Australian Olympic Committee v ERI Bancaire Luxembourg SA

[2006] ATMO 29

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 963680, 963681(35, 36, 42) - OLYMPIC BANKING SYSTEM - filed in the name of ERI Bancaire Luxembourg SA.

Delegate:

Jock McDonagh

Representation:

Opponent: Julia Baird of counsel, instructed by the Law Offices of Simon Rofe

Applicant: Trevor Dredge of Intellpro, Patent & Trade Mark Attorneys

Decision:

Section 52 opposition. Grounds of opposition under ss42(b), 44 &60 not made out – marks to proceed to registration – costs awarded against opponent

Background

1. The applicant, ERI Bancaire Luxembourg SA, applied to register the following trade marks:

Application Number:

963680  963681

Trade Mark:

olympic banking system

Priority date:

 23 December 2002 (Convention)

(Filed 8 May 2003)

Services:

Services (cont’d):

Class  35:  Consultancy, inquiry and information services in connection with business operations facilitated by the use of computer technology; assistance to industrial or commercial     companies, assistance to individuals in business activities; statistical and mechanical data processing tasks; data processing; updating of files; computer processing of banking and financial data; calculator or computer data, signal and information processing or remote processing services; providing computer technicians or computer staff; provision of files; selection by psychological tests of computer technicians or computer staff

Class  36:  Banking and financial activities; professional consulting in the field of finance (not in connection with business management)

Class  42:  Computer programming services; information technology consulting for the finance sector; studies in connection with information technology; electronic programming; computer and telecommunication system design; professional consulting in connection with information technology (not in connection with business management); consultancy and studies in connection with systems analysis, programming and information technology; design and preparation (except text drafting) of training and teaching manuals relating to the use and maintenance of computer hardware; design and development of computer and calculator programs; computer systems support and technical consultancy; leasing of computer hardware, particularly of computers and computer peripheral equipment; installation and maintenance of computer programs; provision (rental) of software for management and information purposes; updating and provision

Advertised:

 28 August 2003

1. The opponent, the Australian Olympic Committee Inc, filed notice of opposition to the trade marks’ registrations on 3 December 2003. That notice nominated grounds of opposition under sections 42(b), 44 and 60 of the Trade Marks Act1995 ("the Act"). 

2. The parties duly served and filed evidence in support, evidence in answer and evidence in reply pursuant to the Trade Marks Regulations1995 ("the Regulations").

3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Canberra on 9 November 2005. Ms Julia Baird of counsel, instructed by the Law Offices of Simon Rofe, represented the opponent. Mr Trevor Dredge of Intellpro, Patent & Trade Mark Attorneys, represented the applicant.

Evidence in the Opposition

1. The opponent’s evidence in support of the opposition comprises the statutory declaration of Alan Geoffrey Grover dated 4 February 2004 together with Annexures A to L (‘Grover 1’).

2. The applicant’s evidence in support of the opposition (including further evidence) comprises the statutory declarations of  Trevor James Dredge dated 22 March 2005 and Exhibits TJD‑1 to TJD‑3 (‘Dredge’),  and Berdon Regine made 31 March 2005 and Exhibit A (‘Regine’).

3. The opponent’s evidence in reply comprises the statutory declaration of Alan Geoffrey Grover made 12 July 2005 (‘Grover 2’).

4. The opponent is the owner of a number of Australian registered trade marks containing the word ‘olympic’, as shown:

Mark (word element only)	Class(es)	Number	Priority Date
the olympic dream	41	521159	13 October 1989
olympic club	35 and 36	702321	13 February 1996
the australian olympic team – the stars of the southern cross	2, 5, 12, 14, 16, 24, 25, 28, 29, 30, 32, 33, 36, 38, 39, and 41	770924	21 August 1998
olympic hall of fame	14, 16, 18, 20, 21, 25, 28, 35 and 42	858082	22 November 2000
olympic communicators	35, 38 and 41	879731	21 June 2001
olympic winter institute of australia	25, 28, 35, 41 and 42	881151	3 July 2001
australian youth olympic festival	14, 16, 18, 20, 21, 25, 28, 35, 41 and 42	913242	17 May 2002

(together, the ‘opponent’s marks’).

