation is unmistakably breached - such as where an Act prohibits use of a particular word that is clearly being used - then, I believe that such material may be considered in terms of s.42(b). The second of the three arguments put to me by Ms Baird may be considered on that basis. The legislation in relation to the Olympic Games that has been drawn to my attention under this ground involves the following Acts.

The Olympic Insignia Protection Act 1987 (the OIP Act), Olympic Insignia Protection Amendment Act 1994 (the OIPA Act) and the Business Names Act 1962 (NSW) (the BNA Act). The OIP Act, at s.19 reads:

Section 19. The Registrar of Trade Marks shall not register under the Trade Marks
Act 1955 a trade mark that contains or consists of any of the following marks or a mark so nearly resembling any of those marks as to be likely to be taken for that mark:
  (a)  the olympic motto;
  (b)  the olympic symbol;
  (c)  where the design in relation to an artistic work is registered under
       this Act - the artistic work.

This section has been amended by the 1994 OIPA Act, which inserts the following at s.14:

14. Section 19 of the Principal Act is amended by inserting after paragraph (b) the following paragraph:
  "(ba) where an artistic work of an olympic torch and flame is prescribed
under this Act - the artistic work;".

I also note that s.10 of the Acts Interpretation Act 1901 enables me to consider the reference to the repealed Trade Marks Act 1955 as being a reference to the Trade Marks Act 1995. Thus, if the present application is in breach of s.19 of the OIP Act, then it is a matter that I may consider as a ground of opposition under s.42(b) of the Trade Marks Act 1995.

Prohibitions under s.19 include subsections for (a) the Olympic motto, (b) the Olympic symbol, (ba) artistic work of an Olympic torch and flame and (c) any artistic work comprising a registered design or 'a mark so nearly resembling any of those marks as to be likely to be taken for that mark'.

The 1994 OIPA Act, at s.3, defines the Olympic motto as:

"(a) the motto expressed in Latin as 'citius, altius, fortius'; and

(b) the motto expressed in English as 'faster, higher, stronger'."

The OIP Act, at s.2(1) defines the Olympic symbol by means of a representation, which is shown in the Schedule at the conclusion of that Act, as depicted below.

I do not accept that the mark FLAME OF OLYMPUS could be seen to bear any resemblance to this motto or to the above Olympic five ring symbol. Nor do I accept that subsections (ba) or (c) apply because I do not believe that the registered Olympic Design OD016 would be described as 'Flame of Olympus' - as I have previously discussed under the s.41 ground.

Thus, in my opinion, the present mark has not been shown to breach the OIP Act or the later amendments through the OIPA Act.

Concerning the BNA Act Ms Baird directed me to the Grover declaration, at clause 41, where Mr Grover states:

The Minister for Consumer Affairs has released a directive relating to use of names with connotations associating them with the Games or the Paralympics as a result of which amendments have been made to the Business Names Act 1962 (NSW) to restrict registration of names containing "Sydney 2000" and other Olympic related words. In addition, the Regulations to the Corporations Law have been amended so that Ministerial permission is needed for the reservation or registration of company names that suggest a link with the Games or the Paralympics.

This particular paragraph, however, with an application to the registration of 'Business Names', does not establish that registration, as a trade mark, of the words FLAME OF OLYMPUS, is contrary to law.

Although the following point was not specifically presented under this ground of opposition, it had been raised in general submissions and in the Grover declaration. For the sake of completeness, I intend to briefly consider the Sydney 2000 Games (Indicia andImages) Protection Act 1996 (the SIIPA Act). This Act provides at s.12(1) that:

A person, other than
(a) SOCOG; or
(b) SPOC [Sydney Paralympic Organising Committee Limited]; or
(c) a licensed user;
must not use Sydney 2000 Games indicia and images for commercial purposes.

To determine what indicia, if any, are relevant to this question I turn to the definitions found in s.8 of the SIIPA Act.

