Australian Olympic Committee v Courier Luggage Pty Ltd

[2002] ATMO 2

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 applications 804720 – OLYMPIA by COURIER – and 804721 – OLYMPIA –both in Class 18, filed in the name of Courier Luggage Pty Ltd.

Background

These issues arise out of the filing of applications 804720 and 804721 on 24 August 1999 (‘the priority date’) for goods in Class 18 by Courier Luggage Pty Ltd (‘Courier’).  The applications seek registration of the trade marks OLYMPIA BY COURIER (804720) and OLYMPIA (804721) for the goods:

Travel goods in this class being bags, cases, trunks, trolley cases, suitcases, garment bags, wet packs or toilet bags, backpacks, beauty cases, and parts and accessories for these goods

Following examination, the applications were accepted for registration and advertised as such in the Australian Official Journal of Trade Marks on 23 December 1999. 

On 22 March 2000, within the time allowed to do so, the Australian Olympic Committee Inc (‘the AOC’) served and filed Notices of Opposition (‘the Notices’) to the registration of the trade marks. The grounds cited in the Notices are under sections 41, 42, 43, 58 and 60 of the Trade Marks Act 1995.

The AOC has served and filed evidence in support of the oppositions.  Courier has not served or filed evidence in answer.  The evidence in support comprises an identical declaration by Alan Grover, Director of Marketing of the AOC, filed in relation to each application.  For convenience, I will treat these two declarations as one. 

On 6 September 2001, the AOC served and filed a further declaration by Adrina Chia, the solicitor handling these matters for the AOC.  This declaration draws my attention to the introduction of the Olympic Insignia Protection Amendment Act 2001.  A copy of the declaration by Adrina Chia has been served on Courier.  I accept that the AOC did not know that the Olympic Insignia Protection Amendment Act 2001 was pending when its evidence in support of the oppositions was filed.  The subject matter of the declaration of Adrina Chia is of direct and immediate relevance to these proceedings.  Courier have had an opportunity to consider the declaration, receive advice from their legal advisors and respond to it.  I therefore consider that it is procedurally fair to accept the declaration of Ms Chia as late evidence in support of the AOC oppositions.

Mr Grover’s declaration attests to the birth and growth of the modern Olympic movement, the AOC’s role in the Olympic movement and the scope of the Olympic movement in Australia.  I will not dwell on this at length, since the story is well known.  In brief, the modern Olympic Games were conceived in 1894 by Pierre de Coubertin to celebrate both sporting prowess and high ethical ideals.  Since a modest and informal beginning (in 1896, 10 countries were represented at the first Games in Greece), the Games have grown to the extent that, in Atlanta, in 1996, athletes from 197 nations took part in competition.  An estimated 4 billion people watched the Atlanta Games. 

Framework

Neither party has requested a hearing in the issue, or put in written submissions.  Section 55 of the Act provides:

55  Decision

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.

The matters have therefore come to me to decide, based on the material on the files, as a delegate of the Registrar of Trade Marks. For reasons which will become obvious, the rationale for my decision is briefly stated. It is my consideration that the evidence filed would not have underpinned argument under sections 41, 43, 58 or 60 specified in the Notice and I find that the AOC has not established its opposition in terms of those grounds.

Reasons

Section 33 of the Act provides:

33 Application accepted or rejected

(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a) the application has not been made in accordance with thisAct; or

(b) there are grounds for rejecting it.

In Registrar of Trade Marks v Woolworths [1999] FCA 1020 , French J said at paragraph 45:

The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

Although French J talked of section 44 of the Act, the same principle to which he referred applies to other sections within Part 4 under which opposition to registration may be argued, including section 42, below.

Section 42 of the Act 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)       …………..

(b)       its use would be contrary to law.

In Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 (8 June 2001) Madgwick J said at paragraph 24:

However, in my opinion the fact that the existence of any contrariety to law is to be exercised in some circumstances by an administrative body and, in other circumstances, by a judicial body does not mean that the phrase "if its use would be contrary to law" should have an ambulatory meaning, depending upon what kind of tribunal is to apply it. Nor can any reticence on the part of an administrative decision-maker to express an opinion on a matter of law be encouraged. The idea that "contrary to law" in the context of judicial proceedings means contrary to all laws, whilst in the context of proceedings before the Registrar it means contrary to laws which are easy for the Registrar to determine or which are "clear cut", is not sustainable. As a matter of practice, delegates of the Registrar have in some cases determined that a trade mark submitted for registration is contrary to law as a result of its being in breach of other legislation: see Re Application by Slaney (1985) 6 IPR 307 at 309 where a trade mark was found to be in breach of the Health Legislation Amendment Act 1983 (Cth) and Re Application by Athol Thomas Kelly (1987) 8 IPR 667 at 672 where it was found that the trade mark would infringe the Advance Australia Logo Act 1984 (Cth). I see no reason why some legislation should be able to be relied on before the Registrar to establish contrariety to law and other legislation such as the Copyright Act, albeit more complex, should not. Further, it is well-settled that a power granted to the Registrar and to a court can be at once administrative and judicial depending on who was exercising the power. The High Court so held in R v Quinn; Ex parte Consolidated Foods Corporation (1977) 138 CLR 1, of a power to remove a trade mark from the Register.

