Australian Olympic Committee v Simon McLean Studio

[2002] ATMO 49

TRADE MARKS ACT 1995

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

Re:Opposition by Australian Olympic Committee to registration of trade mark application 828561(16, 25 and 28) - OLYMPIGS - filed in the name of Simon McLean Studio.

Background

Simon McLean Studio (the applicant) filed application number 828561 on 21 March 2000 in respect of goods that fall in three classes of the International Classification of Goods and Services (Nice Classification). The goods are 'Paper, cardboard and goods made from these materials, printed matter, stationery, teaching material, plastic materials for packaging (not included in other classes) and playing cards' in class 16, 'Clothing, headgear' in class 25 and 'Games and playthings; sporting articles not included in other classes' in class 28. The trade mark, which is the subject of the application, is olympigs. The application was accepted for registration without objection from the examination section of the Trade Marks Office (TMO) and duly advertised as accepted in the Australian Official Journal of Trade Marks (the Journal) of 23 November 2000.

The Australian Olympic Committee [AOC] (the opponent), after being granted a late extension of time in which to do so, filed a notice of opposition to registration of the trade mark on 8 March 2001. This notice listed grounds of opposition under ss.43 and 60 of the Trade Marks Act 1995.

The AOC, among many other responsibilities, has the duty to fund all Australian Olympic Teams chosen by the AOC to participate in the Olympic Summer and Winter Games, the East Asian Games, the Sydney Youth Olympic Festival and the Olympic Institute of Winter Sports. The AOC is not funded by the Federal or State governments and must, therefore, rely heavily on sponsorship and licensing programs to ensure the necessary funds.

From this background the opponent has alleged that the present mark is almost identical with the word Olympics and has argued that that word (or the word Olympic) is protected by means of the state government's Sydney 2000 Games(Indicia and Images) Protection Act 1996 and the Commonwealth legislation in respect of amendments to the Olympic Insignia Protection Act 1987. The opponent has also directed me to a total of 12 trade marks owned by either the AOC or the International Olympic Committee (IOC) consisting of, or containing, the word 'Olympic' which are either registered or pending applications on the Australian Register.

The principal of the applicant has submitted a single declaration as the evidence in answer in the matter. The applicant has concentrated, in argument that is to be found within the declaration, on rebutting the opponent's allegation that has been mounted via the Olympic Insignia Protection Amendment Act 2001 [OIPAA]. The applicant has also asserted that its olympigs mark is dissimilar to the word Olympics and 'unlikely to deceive or cause confusion in the context of the target audience'.

Neither party has requested to be heard in the matter and so the file has been directed to me for a decision based on the material held in the Trade Marks Office.

The Evidence

The opponent's evidence in support of the opposition comprises two declarations. The first of these, attested on 4 June 2001 by Alan Grover, the Group Manager, Brand Protection & Special Projects of the AOC, provides a great amount of detail concerning the history of the modern Olympic Movement and of the AOC. The lone attachment to the other declaration, sworn on 7 November 2001 by Adrina Chia, solicitor in the employ of Browne & Co. who act for the AOC, comprises a copy of the Olympic Insignia Protection Amendment Bill 2001 save ss.47 and 48.

The applicant's evidence in answer consists of a single declaration from Simon McLean, principal of Simon McLean Studio, dated 20 February 2002. Mr McLean sets out the history of the present application and challenges some opinions Ms Chia stated in her declaration. He also cites various court judgements and TMO decisions to support his argument.

Discussion

The opponent has listed two grounds of opposition under the Trade Marks Act 1995. These grounds, found under ss.43 and 60, are dealt with below. I note that various claims and allegations in the opponent's written material would appear to imply that it wishes to bring in other sections of the Act in addition to ss.43 and 60. However, I do not intend to involve myself with issues that may be pointing to other grounds of opposition, except very briefly after I have dealt with the two grounds claimed in the notice of opposition, to define the excluded grounds more fully.

