Australian Rugby League Commission Limited of Rugby League v Jane Reid
[2014] ATMO 108
•5 November 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Australian Rugby League Commission Limited of Rugby League Central to registration of trade mark application 1490916, 1490917, 1490919, 1490920, 1490924, 1487848 and 1490925 (respectively in Classes 9, 16, 18, 21, 24, 25 and 28) – THE MIGHTY MAROONS - filed in the name of Jane Reid.
| Delegate: | Iain Campbell Thompson |
| Representation: | Opponent: Shelston IP – written submissions Applicant: NFP Lawyers |
| Decision: | 2014 ATMO 108 Section 52 opposition to registration: subparagraph 42(b) of the Trade Marks Act 1995 – notional use of sign closely associated with Opponent, as a trade mark contrary to sections 18 and 29 in Schedule 2 of the Competition and Consumer Act 2010 – disclaimers on Applicant’s website and on Goods ineffective. Registrations refused. |
Background
In these proceedings under the Trade Marks Act 1995 (‘the Act’) Jane Reid (‘the Applicant’) has filed applications (‘the Applications’) to register the trade marks appearing below:
Application No: 1490916
Priority Date: 21 May 2012
Goods: Class 9: Refrigerator magnets; sunglasses
Trade Mark: THE MIGHTY MAROONS
Application No: 1490917
Priority Date: 21 May 2012
Goods:Class 16: Car stickers; printed stickers; stickers (stationery); self-adhesive message paper; stationery; note pads; posters; paper flags
Trade Mark: THE MIGHTY MAROONS
Application No: 1490919
Priority Date: 21 May 2012
Goods:Class 18: Carrying bags (other than disposable carrier bags); beach bags; casual bags; school bags; travelling bags; umbrellas
Trade Mark: THE MIGHTY MAROONS
Application No: 1490920
Priority Date: 21 May 2012
Goods:Class 21: Cups; mugs; drinking flasks; kitchenware; picnic utensils; baskets, for domestic use; dishes; cookie jars; cool bags; beverage coolers (containers); bottle coolers (receptacles); ice buckets; jam pots; lunch boxes
Trade Mark: THE MIGHTY MAROONS
Application No: 1490924
Priority Date: 21 May 2014
Goods:Class 24: Tea towels; bath towels; beach towels; kitchen towels (textile); banners; flags (not of paper); plastic material (substitute for fabrics); quilts; bedding (linen); pillow cases; bed sheets
Trade Mark: THE MIGHTY MAROONS
Application No: 1487848
Priority Date: 2 May 2012
Goods:Class 25: Clothing; apparel (clothing, footwear, headgear); shirts; T-shirts; tank tops; chemise tops; socks; pullovers; dresses; skirts; jeans; pants; jackets (clothing); belts (clothing); sweaters; underwear; footwear; shoes; headwear; hats; caps (headwear)
Trade Mark: THE MIGHTY MAROONS
Application No: 1490925
Priority Date: 21 May 2012
Goods:Class 28: Playthings; toys; plastic toys; rubber toys; cards (games); games
Trade Mark: THE MIGHTY MAROONS
Where necessary I will refer to the above trade marks as ‘the Trade Marks’ and the goods as ‘the Goods’.
The Applications were examined in compliance with section 31 of the Act and the Trade Marks were accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 23 August 2012 (1487848) and 13 September 2012 (the balance).
On 16 November 2012 (1487848) and 11 December 2012 (the balance) Australian Rugby League Commission Limited of Rugby League Central (‘the Opponent’) filed Notices of Opposition (‘the Notices’) to the registration of the Trade Marks. The Notices are in common form and include the ground under subparagraph 42(b) of the Act under which I decide this matter.
The parties have filed their evidence in support and answer as further detailed below. Both parties have been informed of their right to be heard and the Opponent elected to file written submissions. The Applicant neither applied to be heard or filed written submissions.
Accordingly, the matters have been passed to me as a delegate of the Registrar of Trade Marks to determine in order that she may meet her obligation under section 55 of the Act to decide the matters.
