Australian Olympic Committee, Inc. v PPG Architectural Finishes, Inc

[2012] ATMO 13

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 1173281(2) - OLYMPIC - filed in the name of PPG Architectural Finishes, Inc.

Delegate:	Debrett Lyons
Representation:	Opponent:  Miriam Steil of Allens Arthur Robinson, Solicitors Applicant:  Tim Allen of Corrs Chambers Westgarth, Solicitors
Decision:	2012 ATMO 13 S52 opposition: grounds pursued under sections 39, 42, 43, 44 and 60 – s.42(b) ground established; breach of section 36(1) of the Olympic Insignia Protection Act1987 – application refused – costs awarded against Applicant.

Background

1. PPG Architectural Finishes, Inc. (‘the Applicant’) filed an application to register a trade mark for the word OLYMPIC under the provisions of the Trade Marks Act 1995 (‘the Act’).  The application was filed on 27 April 2007 and given the number 1173281.  It was filed in respect of the following goods in class 2:

   Coating compositions in the nature of paints; varnishes, lacquers, stains; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

2. The application was examined as required by section 31 of the Act and later advertised as accepted for those same goods in the Australian Official Journal of Trade Marks on 28 May 2009.

3. On 28 August 2009, Australian Olympic Committee, Inc. (‘the Opponent’ or ‘the AOC’ as the contrext requires) filed Notice of Opposition (‘the Notice’) to registration of the application.  The parties served and filed evidence in support, evidence in answer and evidence in reply as provided for by the Trade Mark Regulations 1995 (‘the Regulations’).  A hearing was then requested. 

4. As a delegate of the Registrar of Trade Marks I heard the matter on 16 November 2011 in Melbourne.  The Opponent was represented by Miriam Steil of Allens Arthur Robinson, Solicitors.  The Applicant was represented by Tim Allen of Corrs Chambers Westgarth, Solicitors.

   Onus and Standard of Proof

5. The onus is on the Opponent to establish one or more of the grounds of opposition.  The standard of proof is the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13 at [22] to [26]; Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

6. The date at which a ground must be established is the application filing date, that is, 27 April 2007 (‘the Relevant Date’).

   The Notice and grounds pursued

7. The Notice nominated a multiplicity of grounds of opposition under the Act but prior to the hearing the Opponent advised that it would only be pursuing grounds of opposition under sections 39, 42, 43, 44 and 60. I treat the remaining grounds which were not pressed as having been abandoned.

8. The focus of the Opponent’s submissions was on the protected nature of the word “Olympic” and certain signs which include the word, “Olympic”.  Protection arises by operation of the Olympic Insignia Protection Act1987.  The Trade Marks Act and Regulations also forbids the registration as a trade mark of certain prescribed signs, together with trade marks which might nearly resemble those signs. 

9. I therefore have approached this opposition following a pathway which, as it happens, follows the ascending numerical order of the sections of the Act pressed by the Opponent.

   Discussion and Reasons

   Section 39

10. Section 39 states:

    Trade mark containing etc. certain signs

    (1) An application for the registration of a trade mark must be rejected if the trade mark contains or consists of a sign that, under regulations made for the purposes of section 18, is not to be used as a trade mark.

    (2) An application for the registration of a trade mark may be rejected if the trade mark contains or consists of:

    (a) a sign that is prescribed for the purposes of this subsection; or

    (b) a sign so nearly resembling:

    (i) a sign referred to in paragraph (a); or

    (ii) a sign referred to in subsection (1);

    as to be likely to be taken for it.

11. Schedule 2 to the Regulations lists “signs that may not be registered as trade marks” and the sign “Olympic Champion” is listed. As the Applicant is keen to underscore, the sign “Olympic” is not there prescribed and so the matter falls for determination under section 39(2)(b)(i) of the Act, the question being whether OLYMPIC so nearly resembles OLYMPIC CHAMPION as to be likely to be taken for it. The Opponent says that it would be so taken. The Applicant says that section 39(2)(b)(i) requires substantial identity of the trade mark and the sign and relies on what was said in Australian Olympic Committee v Schwarzkopf & Henkel Gmbh & Co. KG [2005] ATMO 37 at [27] and in Australian Olympic Committee, Inc. v Baxter & Co. Pty Ltd (1996) 36 IPR 621 at 631.