(a) Section 43 - Trade mark likely to deceive or cause confusion

Here, the legislation allows:

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.

Ms Chia in her submissions on behalf of the opponent cited a passage from Hearing Officer Forno in Down to Earth (Victoria) Co-Operative Society Ltd v Schmidt, 41 IPR 632 at 644:

... the word connotation refers to that which is implied in a trade mark - in addition to its essential or primary meaning. A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark. The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion. Considerations under s.43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public. For example, deception or confusion could arise in regard to the character of the services, or the implied endorsement or licence of services by a person or organisation.

It is clear that the mark applied for is not to be compared not require comparison with another trade mark, word, symbol or any other entity to establish whether or not some similarity may cause deception or confusion. If a connotation exists in terms of s.43 then it must arise from some meaning that can be attributed to the mark, or a symbol contained within the mark, itself. Deputy Registrar Hardie comments in a similar vein in Durkan v Twentieth Century Fox Film Corporation, 47 IPR 651, at 657 in the words:

The operation of section 43 does not, however, depend on the existence of a conflicting trade mark. The purpose of the section is to exclude from registration any trade mark which, in respect of the nominated goods or services, conveys a meaning which, in respect of those goods or services, is likely to deceive or confuse. This does not require the existence of a conflicting trade mark.

The opponent has encouraged me to consider a word, Olympics, that is similar to the word in the present trade mark olympigs. However, it is simply any connotation or meaning for olympigs that I must consider, rather than whether or not the word is similar, visually or phonetically, to some other word. Clearly, the word olympigs is coined by means of a construction from the word 'pigs' with a prefix of 'olym-'. I note that the Oxford English Dictionary (2^nd Edition) (OED) lists a number of words with such a prefix. Among these are Olympia, Olympiad, Olympiadic, Olympiadical, Olympian, Olympianism, Olympianwise, Olympic, Olympical and Olympus. All of these words are listed with an upper-case letter 'O', as is the word Olympic whenever it is used to denote the modern Olympic Movement.

If I were called on to attribute any meaning to olympigs in relation to the goods for which registration is sought then a number of possible concepts occur to me. The words 'Olympic pigs' do come to mind. Such words may conjure up images of pigs that are extremely fit - capable of either superior growth or superior athleticism when a comparison is made with the norm. It may also occur to some that it could connote cartoons of pigs or caricatures of various sporting teams or individual sporting personalities by use of drawings of pigs. However, I do not believe that any of the possible concepts that the word olympigs may conjure up would directly lead a person to be deceived or confused. In particular, I do not believe that the general public would conclude that there was a link with the Olympic Movement. The fact that the trade mark, as applied for, also uses a lower-case letter 'o' adds some further weight to this opinion. I say, some further weight because notional fair use of the mark must also consider those times where sentences may be constructed such that the trade mark is used to open the sentence and upper-case letter 'o' will appear. Nowhere in the available literature have I noticed a lower-case letter 'o' used in relation to the Olympic Movement (or, for that matter, any word in the OED with the Olym- prefix). I believe that the general public perception of this matter would be along these lines. I believe that, in general, the lower-case letter 'o' in olympigs would alert the public to this perception and would reduce even further the very low risk of the public incorrectly making a direct link to the Olympic Movement.

Thus, I find that this ground of opposition under s.43 has not been made out.

(b) Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

This ground of opposition reads:

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

In order for the opponent to succeed under this ground, it must establish three legs, viz.:

¨   a finding that there exists a substantially identical or deceptively similar trade mark,

¨   a finding that the conflicting mark has acquired a prior reputation in Australia, and

¨   that because of that reputation use of the applicant's mark would be likely to deceive or cause confusion.

The opponent has brought forward 12 trade marks in relation to which it claims that the present mark is either substantially identical or deceptively similar. One of these, registered under number 612571, is for the word OLYMPIC in class 41. The owner is the Comite International Olympique (IOC). I do not believe that any of the other 11 marks raised by the opponent could be considered either substantially identical or deceptively similar to the present mark.