8 (1) For the purposes of this Act:
common Sydney 2000 Games indicia means:
(a) any of the following phrases:

(i) "Games City";
(ii) "Millennium Games";
(iii) "Sydney Games";
(iv) "Sydney 2000"; or

(b) any combination of the word "Games" and the number "2000" or the words "Two Thousand".
Sydney 2000 Olympic Games indicia means:
(a) either of the following words:

(i) "Olympiad";
(ii) "Olympic"; or

(b) any of the following phrases:

(i) "Share the Spirit";
(ii) "Summer Games";
(iii) "Team Millennium"; or

(c) any combination of "24th", "Twenty-Fourth" or "XXIVth" and the word"Olympics" or "Games"; or
(d) any combination of a word in List A with a word, words, phrase or number in List B:

List A	List B
Olympian	Bronze
Olympics	Games
Gold
Green and Gold
Medals
Millennium
Silver
Spirit
Sponsor
Summer
Sydney
Two Thousand
2000

A similar list to that shown above, but slightly further removed from the word OLYMPUS, can also be found at s.8 of the SIIPA Act in connection with the Sydney 2000 Paralympic Games. I do not intend to reproduce it here.

From this material, it is apparent that the phrase FLAME OF OLYMPUS is not one of the combinations prohibited by the legislation. Nowhere else in the relevant legislation can I find a reference to material concerning any restriction for the use of the word Olympus.

In summary, I find that the opponent has not established that the present mark contravenes any law and I find that the s.42 opposition ground has failed.

(c) Section 43 - Trade mark likely to deceive or cause confusion

Under this ground the legislation allows:

43. 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.

Ms Baird submitted that this section of the Act has been the subject of a number of recent decisions[2]. She said that the summary in Kellogg v Premium Brands, supra, indicates that the inquiry into the existence of a connotation is not limited to a comparison of trade marks in use, a 'connotation' refers to something implied within the mark itself - as a secondary or associated meaning and that a connotation can be revealed by evidence but does not necessarily require an immediately obvious understanding.

[2] Down to Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632 at 644;

Ms Baird asserted that the connotation in the present case is founded on the words FLAME OF OLYMPUS being associated with the Olympic Movement and the symbolism of the Games on the basis of clause 53 of the Grover declaration read in conjunction with clauses 6, 7 and 14. The connotation was reinforced she said by the spoken description of the registered design symbol - and the common concept brought to mind for the words of the words 'Olympic torch', 'Olympic flame' and 'Flame of Olympus'.

In this particular case, Ms Baird submitted, the general public would also infer the connotation that the applicant had some sort of licensing agreement from the Olympic movement, in order to use the mark. She said that because both of these possible connotations lead to conclusions that are not correct, use of the mark by the applicant would be likely to deceive or cause confusion. Thus, she submitted, the mark ought to be refused.

The Grover declaration, at clauses 6, 7, and 14, provides information concerning the history of the revival of the modern Games at the end of the nineteenth century and the images, indicia and insignia that have been embraced by the Olympic movement. Clause 53 of that declaration asserts that the opponent has an established reputation in the words, 'The Olympic Flame' and its graphical representation as evidenced by the registered Olympic Design No. OD016.

Mr Willis, in his written submissions, claimed that the opponent has not provided any 'persuasive evidence that a member of the public, seeing the applicant's mark used in relation to gaming machines in class 9, would take the connotation to be that the manufacturer of the gaming machines in question was either connected in some manner with the Australian Olympic Movement or authorised or licensed in some manner by the Australian Olympic Movement'.

As Ms Baird quite correctly pointed out, by use of various decisions of the Registrar, the connotation in a trade mark - if it exists - is inherent within that mark. It does not require a comparison with another mark but that the mark applied for as a whole and each part of that mark must be considered to assess a possible connotation, or secondary meaning.