12. In particular, it is the Applicant’s submission that:

    Although there is some conceptual overlap, the marks bear different meanings. OLYMPIC CHAMPION calls to mind the image of a professional athlete who has attained championship (gold medal) status at an Olympic Games. OLYMPIC does not call to mind the image of a champion sportsperson.

13. I am not so sure.  Were an ordinary member of the public asked to couple the word “Olympic” with some other associated word, I might expect suggestions including “Olympic Games”, “Olympic gold”, “Olympic medal”, “Olympic sport”, “Olympic event”, “Olympic athlete”, and very possibly, “Olympic champion”.

14. In the passage from AOC v Baxter at page 631 to which I am referred by the Applicant, Hearing Officer Homann wrote:

    I think it is sufficient to say that the mark applied for here is not OLYMPIC CHAMPION but THE OLYMPIC and to refer once again to the large number of registered trade marks containing or consisting of the word “Olympic”.

15. It seems to me that the Hearing Officer gave the issue the same passing attention as did Counsel who only casually argued the point.  I observe that the applied-for trade mark was not simply THE OLYMPIC as is implied by this passage, but a highly stylized logo-style trade mark which included the word REGIS, a banner and a dominant coin or globe device.

16. The case of AOC v Baxter was also concerned with section 29 of the former, repealed, trade mark legislation and although that section and section 39 of the present Act are effectively identical for the purposes of this question, both refer to an embargo on the registration of trade marks which “so nearly resemble” a prescribed sign “as to be likely to be taken” for it. The sections do not refer to a resemblance likely to deceive or cause confusion, but suggest a more objective test of similarity.

17. My thinking is that Hearing Officer Homann may have misapplied himself when he took into account the state of the Register.  To my mind, the critical question is the one for which the Applicant relies on  AOC v Schwarzkopf & Henkel, namely, does the test of near resemblance merge with the test of substantial identity? If it does, then I would have little hesitation in drawing the conclusion that OLYMPIC and OLYMPIC CHAMPION are not substantially identical and so the Opponent’s section 39 ground of opposition must fail.

18. In AOC v Schwarzkopf & Henkel the applicant sought to register the trade mark OLYMPIA for certain class 3 goods.  The AOC pressed grounds of opposition, inter alia, under section 42(b) and 60 of the Act. In relation to the section 42(b) ground - use of trade mark contrary to law – Hearing Officer McDonagh was asked to take account of the AOC’s allegation that use of the trade mark would constitute a breach of the Olympic Insignia Protection Act1987.   That Act states that “[A] person, other than the AOC, must not use a protected olympic expression for commercial purposes”, where “protected olympic expression” included the words: Olympic; Olympics; Olympic Games; Olympiad; and Olympiads.  

19. Notably, that legislation further states that an expression so closely resembling a protected olympic expression as to be likely to be mistaken, by a reasonable person, for such a protected olympic expression is taken to be a protected olympic expression.

20. In directing himself to the question of whether the word OLYMPIA is an expression so closely resembling any of the protected expressions as to be likely to be mistaken, by a reasonable person, for such protected expressions, Hearing Officer McDonagh referred to the earlier decision of this Office in Australian Olympic Committee Inc v Courier Luggage Pty Ltd (2002) AIPC ¶91-806 where Hearing Officer Thompson had considered the same trade mark and concluded that he was not satisfied that it is likely that a reasonable person would mistake the word ‘Olympia’ for the protected expression ‘Olympiad’. Hearing Officer Thompson had written:

    … although the protected expression ‘Olympiad’ contains the opposed trade mark and differs only in the addition of its ultimate letter, the meanings and pronunciations of the words OLYMPIA and OLYMPIAD are distinct and are likely, I consider, to be remembered and recalled in different ways.