The test for deceptive similarity is not a side by side comparison but '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 defendant's television exhibitions'[1]. This recollection may, of course, be imperfect.[2]

[1] Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 415

[2] Rysta Limited's Application (1943) 60 RPC 87 at 108

In the present matter, I do have concern with the oral/aural aspect of the olympigs mark. Previous trade mark case law has established a general observation in the following terms:- 'tendency of persons using the English language to slur the termination of words ... the first syllable of a word is, as a rule, far the most important for the purpose of distinction'[3]. Thus, where the speaker does not clearly enunciate olympigs it may well be heard as 'Olympics'. This circumstance, coupled with an imperfect recollection of the OLYMPIC trade mark (as OLYMPICS) leads me to conclude that the present mark is deceptively similar to the OLYMPIC mark relied on by the opponent.

[3] London Lubricants (1920) Ltd's Application (1925) 42 RPC 264 at 279

This brings me to consider the reputation acquired in the mark, in Australia, as at the priority date of the present application. The date of application is the relevant priority date here, being 21 March 2000. The reputation must be, of course, trade mark reputation in order to trigger s.60. Currency as the name of a sporting movement, alone, may not indicate use of the word as a trade mark. Section 17 of the Act is definitive in the matter.

What is a trade mark?

17. A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

Note:  For sign see section 6.

The phrase 'in the course of trade' may cover a range of commercial activities that could allow a sign to be considered as a trade mark. In the present matter, the evidence before me that either the AOC or the IOC has used the word OLYMPIC as a trade mark is not strong. The opponent has provided figures concerning the future funding activities of the AOC although it is not clear how much of this, if any, may be directly attributed to use of OLYMPIC as a trade mark. In any event, this future use does not fall before 21 March 2000, being the date at which I must assess the acquired reputation.

The Grover declaration also provides figures on the funds expended by the AOC to assist competitors and their support staff in various Games from 1993 to 2000. The link between this funding and possible trade mark use that produces a reputation for the word OLYMPIC is, however, neither explained nor investigated. Even the extremely impressive statement in the Grover declaration that '... the XXVII Olympiad held in Sydney in 2000, 199 nations participated and an estimated 4 billion people worldwide watched the Games on television' does little to support the opponent's case. Firstly, no indication is before me on how the event of the Sydney Games of 2000 promotes the word OLYMPIC as a trade mark, but secondly, and even more importantly, the event took place after the priority date for the present application. In his declaration Mr Grover claims use, by the AOC, of a number of trade marks. These include 'The Australian Olympic Team', 'Sydney Youth Olympic Festival', 'Sydney Olympic Youth Games' and 'Olympian Reunion Centre' as well as the 'Olympian' as the title of a magazine. Nowhere is use of OLYMPIC claimed as a trade mark of the opponent nor is it shown in the exhibits. There are no sales specifically attributed to the OLYMPIC trade mark by the AOC.

There is, however, an element here that I am prepared to consider to establish reputation. This concerns the ticket sales made by the opponent for the Sydney Olympic Games. The Grover declaration at paragraphs 19, 22 and 23 alludes to such sales activity in commenting that 'the Sydney Games were enormously successful for Australia' and that 'the AOC ... through its own marketing activities ..'. It is a notorious fact that the sale of tickets for the Sydney Olympics was constantly before the general public leading up to the Games. I am prepared to accept that there is a reputation in the OLYMPIC mark in relation to the ticket sales for the Sydney Olympics Games.

However, I am also of the opinion that the general public would not automatically assume that, even where goods or services were offered under the OLYMPIC mark, they would be sourced by the AOC. The claimed use of the various trade marks above, aside from the ticket sales, by the AOC goes to support this view. In all of those above instances the opponent has used descriptive phrases to educate the public as to the source of the goods or services. The public would have some expectation from this history that the opponent would use more than merely the word OLYMPIC to identify the trade source.