I also take Mr Willis's point here - that if any connotation exists then it must exist in relation to the particular goods or services of the applied for mark. The legislation in s.43 is quite clear in its wording when it states that 'the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion'. So it is not simply any connotation in the mark that would be likely to deceive or confuse - but it must lead to the likelihood of such deception or confusion when used in relation to the applicant's goods.

The words 'Olympic', 'Olympian' and 'Olympiad' are words commonly used in relation to the Olympic Movement. If used alone they are words that, I believe, the general public would expect to refer to some activity of the Olympic Movement. However, there are also many instances of the use of these words, in a particular context that would place them outside the sphere of the Olympic Movement. A newspaper headline, for instance, that stated ENDURANCE OF LOST MAN OF OLYMPIC PROPORTIONS would clearly be seen as use of the word 'Olympic' as a reference to the magnitude of the endurance and not as a reference to an association with the Olympic Movement. The context of the use of a particular word, therefore, must be considered if a meaning is to be given to that word or to a phrase that it contains. Here, I rely on the precedent of Dixon J in Howard Auto-Cultivators Limited v WebbIndustries Pty Limited, (1946) 72 CLR 175 at 184 where he makes this point with the words:

But the meaning of all words is governed by their context and how words are understood depends upon the universe of discourse.

The word Olympus and the phrase Flame of Olympus are not terms in common use in relation to the Olympic Games. Olympus, nevertheless, is a well-known word. It is widely known to be the name of the highest mountain in Greece - a site famous as the fabled abode of the mythological Greek gods. Despite the fact that this may lead to some indefinite association with the ancient games which, I understand, took place in the shadows of Mt Olympus, the word Olympus, so far as I can see, is not a word which is, to any significant extent, associated with the modern Olympic Games. Nor do I find anything either in the evidence, or in the arguments put to me by Ms Baird, that shows that the word Olympus, or the trade mark FLAME OF OLYMPUS, is likely to give rise to any connotation other than those associated with Greece's highest mountain. I do not agree that the trade mark gives rise to a connotation of association with the Olympic Games, and I reject the submission that this trade mark application fails in terms of s.43.

The opponent, further, puts some reliance on the registered Olympic Design No. OD016 (a depiction of which appears above under the section headed The Evidence.) As I have already noted, however, there is no evidence that this design has any definite official title or that any particular term is commonly used to refer to it. As mentioned above, I find that there is nothing more than a very tenuous link between the trademark FLAME OF OLYMPUS and this registered design, and I do not consider that connection sufficient to establish a connotation in terms of s.43.

For the above reasons, I do not believe that the mark FLAME OF OLYMPUS, if used on the applicant's gaming machines, provides a connotation that the mark is associated with the Olympic Movement.

Thus, I find that opposition under this ground is not successful.

(d) Section 60 - Trade marks similar to trade mark that has acquired a reputation in Australia

Here, the legislation allows:

60. 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.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

Under this ground of opposition, Ms Baird submitted that the opponent's registered Olympic Design number OD016 qualifies as an unregistered trade mark. She then claimed that clause 53 of the Grover declaration provides reason to consider an established reputation in the words, 'The Olympic Flame' and its graphical representation, as evidenced by that registered Olympic Design.

Ms Baird asserted that the present mark, especially where the opponent's device mark is referred to in spoken description, when the doctrine of imperfect recollection is applied, must be considered to be deceptively similar to both the registered design device and also to the words 'The Olympic Flame'. Under these conditions, she added, use of the applicant's mark will be likely to cause deception and confusion and the application ought to be refused.

Mr Willis contended that the opponent had not provided any evidence of the reputation that it claimed for a mark that it alleged is deceptively similar to the present mark, prior to the date of application, being 1 April 1999. Mr Willis did not accept that the words 'the Olympic Flame' constitute a trade mark and he also claimed that there is no evidence that those words have been used as a trade mark in relation to either goods or services.

