Australian Professional Drag Racing Ltd v the Jamboree Aus Pty Ltd

[2018] ATMO 143

TRADEMARKSACT 1995

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

Re:Opposition by Australian Professional Drag Racing Ltd to registration of trade mark application 1767749 (41) - PRO MOD (Logo) - in the name of The Jamboree Aus Pty Ltd.

DELEGATE:

Iain Thompson

REPRESENTATION:

Opponent: Gall Standfield & Smith Solicitors Applicant: Trademarkings

DECISION:

2018 ATMO 143

Trade MarksAct1995

Section 52 opposition to registration - s41 - inherent adaptation of Trade Mark - other traders unlikely to need to use the Trade Mark - opposition not established

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) The Jamboree Aus Pty Ltd (‘the Applicant’) has applied to register the trade mark which appears below:

Application No:         1767749

Priority Date:             28 April 2016

Services:  Class 41: Motor racing; Organisation of vehicle racing events; Advisory services relating to the organisation of sporting events; Arranging of sporting events; Booking of tickets for sporting events; Event management services (organisation of educational, entertainment, sporting or cultural events); Drag racing; Organisation of drag racing events

Trade Mark:

(‘the Trade Mark’)

1. The Trade Mark was examined as is required by section 31 of the Act and advertised as accepted for possible registration on 15 September 2016 in the Australian Official Journal of Trade Marks.

1. On 22 November 2016 Australian Professional Drag Racing Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark.

1. Thereafter the opposition has followed the timetable set out below:

·22 December 2016 – Statement of Grounds and Particulars (‘the SGP’) filed by the Opponent particularising a ground under section 41 of the Act;

·23 February 2017 – Notice of Intention to Defend filed by the Applicant; and

·30 May 2017 – Evidence in Support filed by the Opponent – declaration of:

Lex  Raymond  Swayn,  Journalist,  made  on  29  May 2017,  with attachments.

1. Both parties have been informed of their right to be heard or to make written submissions

   – neither party has availed themselves of these opportunities. Now in order that the Registrar of Trade Marks may discharge her obligation under section 55 of the Act to decide the matter, it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Onus and Relevant Date

1. The Opponent bears the onus of establishing the section 41 ground of opposition which is detailed in the SGP on the balance of probabilities.1

1. The relevant date at which the ground under section 41 must be considered is the filing date of the opposed application which is here the same as the priority date.2

1 Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per

Gyles J at [6] - [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]- [133].

2 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

Section 41

Statement of Grounds and Particulars

1. In its SGP the Opponent relevantly states:

1.   The Opponent opposes only the word component of the abovementioned trade mark application, not the image component.

General background - Pro Mods

2.   Within the sport of drag racing (being a sporting event/activity falling within Class 41), "Pro Mod'' is an abbreviation of "Pro Modified", a common category of drag racing vehicles.

3.   Pro Mods are modified sedans, which are distinguished from other drag racing vehicles by their operating doors. Hence, in Australia, this type of drag racing vehicle is generally referred to as a "Doorslammer" (either "7op Doorslammer" or "Pro Doorslammer"), although the Pro Mod terminology is also well understood.

4.     Pro Mod has been an official eliminator (that is, category) in the USA (sanctioned by the International Hot Rod Association (IHRA)) and Europe (sanctioned by the Federation Internationale de l'Automobile (FIA)) since the early 1990s.

5.    In 2010, the largest sanctioning body in the USA, the National Hot Rod Association (NHRA), also began running and sanctioning events it the Pro Mod category.

6.   In Australia, the Doorslammer categories have been official eliminators since 1996; although the Pro Mod moniker has not been used as a sanctioned category name in Australia.

Background, meaning and significance of "Turbo11 and "Blown11

7.In the USA and Europe, Pro Mod vehicles compete in the category using either

(1) a supercharger, (2) a turbocharger or (3) nitrous injection for a power source.

(A shorter, generic term for a supercharger is a "blower". Hence, a Pro Mod vehicle using a supercharger as its power source is referred to as a "blown" vehicle.)