I also note that the OLYMPIC mark registered under number 612571 to the IOC has been registered with the endorsement 'The provisions of sub-section 34(1) applied.' This trade mark was accepted and registered prior to the present legislation and thus this sub-section is found in the Trade Marks Act 1955. The endorsement refers to a provision of the repealed Act that enabled co-existence of two different proprietors on the Register for identical or similar trade marks based on the 'honest concurrent use' of both marks or of 'other special circumstances'. The present Act mirrors this provision at s.44(3). A large number of owners of the OLYMPIC trade mark are recorded on the Trade Marks Register, generally for quite different goods and services - but I believe that this adds further weight to the view that the general public would need some other cue to confidently attribute use of the OLYMPIC mark to the AOC for any particular goods or services.

Certainly the word Olympic has great familiarity in the minds of the general public. The evidence before me, however, does not satisfy me that the opponent has shown trade mark use of the word OLYMPIC by either the AOC or IOC that goes to support a reputation in a trade mark, aside from the notoriety gained by means of the ticket sales. The opponent has also argued that reputation of a trade mark encompasses much more than simply sales and advertising figures. Ms Chia cites a passage from Hearing Officer Thompson in Hugo Boss AG v JacksonInternational Trading Company Kurt D Bruhl Gesellschaft mbH & Co KG, 47 IPR 423 at 436 under a heading of 'Reputation':

I think that it is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark.  The quantum of sales, advertising and promotion contributes to the 'recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the 'esteem' component of the reputation as do the public events and other trader's marks with which owner of the trade marks in question choses to associate the trade marks via sponsorships, cross-promotions, 'contra deals' and so forth.

... The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

Of necessity a trade mark which enjoys a reputation must possess a link to the goods and services in which that reputation exists. Aside from ticket sales for the Sydney Olympics the opponent has not directed me to any sales, advertising or promotion under the OLYMPIC mark. This points to significant lack for 'recognition' of the word OLYMPIC as being a trade mark owned and in use by the opponent. From the words of Hearing Officer Thompson above, the sales, advertising and promotion provides a starting point from which to assess the trade mark's reputation - and even quite low sales figures may lead to a strong reputation when the other matters are considered. In the present case, however, I have no sales or advertising figures to show the opponent's use of the mark, aside from the notoriety of the ticket sales for the Sydney Games.

Thus, as I have not been able to clearly determine the scope of the reputation acquired in the mark by the opponent, I am not in a position to consider whether, because of that reputation, the use of the olympigs mark in relation to goods in classes 16, 25 and 28 by the applicant would be likely to deceive or cause confusion.

From the foregoing, I find that the s.60 ground of opposition has not been made out.

(c) Other issues highlighted by the opponent

The opponent's evidence and supporting written submissions run to some 75 pages not including a copy of the Olympian magazine. Within those pages there is a continuing theme concerned with the protection that is afforded the Olympic Movement by means of both Federal and State legislation. None of this material, however, is directly relevant to the two grounds of opposition relied on by the opponent. A similar comment could be leveled at the listing of the registered and pending trade marks owned by the AOC or the IOC. The highlighting of such material implies that the opponent wishes to rely on other grounds of opposition that were not listed in the notice of opposition. Procedural fairness dictates that these matters could not be considered within these reasons. I also note that both parties within either their written submissions or their declarations sought to rely on comments from Hearing Officer Thompson in Australian Olympic Committee, Inc v Courier Luggage Pty Ltd [2002] ATMO 2. In that decision the Hearing Officer only considered one opposition ground, being s.42, whether use of the trade mark would be contrary to law. That section, not claimed in the present notice of opposition was not under consideration here.

Conclusion

The opponent has failed to establish either of the grounds of opposition relied on, and thus, as the delegate of the Registrar in this matter, I dismiss this opposition. Subject to payment of the Official registration fees and the expiration of one month from the date of this decision, this application may proceed to registration.

Don Nancarrow
Hearing Officer
Trade Marks Hearings
4 June 2002