Opponent’s Evidence

1. The evidence filed by the opponent is summarised in the following paragraphs.

2. The International Olympic Committee (‘IOC’) was constituted on 24 June 1894 to implement the ideals of the modern Olympic Movement.  The IOC is the supreme governing body of the Olympic Movement and has the sole responsibility and right to hold the Olympic Games (both Summer and Winter).

3. The IOC held the first modern Olympic Games in Greece in 1896 and since then the Olympic Games have been held every four years, with the exceptions of 1916, 1940 and 1944.  The first Olympic Winter Games were held in 1924 and since then have been held every 4 years with the exception of 1940 and 1944, to coincide with the Olympic Summer Games until 1992.  Thereafter, the Olympic Winter Games have been held in the middle of the intervening period between the Olympic Summer Games.

4. The opponent is recognised by the IOC as the national Olympic Committee for Australia: Grover 1, paragraph 4.  Australia is one of only two nations that have participated in all the Olympic Games since 1896. 

5. The opponent’s evidence states that the name ‘olympic’ has, over 100 years of use, become to be inextricably associated with the Olympic Games, the IOC, and in Australia, with the opponent and the values that the Olympic movement embodies and upholds:  Grover 1, paragraph 14.

6. Alan Grover is the Group Manager, Brand Protection and Special Projects, of the opponent and previously the opponent’s director of marketing.  The Grover 1 declaration details matters relating to the opponent’s overall structure, funding, activities, and particular details as to licensing, sponsorship, ticketing and broadcasting in respect of the 2000 Sydney Olympic Games.

Applicant's evidence in answer

1. The Dredge and Regine declarations suggest that the applicant has not used the mark in Australia prior to the priority date.  Further, there is no suggestion that the mark has been used in Australia in the course of trade since the priority date up to and including the conclusion of the applicant’s evidence in answer on 31 March 2005. 

1. Mr Regine, a director of the applicant, declares that:

• the applicant is established in several European cities having a particular banking connection, namely Geneva, Zurich, Luxembourg, London and Paris: paragraph 3;

• the applicant is the market leader in the provision of banking and asset management software in the European states of Luxembourg, Monaco and Switzerland:  paragraph 4;

• the mark is used (in those states) as the name of an integrated real time banking and asset management software package: paragraphs 3 and 7.  

1. Mr Dredge is the applicant’s trade mark attorney.  His declaration comprises:

• a bundle of advertisements and articles;

• a download of the English language web pages appearing at the URL ‘olympicbankingsystem.com’ as it existed in March 2005;

• a copy of a decision of the Office for Harmonisation in the Internal Market (of the European Union) in respect of an unsuccessful opposition by the British Olympic Association to an equivalent trade mark application made in the European Community. 

Grounds of Opposition

Ground (1):        s42 - The use of the Mark would be contrary to law

1. In assessing whether use would be contrary to law under section 42(b), the Registrar is obliged to take into account the operation of law and legislation other than the Act: see Advantage-Rent-a-Car Inc v Advantage Car Rental Pty Limited (2001) 52 IPR 24.

(a)         The Olympic Insignia Protection Act 1987 (as amended)

1. The Opponent submits that the use of the mark by the applicant would be a breach of section 36(1) of the Olympic Insignia Protection Act 1987 as amended by Bill receiving Royal Assent on 29 October 2001 (‘OIPA’). A copy of OIPA is exhibited at annexure A to Grover 1.

2. OIPA prevents the unauthorised commercial use of a ‘protected olympic expression’.

3. The objects of Chapter 3 of OIPA, 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 the OIPA facilitating the raising of licensing revenue through the regulation of the use for commercial purposes of certain expressions associated with the world Olympic Movement.