Onus and Relevant Dates
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]
[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] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10]; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13]; DC Comics v Cheqout Pty Limited [2013] FCA 478 per Bennett J at [13]; and, most recently, Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 per Murphy J at [30] to [37].
The relevant date at which the grounds must be considered is the filing dates of the Applications: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.
Evidence
In Support
The evidence in support of the opposition is a statutory declaration by Elisabeth Vitale, Licensing Manager of Rugby League Central, who is an employee of Velocity Brand Management Pty Ltd (‘VBM’), a company that specialises in developing and managing brand licensing programmes for sporting events and organisations. Ms Vitale states that since 2004, VBM has been solely responsible for managing the licensing programme for the National Rugby League (‘NRL’) and related sporting competitions and events administered by Australian Rugby League Commission Limited (‘ARLC’).[2] In 2009, VBM was appointed as the licensing agent for the New South Wales Rugby League and Queensland Rugby League State of Origin licensing programs. Other clients of VBM include Football Federation Australia, Cricket Australia, Tennis Australia, Netball Australia, V8 Supercars, the Rugby League World Cup and Tennis Australia (including the Australian Open).
[2] Although it makes no difference to the outcome of these proceedings I note that the name of the Opponent and Australian Rugby League Commission Limited do not appear to be identically identified in the Notices and evidence in support.
Ms Vitale states:
ARLC is responsible for the administration and promotion of various rugby league competitions including:
a. the professional national rugby league competition, known as the NRL;
b. the Holden Cup, which is an under 20's competition; and
c. the State of Origin series which is discussed further below.
Ms Vitale goes on to discuss the history of the Opponent and the game of Rugby League in Australia. She then details the reputation of the Opponent and in particular that of the Queensland NRL team in the State of Origin series. Ms Vitale states:
a. in 2012, ARLC secured the most significant media rights agreement in the history of rugby league (including television broadcast rights with the Nine Network and Fox Sports) having a value of approximately $1.2 billion;
b. the 2012 NRL regular season home and away attendance was the highest ever with 3, 151,660 spectators attending NRL matches during the regular season;
c. there was an average crowd attendance of 16,415 spectators per NRL match during the 2012 NRL season - an increase on the previous season;
d. the 2012 State of Origin series was the most watched on record with almost 12 million television viewers across three games nationally;
e. the 2012 NRL Grand Final was watched by approximately 4.1 million viewers in Australia and New Zealand -comprising 3.9 million viewers in Australia and 0.2 million viewers in New Zealand; and
f. 56 of the top 100 subscription television programs (including 10 of the top 20) related to the NRL Telstra Premiership.
The NRL games are broadcast on Channel Nine and on Fox Sports and attract comparatively high percentages of the total audience as viewers. Confidential viewer figures are supplied by Ms Vitale.
Concerning dedicated print media, Ms Vitale states:
In print media, there are two major magazines dedicated to rugby league. Rugby League Week is produced by ACP Magazines, while Big League (the competition's official publication) is produced by News Magazine. Annexed to this affidavit and marked EV-6 are extracts from the February-March 2012 edition of that magazine. I note that this edition includes a "2012 Rugby League Essentials Guide'', which depicts a range of NRL merchandise. It also includes a section on representative football, including the 2012 State of Origin series. I have previously been informed by Javed Hamidi and believe that the readership of the Big League magazine is approximately 89,000.
Concerning the Internet, Ms Vitale declares:
I have previously been informed by Steve Birchall (as NRL.com Manager/Systems Architect for NRL) and believe that in the 2011 season (from March to September 2011), the NRL Website received 2.2 million unique visitors each month. Annexure EV-3 also shows that:
a. the NRL Website had 2.8 million unique viewers during March 2012; and
b. the NRL mobile website had an average of over 800,000 unique visitors per month in 2012.
And concerning social media Ms Vitale states:
Page 15 of Annexure EV-2 confirms that as at 2011:
a. the NRL had the largest Facebook following of any sporting code in Australia with over 386,000 followers; and
b. iPhone applications for NRL clubs had recorded over 105,000 downloads.
As at today's date, the NRL Facebook page has more than 569,000 followers, which is more than any other Australian football code.