The AOC has drawn my attention via Ms Chia’s declaration to legislation which governs use of various Olympic indicia.

There are various symbols associated with the Games such as the Olympic Torch and the five intertwined rings for which statutory protection in Australia has existed in the form of The Olympic Insignia Protection Act 1987 amended by the Olympic Insignia Protection Amendment Act 1994. Statutory protection for words associated with the Olympics has dated from 20 September 2001, via the further amendment of The Olympic Insignia Protection Act 1987 by section 24 of the Olympic Insignia Protection Amendment Act 2001 which, inter alia, provides:

24 Protected olympic expressions

(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.

Part 3.4 of the Olympic Insignia Protection Amendment Act 2001 provides for the enforcement of the Act.  Remedies obtainable by the AOC or a licensed user before a Court include corrective advertisements, interim injunctions, damages, delivery up of goods and account of profits.

An exception to the provisions of section 24 is provided by section 71 of the Olympic Insignia Protection Amendment Act 2001, which provides:

71 Preservation of existing rights

Trade marks and designs

(1) This Chapter, so far as it applies in relation to a protected olympic expression, does not affect rights conferred by law on a person in relation to:

(a) a trade mark that is registered under the Trade Marks Act 1995; or

(b) a design that is registered under the Designs Act 1906;

and was so registered immediately before 20 September 2001 in relation to the expression.

As the opposed trade marks were not registered immediately before 20 September 2001, they do not belong within the exempted class of trade marks and I must consider the applicability of section 24, above.

The question to be considered is whether I am satisfied that the word OLYMPIA, within the opposed trade marks, 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.

In Australian Olympic Committee and Sydney Organising Committee for the Olympic Games v Alan ArchibaldCalder [2000] ATMO 35 (14 April 2000), I said:

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.

This approach was adopted in The Australian Olympic Committee v Hugh Thompson [2000] ATMO 78 (28 July 2000) by Hearing Officer Nancarrow, who said:

… the words 'so nearly resembling' imply a requirement of closer connection between the compared articles than the expression used when comparing two trade marks, of mere 'deceptive similarity'. [The] phrase 'approaching a substantial identity' indicates, to me, that something more than 'deceptive similarity' is needed to satisfy the requirements of s.19 of the OIP Act but that something slightly less than 'substantial identity' would suffice.

The word ‘Olympia’ denotes a plain in Greece, in the North West Peleponnes, where the original Olympic Games were held by the Ancient Greeks. This plain also contained a major sanctuary of the Greek God Zeus. The word ‘Olympia’ is also used occasionally as a female forename. The expressions protected under section 24 of Olympic Insignia Protection Amendment Act 2001 are each ultimately derived from the opposed word ‘Olympia’.  For simplicity and brevity, I will consider the opposition in terms of what I consider to be the closest of the protected expressions, the word ‘Olympiad’.  This word has various meanings:

a staging of the modern Olympic Games;

the four year period between consecutive stagings of the modern Olympic Games;

a unit of chronology dating back to 776 BC; and,

an international contest in chess, bridge, etc.

(Collins English Dictionary)

The context of the use of the words may be a factor in the comparison of them.  In Australian Olympic Committee, Inc v Aristocrat Technologies Australia Pty Ltd [2001] ATMO 33 (7 May 2001), Hearing Officer Nancarrow said:

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 PROPORTION ' 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.

However, here there is no matter surrounding the opposed trade marks to bring such factors into consideration.

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].

[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.

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. 

Decision

As the word OLYMPIA, occurring in the opposed trade marks, is not likely to be mistaken by a reasonable person for a protected Olympic expression, it is not, in terms of section 24 of the Olympic Insignia Protection Amendment Act 2001, likely to be taken to be a protected Olympic expression. As a result, the use of the trade marks is not contrary to law in terms of section 42 of the Trade Marks Act 1995 and I must, in terms of section 55, above, register the trade marks, subject to any appeal against these reasons.

Costs

I have had no submission as to costs and I make no order.

Ian Thompson
Hearing Officer

14 January 2002