In order to trigger s.60, the opponent must provide evidence of an acquired reputation in a trade mark for which the mark applied for is either substantially identical or deceptively similar. It then must be assessed whether, because of that reputation, use of the mark applied for will be likely to lead to deception or confusion.

In the present matter, the opponent has sought to rely on the material at clause 53 of the Grover declaration to substantiate the reputation in its mark. The declaration at clause 53 reads:

Additionally, the AOC, as the NOC [National Olympic Committee] for Australia and representative of Australia of the IOC and the Olympic Movement generally has an established reputation in the words "The Olympic Flame" and graphical reputation [representation(?)] of this, such that any use of the words the Olympic Flame or derivation of these words, such as the applicants mark, is inextricably linked to the Olympic Movement. Olympic Design No. OD016, registered pursuant to the Olympic Insignia Protection Act 1987 (C'th), a copy of the Certificate of Registration of which is annexed hereto and marked "A" is evidence of such reputation. It is submitted that the applicant's mark is substantially similar or deceptively similar to this Olympic Design and the use of the opposed mark is likely to deceive or cause confusion.

Hearing Officer Thompson in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, 47 IPR 423 has discussed the matter of reputation, at 436 in the words:

I think that it is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

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 owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, “contra deals” and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

The above passage was cited with approval by Justice Kenny in McCormick & Company Inc v McCormick, [2000] FCA 1335.

Thus, a number of factors may be considered in respect of the assessment of reputation of a trade mark. However, if there is no turnover whatsoever in respect of any goods or services, nor any clear intention to trade in either goods or services, in relation to use of a particular sign then I cannot accept that that sign operates as a trade mark. The Grover declaration makes the assertion that 'the Olympic Movement generally has an established reputation in the words "The Olympic Flame" ' and its graphical representation. Whilst I accept that there is a degree of recognition in those words and that design, and in the Olympic rings as part of that design, I do not accept that the recognition is as a trade mark. In a similar way to a national flag of a nation being linked to that nation, the Eiffel Tower being linked to the city of Paris, or the Sydney Harbour Bridge being linked to the city of Sydney, I believe that the Registered Olympic Design OD016 is linked to the Olympic Movement - although none of these signs operate as trade marks for those entities.

Thus, as s.60 of the Act is only triggered by a 'reputation in a conflicting trade mark' I find that opposition under this ground is not successful.

I might add one final element to the discussion under s.60. This concerns the situation had I found that the opponent did have a reputation in the Registered Olympic design or the words 'The Olympic Flame' as a trade mark. Firstly, I accept Ms Baird's argument that because of its very nature, a design is likely to be referred to by a verbal description. As I have previously discussed I accept that such a description could encompass such expressions as 'The Olympic Torch', 'The Olympic Torch, Flame and Rings' or just possibly as the 'Olympic Flame' but not 'Flame of Olympus'. Nor do I believe that these possible verbal descriptions are sufficiently close to be considered deceptively similar to the applied for mark.

Thus, in conclusion, even had I found that the opponent's sign did operate as a trade mark with an acquired reputation, I do not accept that it would be for a deceptively similar mark and so s.60 would not operate in favour of the opponent in terms of this condition either.

Conclusion

From the foregoing, I have found that none of the four grounds of opposition - those under ss.41, 42, 43 and 60 of the Act - relied on by the opponent have succeeded. Thus, as the delegate of the Registrar in this matter, I dismiss this opposition and direct that subject to payment of the appropriate registration fee that this application may proceed to registration.

Costs

Both parties have requested costs in this matter. The applicant, having been the successful party, is entitled to its costs. Thus, I award costs against the opponent here in accord with the Official scale.

Don Nancarrow
Hearing Officer

7 May 2001.

Amalgamated Television Services Pty Limited v Pickard (2000) 48 IPR 133;
Clissold v Amalgamated Television Services Pty Limited (sic) (2000) AIPC ¶91-566;
Kellogg Company v Premium Brands Pty Limited (2000) 49 IPR 108 at 116-118.