21. Hearing Officer McDonagh saw no reason to come to a different conclusion and dismissed the section 42 ground of opposition.

22. The section 60 ground of opposition in AOC v Schwarzkopf & Henkel required consideration of the form of section 60 prior to its amendment in 2006 and, in particular, required proof of an existing trade mark with a reputation in Australia which was either substantially identity or deceptively similarity to the applied-for trade mark. Hearing Officer McDonagh wrote:

    In considering the section 42(b) ground, I have already found that the OLYMPIA trade mark is, in effect, not substantially identical to any protected olympic expression. With respect to this ground, I find that the OLYMPIA mark is not substantially identical to any of the aforementioned trade marks owned by the opponent.

23. After reviewing the authorities, he continued:

    Having applied the relevant tests, I am not satisfied that the applicant’s trade mark is deceptively similar to any of the opponent’s trade marks. I dismiss this ground of opposition.

24. In my estimation, AOC v Schwarzkopf & Henkel can not be held up as authority for a proposition that the trade mark and the prescribed sign must be substantially identical.  On my reading of the case, it was simply found as a matter of fact that the compared terms were not substantially identical (or deceptively similar).

25. The question which remains is whether the trade mark OLYMPIC so nearly resembles the prescribed sign OLYMPIC CHAMPION as to be likely to be taken for it. The notion of near resemblance of trade marks is a familiar one in trade mark law and finds expression in different places in the Act. Leaving aside the case of AOC v Schwarzkopf & Henkel, the question of whether or not the expression means the same thing as substantial identity and can be tested in the same way is not wholly clear on the authorities. What is clear is that the words have been given their ordinary meaning with the result that near resemblance of two trade marks has been understood as meaning that they should exhibit a very close physical and conceptual similarity. I do not find that OLYMPIC so nearly resembles OLYMPIC CHAMPION to pass that threshold and consequentially I do not find that the Opponent has established a ground of opposition under section 39 of the Act.

    Section 42(b)

26. Section 42(b) states that a trade mark application must be rejected if its use would be contrary to law.  The Opponent’s argument has two limbs – first, that use of OLYMPIC would contravene the Olympic Insignia Protection Act; second, that use would have, at the Relevant Date when the legislation was still in force, offended section 52 of the now repealed Trade Practices Act1974.

27. I have already outlined the protection given by the Olympic Insignia Protection Act.  In short, the word “Olympic” is a protected expression under that Act[2] and the Opponent must show that use of the trade mark would[3] contravene section 36(1) of that Act because such use would be for commercial purposes.

    [2] Section 24

    [3] Would, rather than could or might : Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

28. The Applicant drew my attention once more to AOC v Baxter where Hearing Officer Homann was required to consider legislation directed to Olympic insignia protection having language mirroring section 36(1) of the Olympic Insignia Protection Act.  Hearing Officer Homann wrote at p.632:

    … while the trade mark use of the word ‘Olympic’ would clearly be caught by the Act, as ‘commercial use’, the protection afforded to the word is qualified in that the use must suggest to a reasonable person that the user was a sponsor or provider of other support for the Sydney Games. It is not enough to suggest some vague, undefined connection with Olympic Games or the Olympic movement in general but a precise association with the Sydney 2000 Games.

29. For present purposes, section 30 of the Olympic Insignia Protection Act defines “use for commercial purposes” and states that if a person applies a protected olympic symbol to his goods for promotional purposes or in a way likely to enhance demand for those goods (section 30(2)(c)) and in a way which would suggest to a reasonable person that “the first person is or was a sponsor of, or is or was the provider of sponsorship‑like support for the AOC[4] or  the IOC[5] or the Olympic Games[6], then if the expression is applied in Australia the application is use by the first person of the expression for commercial purposes”.

    [4] Section 30(2)(c)(i)

    [5] Section 30(2)(c)(ii)

    [6] Section 30(2)(c)(iii)

30. The Applicant submits “that nexus will only arise if the application of the OLYMPIC trade mark by PPG to its class 2 goods would suggest to a reasonable person that PPG is a sponsor of (or provides sponsorship-like support to) the Olympic Movement” and referred me to the decision of Hearing Officer McDonagh in Australian Olympic Committee v ERI Bancaire Luxembourg SA. (2006) 69 IPR 135, another case which also involved, inter alia, a section 42(b) ground of opposition based on the Olympic Insignia Protection Act.  

