Australian Olympic Committee & Sydney Organising Committee for the Olympic Games v Alan Archibald Calder

[2000] ATMO 35

TRADE MARKS ACT 1995

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

Re:Oppositions by Australian Olympic Committee and Sydney Organising Committee for the Olympic Games to registration of trade mark application 775469(39) - 2000 BUS Device- filed in the name of Alan Archibald Calder.

Background

These issues arise out of the filing, on 13 October 1998, by Alan Archibald Calder (the applicant) of an application to register the trade mark appearing below in respect of the services also appearing below:

Class 39:         Travel arrangements, tours

‘the trade mark’

Following examination, the application was accepted on 7 January 1999 and advertised in the Official Journal on 11 February 1999.

On 10 May 1999 and 20 April 1999 respectively, the Australian Olympic Committee (AOC) and Sydney Organising Committee for the Olympic Games (SOCOG) each filed Notice of Opposition to the registration of the application.  The Notices are couched in broadly related terms and, inasmuch it is relevant to this issue, AOC alleges that the trade mark is deceptively similar to the insignia nominated at The Schedule to the Olympic Insignia Protection Act 1987 (OIPA) and specified at section 6 to the OIPA.  The Notice filed by SOCOG otherwise alleges that the trade mark is substantially identical with, or deceptively similar to, one or more of the SOCOG trade marks which have developed a reputation in Australia.

In short, the oppositions go to both sections 42 and 60 of the Trade Marks Act 1995.

All parties have been given the opportunity to appear to argue their cases or lodge written submissions in these issues, but they have chosen to rely on the material lodged as evidence in support of the application and on the official file.  It is on that basis that I issue these reasons.

The evidence

The SOCOG evidence consists of a statutory declaration by Suzanne Williams (the Williams declaration) who is General Counsel for that organisation.  After giving the background history of the Olympic Games, Ms Williams continues by drawing my attention to the Olympic Charter that gives the International Olympic Committee (IOC) exclusivity in, inter alia, the symbol of the five intertwined Olympic rings.  The Charter also vests responsibility for the protection of the Olympic symbols in the National Olympic Committees (NOCs) in their respective countries.  Ms Williams outlines some of events that led to the forthcoming Olympic Games in Sydney and the contractual obligations that have arisen between the Organising Committee for the Olympic Games, the NOC and the IOC as relates to the protection of the Olympic Symbols.

Part of the reason, she says, for the protection of the Olympic Symbols is to aid the organisers of the Games to gain income for the staging of the Games via the licensing of the commercial use of the Symbols.

Ms Williams then refers to a species of trade mark piracy generally called ambush marketing whereby a person tries to derive a commercial benefit (via the commercial use of the Olympic Symbols) from the implication that the person has an association with the Olympic Games when such an association does not, in fact, exist.

In 1996, as a result of an investigation and report by the Senate Legal and Constitutional References Committee, the Commonwealth parliament passed the Sydney 2000 Games (Indicia and Images) Protection Act 1996 (the Indicia Act). The Indicia Act states, inter alia:

3  Objects of Act

(1)            The objects of this Act are:

(a)to protect, and to further, the position of Australia as a participant in, and a supporter of, the world Olympic and Paralympic movements; and

(b)to the extent that it is within the power of the Parliament, to assist in protecting the relations, and in ensuring the performance of the obligations, of the Sydney 2000 Games bodies with and to the world Olympic and Paralympic movements;

in relation to the holding of the Sydney 2000 Games.

(2) Those objects are to be achieved by facilitating the raising of licensing revenue in relation to the Sydney 2000 Games through the regulation of the use for commercial purposes of the indicia and images associated with the Games.

Ms Williams subsequently says that the Indicia Act provides:

12  Regulation of use of Sydney 2000 Games indicia and images

(1)            A person, other than:

(a)SOCOG; or

(b)SPOC; or

(c)a licensed user;

must not use Sydney 2000 Games indicia or images for commercial purposes.

Thereafter, Ms Williams refers me to the Olympic Insignia Protection Act 1987.

Ms Williams finishes her declaration by outlining SOCOG’s financial responsibilities.

The AOC evidence consists of a declaration by Alan Grover (the Grover Declaration).  Mr Grover states that he is Director of Marketing of the AOC.  I note that, to all intents and purposes, the Grover declaration and the Williams declaration are identical.  Large portions of the declarations follow precisely the same wording and layout over some eight pages and the deviations are only minor.  It therefore adds nothing to these reasons to reiterate the beliefs of Mr Grover or the facts within his knowledge as they are identical to those of Ms Williams.

Reasons

Section 42 of the Trade Marks Act 1995 provides:

42  Trade mark scandalous or its use contrary to law

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

(a)the trade mark contains or consists of scandalous matter; or

(b)its use would be contrary to law.

It is the general thrust of the evidence in this matter that I am to decide these issues in terms of subparagraph 42(b) – that is, that the application to register this trade mark must be rejected if its use would be contrary to law.  In deciding these issues I bear in mind the fact that some considerations of the particular uses of a trade mark which may be contrary to law might not be open to me to decide as they might be ultra vires my power as a Delegate of the Registrar:  The Queen v Quinn; Ex Parte Consolidated Food Corporation (1977) 138 CLR 1.

As observed in the evidence, section 12 of the Indicia Act provides:

12  Regulation of use of Sydney 2000 Games indicia and images

(1)            A person, other than:

(a)SOCOG; or

(b)SPOC; or

(c)a licensed user;

must not use Sydney 2000 Games indicia or images for commercial purposes.