8.  That is, turbocharged and supercharged vehicles compete against each other on a regular basis within the Pro Mod category.

9.   The fastest Pro Mod vehicle in the world is turbocharged, however supercharged vehicles are close behind. Hence, the competition between power- sources is a key attraction; and promoters overseas (and in the USA, particularly) often run and promote contests between blown (supercharged) and turbo Pro

Mods; focussing on the comparative performance of vehicles with divergent power sources as a point of interest.

10.   However, currently in Australia, the prevailing regulations limit Pro Mods (Doorslammers) to using the superchargers (i.e. blowers) as their power source.

As such, it is - or would be - something of a novelty and an attraction for the Australian race-going public to see Turbo and Blown Pro Mods (Doorslammers) compete against each other. Such races are only able to occur in Australia outside of the official rules of formal competition.

Current and future use of "Pro Mod turbo vs Blown"

11.   For the reasons set out above, the terminology like, and including ''Pro Mod Turbo vs Blown" is likely to be desired to be used by: -

a.  the Opponent;

b.  Willowbank Raceway, Inc;

c.  Perth Motorplex;

d.  Sydney Dragway;

e.  IHRA;

f.  IHRA Australia Pty Ltd (being the Australian branch of IHRA); and

g.    other  promoters and/or  administrators in the  sport of drag  racing  in Australia.

12.   Each of the entities referred to in paragraph 11 would, or may, desire to use the terms "pro mod", "turbo" and "blown" on the basis that they are terms of common usage, known and understood by followers and patrons of the sport of drag racing, which clearly convey the type and categories (or subcategories) of racing being referred to.

13.    Further, for the reasons set out above, each of the entities referred to in paragraph 11 would, or may desire, to operate Pro Mod categories, and promote the feature of Turbo vs Blown Pro Mods, including by using the terminology "Pro Mod Turbo vs Blown".

a. By way of example, the Opponent is in the process of organising a World Championship drag racing event/sin 2017 or 2018, in which racers from the USA will compete against Australian racers. Such event/s would include the Pro Mod category, and in which Turbo Pro Mods would be able to compete against Blown Pro Mods (which, for the reasons set out above, is a novelty in Australia). The fact that Turbo Pro Mods would be racing against Blown Pro Mods is a matter which the Opponent would ordinarily seek to utilise in its marketing and promotion of such event/s.

Lack of inherent distinction

14.   The combination of the three component terms do not sufficiently distinguish the mark as it is a Pro Mod Turbo vs Blown refers [sic] to a common drag racing match-up, that is growing internationally and is likely to grow in Australia.

15.    There is no distinguishing inherent adaption by the Applicant combining these three terms.

Evidence

1. Mr Swayn’s declaration is well supported with corroborative materials and establishes:

Within the sport of drag racing, the words ‘Pro Mod’ are an abbreviation of ‘Pro Modified’, a common category of drag racing vehicles;3

The word ‘Turbo’ is a widely accepted abbreviation for the word ‘turbocharger’;

A term for a supercharger is a ‘blower’. Hence, a Pro Mod vehicle using a supercharger as its power source is referred to as a ‘blown’ vehicle; and

The expression ‘Turbo vs Blown’ thus denotes a race between turbocharged and supercharged vehicles.

1. Although it is not stated in Mr Swayn’s declaration, I take the pictorial devices within the Trade Mark to be representations of a supercharger and a turbocharger.

Discussion

1. Section 41 of the Act provides:

41  Trade mark not distinguishing applicant’s goods or services

(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note:       For goods of a person and services of a person see section 6.

(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)This subsection applies to a trade mark if:

(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

3 Although Mr Swayn does not state it, and nothing turns on it, I take the word ‘pro’ to be an abbreviation of the word ‘professional’ or ‘professionally’.

(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)This subsection applies to a trade mark if:

(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)    the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)    the use, or intended use, of the trade mark by the applicant;

(iii)    any other circumstances.