4. A ‘protected olympic expression’ is defined in section 24(1) of OIPA as including each of the words ‘Olympic’, ‘Olympics’ and ‘Olympic Games’.

5. Section 36 of OIPA provides that a person, other than the Opponent or a licensed user of the Opponent, must not use a protected olympic expression (e.g. ‘Olympic’) for commercial purposes.

6. Use for commercial purposes is defined in section 30 of OIPA, which specifies two situations in which such use is deemed to occur:

situation (1) (initial advertising/ offer to supply/ sale)

(a)         where a first person applies a protected Olympic expression (e.g. the word ‘Olympic’) to their goods or services and the application is for advertising or promotional purposes or is likely to enhance the demand for the goods or services; and

(b)         the application of the word ‘Olympic’ to a reasonable person would suggest that the applicant is, or was a sponsor of, or is or was a provider of sponsorship‑like support to the Opponent, the IOC, a Summer or Winter Olympic Games, an organising committee for such Games, a section, individual member or the whole of an Australian Olympic team;

situation (2) (subsequent dealings)

(a)         where a first person has fulfilled the criteria of situation (1) in respect of goods or services, and a second person supplies or offers to supply those goods or services or exposes goods for supply or keeps goods for supply by another person.

1. The connection of the opponent with protected olympic expressions is made clear by section 36 and the enforcement provisions of OIPA set out in Part 3.4 (ss41‑47) which provide that the opponent, or its licensed user, are the entities that have the right to enforce the restriction on the use of protected olympic expressions and seek remedies for breach of those restrictions. 

1. The opponent states that it has not licensed the applicant to use the word ‘Olympic’ or any expression including the word ‘Olympic’ (including in the mark) for commercial purposes. 

2. The opponent asserted that prominence of the word ‘Olympic’ as part of the mark calls attention to that component, and seeks to derive benefit and custom for the applicant from the use of that word as part of the mark, trading on the reputation of, and the association with, one or more of the opponent, the IOC, and the Olympic Games. The opponent submitted that use by the applicant of the word ‘Olympic’ in the manner depicted in the applied-for mark, as demonstrated in the advertising and promotional use contained in exhibits TJD-1, TJD-2 and exhibit A, clearly suggests to a reasonable person as at the application date that the applicant is or was a sponsor of, or provider of support in exchange for a right to associate with, one or more of the opponent, the IOC, an Olympic Games, an organising committee of such a Games or an Australian Olympic Team, and thus contravening section 36(1) of OIPA.

3. The applicant submitted that the word ‘Olympic’ has “currency” and is able to be used such that it is not automatically considered to be related to the IOC or Olympic Movement generally.  For example, for entities such as Olympic Tyres and numerous ‘Olympic’ licensed establishments around Melbourne.

4. Further, the use of an olympic expression, of itself, was not forbidden; rather, it required use for commercial purposes as described in OIPA.  There needed to be something further to suggest that the expression was being used in connection with the Olympic Movement.

5. While it is obvious that both of the applicant’s marks contain an olympic expression, I am not satisfied that a reasonable person would think that the applicant is, or was a sponsor of, or is or was a provider of sponsorship‑like support to the opponent, the IOC, a Summer or Winter Olympic Games, an organising committee for such Games, a section, individual member or the whole of an Australian Olympic team.

6. 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. 

(b) Trade Practices Act 1974

1. The opponent further submitted that the use of the mark by the applicant would be a contravention of s52 of the Trade Practices Act 1974 (‘TPA’), namely, that the use of the Mark by the Applicant in trade or commerce in respect of services within the specification of services of the application, would be conduct that is misleading or deceptive or likely to mislead or deceive, as suggesting an association with the opponent, its services or the Olympic Games.