It is not suggested that the applicant is either SOCOG or SPOC (the Sydney Paralympics Organising Committee). The Indicia Act at section 8 further defines the indicia as being any of a wide range of words, phrases and numerals, (and some combinations of these), such as Games City, Millenium Games, Olympiad, Team Millenium, and so forth. The Olympic Rings per se are not mentioned. The Indicia Act continues:

9  Sydney 2000 Games images

For the purposes of this Act:

common Sydney 2000 Games images means any visual or aural representations that, to a reasonable person, in the circumstances of the presentation, would suggest a connection with the Sydney 2000 Olympic Games and the Sydney 2000 Paralympic Games.

Sydney 2000 Olympic Games images means any visual or aural representations that, to a reasonable person, in the circumstances of the presentation, would suggest a connection with the Sydney 2000 Olympic Games.

Sydney 2000 Paralympic Games images means any visual or aural representations that, to a reasonable person, in the circumstances of the presentation, would suggest a connection with the Sydney 2000 Paralympic Games.

As the trade mark is obviously not included in the Sydney 2000 Games Indicia, it would appear to follow from the language of the relevant portion of the Indicia Act that the oppositions are founded by SOCOG and the AOC on the basis that the trade mark is a Sydney 2000 Olympic Games Image. However, section 13 of the Insignia Act provides:

13  Use of Olympic insignia not regulated by this Act

The use of the Olympic insignia protected by the Olympic Insignia Protection Act 1987 is not regulated by this Act, and this Act is not intended to affect the operation of the Olympic Insignia Protection Act 1987.

The OIPA allows:

"olympic symbol" means the symbol an outline of which is set out in the Schedule;

The Olympic Symbol, a representation of which is set out in the Schedule, is:

 

It might be argued that, as the trade mark is obviously not the Olympic Symbol, I might proceed to decide the issue in terms of section 9 of the Insignia Act on the basis that the trade mark is an Olympic Image. However I note that such an approach would avoid the most obvious meaning of section 13 of the Indicia Act which I take as directing that all issues involving the Olympic Symbols, and signs similar to them, are to be decided in terms of the OIPA.  Further, the indicia protected by the Indicia Act are words, which include some words in combination with the numeral 2000: applying the principle of iusdem generis, a symbol or a device is obviously a different kind of thing from the list of words specified in the Indicia Act.

It is therefore not open to me to decide in the way that Ms Williams and Mr Grover would appear to invite me to decide, in terms of the Indicia Act and the oppositions must fail to the extent that they were founded on this basis.

Olympic Insignia Protection Act 1987
The OIPA provides, inter alia:

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 is amended by the Olympic Insignia Protection Amendment Act 1994 which inserts the following:

Section 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;".

Further, in view of the reference to the Trade Marks Act 1955, and fact that the Act I am giving my reasons under is the Trade Marks Act 1995, I note that section 10 of the Acts Interpretation Act 1901 provides:

10  References to amended or re-enacted Acts

Where an Act contains a reference to a short title that is or was provided by law for the citation of another Act as originally enacted, or of another Act as amended, then, except so far as the contrary intention appears:

(a)the reference shall be construed as a reference to that other Act as originally enacted and as amended from time to time; and

(b)where that other Act has been repealed and re-enacted, with or without modifications, the reference shall be construed as including a reference to the re-enacted Act as originally enacted and as amended from time to time and, where, in connexion with that reference, particular provisions of the repealed Act are referred to, being provisions to which provisions of the re-enacted Act correspond, the reference to those particular provisions shall be construed as including a reference to those corresponding provisions.

I think that the expression in section 19 of the OIPA, "or a mark so nearly resembling any of those marks as to be likely to be taken for that mark" anticipates that an offending trade mark, or part of it, in terms of the section will be one which is so close to the Olympic Symbol as to be almost interchangeable with it.  This degree of similarity, by its wording, is one approaching a substantial identity and the tests to be applied are a side by side comparison as in Shell Company Of Australia Ltd v Esso Standard Oil (Australia) Ltd  1B IPR 523 where Windeyer J says, at 529:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

In the light of the tests prescribed, I do not think that the applicant's trade mark is a trade mark so nearly resembling the Olympic Rings Symbol as to be likely to be taken for that Symbol.  For the sake of completeness, I note that I do not believe that the trade mark the subject of this application is deceptively similar to the Olympic Symbol.  The test for deceptive similarity, also per Windeyer J in Shell, supra, is that of a comparison "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 impressions that such persons would get from (the other)".  There is no reasonable likelihood that the signs in question could confuse or deceive on this basis.  The trade mark makes obvious reference to both the Olympic Symbol and the numeral 2000, however this is in a clever and oblique manner and is likely to be recognised by the public only on this basis.

Section 60
Neither SOCOG nor the AOC filed evidence of the reputation of any of their trade marks which might support the grounds for opposition under this heading. I further note that the minimum resemblance between trade marks in terms of section 60 is deceptive similarity. I have already decided that the trade mark and the Olympic Symbol are not deceptively similar.

Decision
There is no basis for a successful opposition to this trade mark application via section 42 of the Trade Marks Act 1995 within the Sydney 2000 Games (Indicia and Images) Protection Act 1997. In terms of section 42 of the Trade Marks Act 1995 and the Olympic Insignia Protection Act 1987, the opposition also fails.

I therefore direct that the application proceed to registration.

Costs
There have been no submissions as to costs.  The applicant appears to have incurred no costs on the official scale in relation to these oppositions but, if he can show such costs, he is entitled to claim them and I award costs against SOCOG and the AOC.

Ian Thompson
Hearing Officer

February 2000