Note1:     Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)     the time of production of goods or of the rendering of services. Note 2:    For goods of a person and services of a person see section 6.

Note3:      Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1:     For applicant and predecessor in title see section 6.

Note2:     If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in  title (see subsection 7(3) and section 8).

1. The principles, below, in discussing the operation of section 41 are paraphrased from the delegate’s decision in Kevin Murphy Asia Pte Ltd v Lab Brands Ltd:4

(1) Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a “presumption of registrability.” As was explained by Branson J in Blount Inc v Registrar of Trade Marks5 (“Oregon”), however, prior to the Amending Act ss 41(5) and (6) as they

then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (“the EM”) stating at page 146:

4 [2018] ATMO 58 at [30].

5 1998] FCA 440; (1998) 40 IPR 498 at 505.

The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. ... The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

(2)      The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”. The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

(3)      Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

(a) that the [Trade Mark] is inherently adapted to distinguish the [services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [services]; [that is, neither s 41(3) nor s 41(4) applies] or

(b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [services] from the goods or services of other persons; [that is, s 41(3) applies] or

(c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [services] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [services]. [that is, s 41(4) applies]

[…]

36. In F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.6 (“Barrier Cream Case”), Kitto J summarised the appropriate inquiry as follows:

The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their

6 [1965] HCA 72; (1965) 112 CLR 537 at 555.

business and without any improper motive, to desire to use upon or in connection with their goods.

The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited7 (“Cantarella”) endorsed that the proper test for assessing the inherent capacity of a trade mark to distinguish still remains that articulated by Kitto J in Michigan.8 In doing so, the majority discussed the meaning of Kitto J’s words:

[The] question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it”;

The test as aptly summarized in the Trade Mark Examiner’s Manual at Part 22.3 is:

In summary, the Cantarella decision makes clear that when considering the inherent distinctiveness of a trade mark, consideration should first be given to the “ordinary signification” (or “ordinary meaning”) of the words comprising the trade mark to anyone in Australia purchasing, consuming or trading in the relevant goods/services. Consideration should then be given as to the likelihood of other persons desiring to use the words for the sake of their ordinary signification, in keeping with the principles espoused in the Michigan case.

1. In the circumstances before me the evidence is sufficient to satisfy the Registrar that the word elements ‘PRO MOD’, and ‘Turbo vs Blown’, and the pictorial elements of machines which combine to form the Trade Mark each lack inherent adaptation to distinguish the Applicant’s services when considered individually.

1. However, that is not the end of the assessment. The well-known case Diamond T Motor Car Co’s Application9 is longstanding authority that a trade mark might be made up of discrete elements, none of which might individually be capable of distinguishing the relevant goods or services, but that trade mark as a whole might yet be inherently adapted to distinguish in relation to those goods or services.

1. In my consideration when the principle in the Barrier Cream and Michegan cases, discussed above, is applied to the Trade Mark as a whole, it is unlikely that other traders

7 [2014] HCA 48.

8 Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514.

9 (1921) 38 RPC 373.

would need, without improper motive, to use the particular words and devices in analogous combinations, arrangements, fonts, and presentation in the Trade Mark in respect of their similar services.  Further, registration of the Trade Mark gives no rights to a monopoly in any of the individual components of the Trade Mark but to the Trade Mark as a whole. The Trade Mark thus has sufficient inherent adaptation to distinguish to be considered to be immediately registrable.

1. The Opponent has accordingly not established its opposition under section 41 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

55  Decision

(1)Unless subsection (3) applies to the proceedings, 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.

1. The Opponent has not established its opposition to registration of the Trade Mark.

1. The trade mark application may then 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 and the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Applicant applied for an award of costs in its favour in the event that the opposition to registration was not established. As the Applicant was the successful party, I award costs, in terms of section 221 of the Act, against the Opponent at the official scale set out in Schedule 8 to the Trade Marks Regulations 1995.

Iain Campbell Thompson Hearing Officer

Trade Marks Oppositions and Hearings 12 September 2018