Australian Olympic Committee Inc v Schwarzkopf & Henkel GmbH

[2005] ATMO 37

TRADE MARKS ACT 1995

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

Re:Opposition by Australian Olympic Committee Incorporated to registration of trade mark application 967567(3) - OLYMPIA - filed in the name of Hans Schwarzkopf & Henkel Gmbh & Co. KG.

Delegate:	Jock McDonagh
Representation:	Opponent: Law Office of Simon Rofe (written submissions) Applicant: Angela Searle of Spruson & Ferguson
Decision:	1. Opposition dismissed, application to proceed to registration 2. Costs awarded against the opponent

Background

1. The applicant, Hans Schwarzkopf & Henkel Gmbh & Co. KG, applied to extend protection of its international trade mark registration to Australia.  Details of the Australian application are as follows:

Application Number:	967567
Priority date:	10 June 2003
Goods:	Class   3   Perfumery of all kinds in liquid and solid form (tablets), face and hair powders, hair lotions, eaux de toilette,     toilet vinegars and scented vinegars, scented powders for      cosmetic purposes, dental powders, toothpastes and creams,      mouthwashes, mouth rinses, hair oils, pomades and      preparations for the care of the skin, hair and fingernails, toilet soaps of all kinds in liquid, semi-liquid, solid and spray form, shaving soaps, shaving soaps in powder and cream form
Trade Mark:	OLYMPIA
Advertised:	8 January 2004

1. The opponent, the Australian Olympic Committee Incorporated, filed notice of opposition to the trade mark's registration on 5 February 2004.  That notice listed three of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act"). Those grounds were under sections 42, 43 and 60 of the Act.

2. The opponent duly served and filed evidence in support. The applicant likewise served and filed evidence in answer. The opponent served evidence in reply.

3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Sydney on 17 March 2005. The opponent relied on written submissions from its legal advisor and was not represented at the hearing. Ms Angela Searle of Spruson and Ferguson, Attorneys, represented the applicant.

   The Evidence

4. Details of the evidence is shown in the following table:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Alan Geoffrey Grover	27.04.04	Annexes A to L	Grover
Evidence in Answer
Angela Aitchison Searle	2.08.04	AAS-1	Searle
Evidence in Reply
Lee Eric Schofield	26.10.04	LES1 to LES12	Schofield

1. The Grover declaration attests to the birth and growth of the modern Olympic movement, the opponent's role in the Olympic movement and the scope of the Olympic movement in Australia.  It also includes, amongst other matters, details of the marketing aspects of the 2000 Sydney Olympic Games, the 2002 Salt Lake City Olympic Winter games, the nexus between the town of Olympia and Olympic Games, various trade marks owned by the opponent, and recent and future funding activities of the opponent.

2. The Searle declaration exhibits the results of a search of the IP Australia ATMOSS database, which shows some 20 registrations and applications that include the word Olympia.

3. The Schofield declaration provides details of, and exhibits the results, an Internet search to ascertain the use by the applicant of the applied for trade mark. The search was conducted on 20 October 2004.

4. The applicant has objected to the Schofield declaration.  It asserts that the material does not comprise evidence in reply to the applicant's evidence in answer.  It also asserts that since the material was obtained well after the priority date it is irrelevant to these proceedings.

5. As I am not strictly bound by rules of evidence, I do not intend to reject the Schofield declaration out of hand.  I shall treat the material as further evidence in so far as it is relevant.  However, its use is severely limited for two major reasons.  The first is that it was collected well after the priority date, and the second is that it is largely in the German language, which I do not speak.  The purported translation page at annexure LES12 contains [often amusingly] fractured English, presumably prepared by the translation function of the Google Internet search engine used by the opponent.  I shall quote of the last line of the exhibit to illustrate the problem: ‘With the sport event appropriate company tendency will naturally not be missing: one may be strained on the “companies freshness kick” of the completely special kind.’

   Ground 1 - Section 42 (b): use of trade mark contrary to law

6. Following the decision of Madgwick J in Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd (2001) 5 IPR 24, the Registrar is obliged, when assessing whether use would be contrary to law under s.42(b), to take into account the operation of laws and legislation other than the Trade Marks Act 1995.

7. Here, the opponent alleges that use of the trade mark would constitute a breach of section 36(1) of the Olympic Insignia Protection Act 1987 (“OIPA”). This provision states:

   A person, other than the AOC, must not use a protected olympic expression for commercial purposes.

8. “Protected olympic expression” is defined at section 24 OIPA as follows:

   (1) For the purposes of this Chapter, each of the following expressions is a protected olympic expression:

   (a) Olympic;

   (b) Olympics;

   (c) Olympic Games;

   (d) Olympiad;

   (e) Olympiads.

   (2) For the purposes of this Chapter, an expression so closely resembling a protected olympic expression mentioned in subsection (1) 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.

9. The question to be considered is whether I am satisfied that the word olympia is an expression so closely resembling any of the protected Olympic expressions Olympic; Olympics; Olympic Games; Olympiad; or, Olympiads as to be likely to be mistaken, by a reasonable person, for such a protected Olympic expression.