2. In Equity Access Pty Limited v Westpac Banking Corporation (1989) 16 IPR 431 at 440-442, Hill J formulated a number of propositions as relevant to a determination of whether a contravention of s52 was made out in a name/getup type case, which may be summarised as follows:

(a)         for conduct to be misleading or deceptive it must convey in all the circumstances of the case a misrepresentation;

(b) there will be no contravention of s52 unless the error or misconception results or would be likely to result from the conduct of the corporation and not from other circumstances for which the corporation is not responsible;

(c)          conduct will be likely to mislead or deceive if there is a ‘real or not remote chance or possibility’ of misleading or deception, regardless of whether it is more or less than 50%;

(d)         conduct causing mere confusion or uncertainty in the minds of the public, in the sense that there may be cause to wonder whether two products or services have come from the same source, is not necessarily co-extensive with misleading or deceptive conduct.  The court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived.  However, it is not necessary to show that all or substantially all persons in the market associate the name with the applicant/plaintiff’s goods/services, if it can be shown that if a substantial proportion of persons who are probable purchasers of the goods/services of the kind in question do so;

(e)         the applicant/plaintiff must establish that it has acquired the relevant reputation in the name, that is to say that the name has become distinctive of the applicant’s business or goods in a particular country or geographical area (the area may be local or Australia wide);

(f) s52 is not confined to conduct which is intended to mislead or deceive, and a corporation that acts honestly and reasonably may nonetheless engage in conduct that is likely to mislead or deceive:

1. I do not consider, given my conclusions regarding OIPA, that it is likely that use of the mark would have the consequence that a substantial number of persons seeing the mark used in relation to the services of the application would hold the mistaken belief that they would be acquiring services associated with the opponent, the IOC, or the International Olympic Movement.

2. I dismiss this ground of opposition. 

Grounds (2) and (3): section 44 and section 60

1. It is an element of both section 44 and section 60 grounds of opposition that the mark is ‘substantially identical with or deceptively similar to’ an opponent’s mark (prior registered or common law mark). The opponent submitted that the mark is substantially identical with, or deceptively similar to, one or more of the opponent’s marks. The opponent accepted that if the marks are not deceptively similar, they are not substantially identical.

2. In considering whether marks are ‘substantially identical’ they are to 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 that comparison’: Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 414-415.

3. Such a side by side comparison, notwithstanding the common feature of the word ‘Olympic’, clearly demonstrates that the marks are not substantially identical.

4. The test to determine whether trade marks are 'deceptively similar' is set out in Shell Company , supra, 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]'.

5. 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.'

1. 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) 93 FCR 365; 45 IPR 411.

2. An attempt must be made to estimate the effect or impression produced by the mark in the mind of potential customers.  The application of the criteria requires a practical assessment of the impression of the marks and the circumstances surrounding the way in which the marks can be used in respect of the services for which registration is sought in comparison to the opponent’s marks. 

3. While the applied-for mark and the opponent’s marks all share the word ‘Olympic’, the context of their use is such that I am not satisfied that the impression left with potential customers would be that of a common trade source.

4. The opponent’s marks share the idea of the Olympic Movement, and in the context of the words used and the goods and services to which they are applied all combine to maintain that idea. However, the applied for marks, in the context of the words used and the services to which they are applied do not similarly evoke the idea of the Olympic Movement.

5. I also refer to my comments regarding ‘commercial purposes’ in respect of OIPA, above, which also suggest that the marks are not deceptively similar.

6. I find that the applicant’s marks are neither substantially identical with, nor deceptively similar to, the opponent’s marks.  Consequently neither of the remaining grounds can be made out and I dismiss them.

Decision 

1. The opponent has not established any grounds of opposition. Therefore, the applicant's trade marks may 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

1. The applicant sought its costs. I see no reason why costs should not follow the general rule. I award costs against the opponent and direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Regulations).

Jock McDonagh

Hearing Officer

Trade Marks Hearings

31 March 2006