31. The trade mark at issue in that case was OLYMPIC BANKING SERVICES, filed in classes 35, 36 and 42.  Hearing Officer McDonagh wrote at [34]:

    I consider that there needs to be more than simply using the word “Olympic” in a trade mark to suggest to a reasonable person that there is some connection with the opponent. Especially in a case, such as here, where the other words in the trade mark have nothing to suggest Olympic sports and activities. For example, other words, colours, symbols or items suggestive of the Olympic Movement could provide the necessary suggestion.

32. Needless to say, the Opponent was quick to distinguish the trade mark OLYMPIC BANKING SERVICES from the applied-for trade mark, but it was also astute to point out that under section 36(1) the trade mark containing the protected expression need not suggest sporting activities so long as the use would suggest to a reasonable person that the trade mark applicant was a sponsor of the AOC, or the IOC, or the Olympic Games (see section 30).

33. For its part, the Applicant argued that any inference so drawn by a reasonable person would pay regard, amongst other matters including the nature of the goods at point, to the state of the Australian marketplace.  The Applicant points to the fact that the evidence filed in these proceedings shows that the word OLYMPIC is used in Australia by various people and businesses ranging across a broad array of goods and services, there being no apparent connection between them and the AOC, nor approval given to them by the AOC.  Whilst it is true that some of those businesses predate the implementation of the Olympic Insignia Protection Act (which has a grandfathering exemption), it is nonetheless clear that many do not.

34. Section 15AA of the Acts Interpretation Act 1901 states that when interpreting a provision of an Act, the interpretation that would best achieve the purpose or object of the Act (whether or not that purpose or object is expressly stated in the Act) is to be preferred. The objects of Chapter 3 of the Olympic Insignia Protection Act, which confers protection on protected olympic expressions and regulates their use, are stated in section 22 as the protection and furtherance of the position of Australia as a participant in, and a supporter of, the world Olympic Movement. This is to be achieved by facilitating the raising of licensing revenue through the regulation of the use for commercial purposes of certain expressions associated with the world Olympic Movement.

35. I am not certain that the stated object of the legislation better informs my understanding of section 30, however I am persuaded of the correctness of the Opponent’s submission that “[W]hether an inference of sponsorship or sponsorship like support can be drawn has to be made after considering the evidence of licensing and sponsorship arrangements. There is a temptation to try to decide this issue by reference to the category of goods involved as a shorthand way of determining the issue. … The issue has to be decided on a case by case basis and in light of the evidence before the Registrar.”

    Evidence

36. The evidence in this matter consisted of a number of statutory declarations filed and served as evidence in support, evidence in answer, and later, evidence in reply.  A great part of the evidence has no direct bearing on the decision I have made and detailed recitation of the declarants and of their evidence is largely redundant.  I will refer simply to those relevant sections of the material in what follows.

37. The Opponent contends that a commercial purpose within the meaning of section 30 of the Olympic Insignia Protection Act is established.  First, the Opponent reiterates that neither a sponsor not a sponsor’s business need have any connection with sport or the Olympic movement.

38. Alan Geoffrey Grover has been the director of marketing and brand protection for the Opponent since 1990.  To his statutory declaration made 25 May 2010 is exhibited the so-called Register of Licence which lists 56 licences granted by the Opponent to use protected Olympic insignia in connection with various goods and services.  Clearly there is a broad range of licensed business and licensed products. 

39. Secondly, the Opponent points to licences in relation to goods of the same general kind (either paints or industrial products) as those sought to be registered by the Applicant under the trade mark.  In particular, Mr Grover refers to the 28 August 2005 licence between the Opponent and Dulux Australia, according to the terms of which Dulux became a sponsor of the 1996 Australian Olympic Team and was licensed to use certain Olympic signs in relation to “the product category of paint”.  The licence agreement explains that this category “includes both decorative paint and technical paint for automotive, powder coating, industrial packaging and coil applications.”  The licence term ran for little more than a year and the licence fee was substantial, measured by any commercial standard.