10. This question has already been considered by a delegate of the Registrar, in Australian Olympic Committee Inc v Courier Luggage Pty Ltd (2002) AIPC ¶91-806. Hearing Officer Thompson concluded at page 37,778:

    ‘I am not satisfied that it is likely that a reasonable person would mistake the word ‘Olympia’ for the protected expression ‘Olympiad’.  Although it is quite possible, I believe, that a reasonable person could mistake the word ‘Olympia’ for the word ‘Olympiad’, I am not satisfied, in terms of the test in Woolworths, above, that a reasonable person, on the balance of probabilities, would be likely to mistake either of the opposed trade marks for a protected Olympic expression.  In coming to this conclusion, I have balanced the visual impression of the indicia, the aural effect of the indicia and how reasonable people are likely to remember, recall and understand the words.  I take into account the words of Sargant LJ concerning the importance of the first part of a word when comparing trade marks and the tendency of people to slur the last syllables of words[1] and the so-called doctrine of imperfect recollection[2].

    Aurally, the protected expression OLYMPIAD has stress on the final syllable and the letter ‘A’ in the word is pronounced in the same manner as in the word ‘apple’.  The pronunciation of the letter ‘A’ in the word OLYMPIA is softer, is unstressed, and approximates the sound of the letters ‘AR’ as in the word ARTHUR.  The words are thus aurally distinct from each other.

    Additionally, the significations of both words are very well known and these meanings are quite different.  The doctrine of imperfect recollection is thus of limited applicability here.  The reasonable person is likely to be relatively well educated about such things and is, on the balance of probabilities, not likely to mistake the meanings of the one indicium for the other. 

    Thus, 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.’ 

    [1]  London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264.

    [2]  Rysta Ltd.'s Application (1943) 60 RPC 87, at 108 per Luxmoore L.J. reversed (but not on this issue) in Aristoc Ltd. v. Rysta Ltd. (1945) AC 68, applied by the High Court in Berlei Hestia Industries Ltd. v. Bali Co. Inc. (1973) 129 CLR 353, at 362.

11. I can see no reason why I should not come to the same conclusion. Therefore, I dismiss this ground of opposition.

    Ground 2 - Section 43: a connotation within the trade mark

12. Section 43 provides:

    Trade mark likely to deceive or cause confusion

    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.

13. This section does not depend on the existence of a conflicting trade mark.  Connotation refers to that which is implied within the mark itself, as a secondary implied or associated meaning: Down to Earth (Victoria) Co-operative Society Ltd v Schmidt (1998) 41 IPR 632 at 644 and confirmed in Winton Shire Council v Lomas (2002) 56 IPR 72.

14. TGI Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 confirms that the connotation must be in the applicant's trade mark itself. The connotation cannot be determined as a result of external considerations, such as reputation or use.

15. The opponent submitted that a reasonable person would automatically associate the use of the trade mark olympia with the opponent or the Olympic movement in Australia and assume that the goods of the applicant are endorsed by or produced under licence by the opponent.

16. There are two possible connotations that could conceivably be attributed to the applicant's trade mark, namely of geographical origin and of endorsement or license. 

17. The opponent has not provided any evidence that the township of Olympia is known as a manufacturing source of the goods covered by the applied for trade mark.  I am not satisfied that the trade mark olympia connotes geographical origin of such goods in a manner likely to cause deception or confusion.

18. Further, the opponent has not provided any evidence to suggest that consumers seeing the mark applied to the applicant's goods are likely to be deceived or confused into believing that such goods are connected with the Olympic movement.  I am not satisfied that there is such a connotation or that there is a likelihood of deception or confusion.

19. I dismiss this ground of opposition.

    Ground 3 - Section 60: Reputation

20. To satisfy section 60 of the Act, the opponent has the burden of establishing the following elements:

    (a)       a pre-existing trade mark;

    (b)substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

    (c)the acquisition of a reputation in Australia by the pre-existing trade mark; and

    (d)a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

21. The opponent, in evidence in support, cites a number of prior registrations owned by the opponent and featuring the word Olympic.  These are 521159 the olympic dream, 858082 olympic hall of fame, 702321 olympic club, 879731 olympic communicators, 881151 olympic winter institute in australia, and 913242 australian youth olympic festival.

22. 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. The test to determine whether trade marks are 'deceptively similar' is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407, at 415:

    'The marks are not now to be looked at side by side [as for substantial identity].  The issue is not abstract similarity, but deceptive similarity … the comparison … is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant's [trade mark]'

24. Further, the Court added at 416, that:

    '[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.'

25. The criteria for deceptive similarity have been set out in Australian Woollen Mills Limited v F S Walton & Co Limited (1937) 58 CLR 641 at 658 and by Parker J in Pianotist Co's Application (1906) 23 RPC 774 at 778 and reiterated in Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411.

26. Each of the opponent’s trade marks is a phrase in which something is described as olympic.  Each is quite clearly connected to the Olympic movement, and is most unlikely to be confused with a single word with a quite different meaning and significance.

27. 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.

    Conclusion

28. The opponent has not established any of its grounds of opposition.  Accordingly, I dismiss the opposition.

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

    Costs

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

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    30 June 2005