40. Mr Grover also points to the license arrangement between the Opponent and the General Electric Company under which certain protected Olympic insignia were allowed to be used in connection with that company’s plastic and silicone products.

41. Mr Grover exhibits to his declaration an advertisement from 12 July 1996 Sunday Telegraph newspaper showing what is said to be an example of Dulux’s advertising under the licensed terms. 

42. The advertisement promotes a board game called “Olympiad - Game of Champions” (said to be produced by Dulux under licence from the AOC) which might be won by readers who collect hidden “Dulux Olympiad” tokens from the newspaper over successive weeks.

1. It is not at all clear to me how the product promoted in that advertisement relates to the Dulux licence exhibited to Mr Grover’s declaration, but in terms of section 30 of the Olympic Insignia Protection Act, the question which arises is whether this class of licensing and this sort of advertising activity (which clearly it was in Dulux’s case in that it indirectly promoted Dulux’s goods) is likely to cultivate an atmosphere where a reasonable person, seeing the word OLYMPIC used in relation to the goods designated by the trade mark application, would be likely to perceive a commercial purpose insofar as it would suggest to that person that the Applicant was a sponsor of, or was the provider of sponsorship‑like support for the AOC, the IOC or the Olympic Games generally.

2. I do not have advertising or promotional material from the Applicant but I can apply the test of fair and notional use of the trade mark enunciated by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 and make for myself a judgement as to whether that use would be likely to enhance the demand for the Applicant’s goods. I can also pay regard, as the Opponent asks of me, to that part of the evidence which suggests that the Applicant has already shown itself to be linked with Olympic games promotion.

3. Scott B. Sinetar is Vice President of the Applicant.  In his Statutory Declaration made 28 January 2011 he states that the Applicant or its predecessors in business have used the trade mark in the United States since 1938.  He states that “since 1998, the Applicant has been promoting its OLYMPIC branded architectural coatings through a website at Olympic.com.”   He goes on to state that “under an agreement with the United States Olympic Committee made in 1990, the Applicant and [its parent company] sponsored the 1992 United States Olympic Team.  Under a similar agreement with Olympic Trust of Canada and Canadian Olympic Association, PPG Canada Inc. sponsored the 1992 Canadian Olympic Team.”

4. Mr Sinetar goes on to declare that under those arrangements the Applicant (or its parent company) promoted “Designated Goods, including its OLYMPIC branded architectural coatings”.

5. In making my assessment of commercial purpose as defined in section 30, I have borne in mind the purpose of the legislation. If there was uncertainty that the trade mark might be used in relation to the goods in a manner which was likely to cause a reasonable person to draw the relevant inference or suggest a connection between the Applicant and the AOC, the IOC or the Olympic Games themselves, then the Applicant’s own capability to act in a way likely to induce such a suggestion or inference is admitted. Moreover, there is evidence (albeit not overwhelming) that the Australian public, of which the hypothetical “reasonable person” is a member, has been conditioned to a degree to seeing a diverse range of Olympic sponsors.

6. On an application of the correct onus and evidentiary standards, the Opponent has satisfied me that use of the trade mark would incur a breach of section 36(1) of the Olympic Insignia Protection Act and so in turn would be contrary to law under section 42(b) of the Act.

   Decision

7. The Opponent has established a ground of opposition it pursued at the hearing and is therefore successful. Accordingly, under section 55 of the Act, I refuse registration of application 1173281, such refusal to be implemented one month from the date of this decision. If the Registrar is notified of an appeal before that time, final determination of the application will be subject to the Court’s orders.

   Costs

8. Both parties requested costs in the event of success.  The Opponent has been successful and it is entitled to its costs, which I award against the Applicant according to the Official Scale.

   Debrett Lyons
   Hearing Officer
   Trade Marks Hearings
   8 February 2012