As at today's date, iPhone applications for NRL clubs have recorded approximately 600,000 downloads.
Ms Vitale goes on to explain:
The State of Origin series is an annual best of three series of rugby league matches administered by ARLC between professional rugby league teams representing the States of New South Wales and Queensland.
Rugby league teams representing New South Wales and Queensland have competed against each other in a structured competition since 1908.
Since 1908, the Queensland rugby league team has always been represented by the colour maroon with the players wearing maroon jerseys and other apparel. As a result, the Queensland rugby league team has been colloquially and consistently known and referred to as "the Maroons" since 1908.
Concerning the use of the words MIGHTY MAROONS in relation to the Queensland State of Origin NRL team Ms Vitale states:
The terms "Maroons" and "Mighty Maroons" have been regularly used by the Australian media to refer to the Queensland rugby league team. Attached to this declaration and marked EV-10 are copies of newspaper articles in relation to the State of Origin series and the Queensland rugby league team which feature the phrase "Mighty Maroons" comprising the following:
a. article published in the Daily Mercury on 17 June 2010 entitled "Go the mighty Maroons" and containing multiple references to "Mighty Maroons" and "Maroons";
b. photo gallery published in the Courier Mail in respect of the Maroons' victory in game 3 of the 2011 State of Origin series held on 6 July 2011 entitled "Galleries: Mighty Maroons win Origin decider";
c. article published in the Courier Mail and Daily Telegraph on 25 June 2013 entitled "Five reasons why these mighty Maroons are still in the chase for eight straight Origin series wins" and containing multiple references to "Maroons"; and
d. article published at news.com.au on June 27 2013 entitled "Mighty Maroons set up series decider" and containing multiple references to "Maroons".
Ms Vitale also provides extensive evidence of the use of the word ‘Maroons’ in relation to the Queensland State of Origin NRL team, this includes (as an example):
Attached to this declaration and marked EV-1 9 is a copy of the DVD for game 3 of the 2012 State of Origin series which forms part of the DVD Box Set and the DVD referred to in paragraph 54. In respect of game 3 of the 2012 State of Origin series:
a. commentators use the term "Maroons" to describe or refer to the Queensland rugby league team at least 17 times during the course of the match. Examples of such use may be heard at approximately the following times during the 80 minutes of match time (each being a reference to the specific minute and second of the official game time as shown in the broadcast): 1:25, 3:14, 18:35, 26:14, 28:22, 33:20, 35:20, 37th minute, 40:08, 43:22, 49:45, 66:22, 74:40, 77:09 and 79:08;
b. footage of spectators holding signs displaying "Go Maroons" or flags displaying "Maroons" are seen at the following times approximately: 1:30, 3th minute, 51st minute, 7 4:22 and 79:35;
c. footage of the Queensland team running under a banner prominently displaying the words "QLD Maroons" is shown when the players enter the field for the second half of the match;
d. various television shots show the crowd predominantly wearing maroon coloured clothing and merchandise, prompting the commentator to state "this ground is a sea of maroon" at 66:22 - other examples may be seen at the following times approximately:
5:07, 5:30, 6:56, 7:49, 11 :44, 15:29, 24th minute, 43:56, 49:06 and 79:28; and
e. a version of Australian trade mark number 1111090 owned by ARLC is prominently displayed on the surface and in the centre of the field of play.
The evidence of Ms Vitale is replete with such oral (and also written) references to the Queensland State of Origin NRL team as being ‘the Maroons’.
In Answer
The Applicant has filed the statutory declarations of the Applicant and Joanne Redburn, both made on 25 October 2013, as evidence in answer.
Ms Redburn is the Applicant’s legal representative. She states that in July 2013 she conducted a Google® search of the expression ‘Mighty Maroons’ and this showed the first results as being for the Queensland NRL State of Origin Team. The second entry is, states Ms Redburn an entry for PUP Mighty Maroons which is a team of the Polytechnic University of the Philippines. Ms Redburn continues:
Thereafter, entries for Mighty Maroons are made with reference to the State of Origin football team and being comprised mainly of articles by journalists regarding the State of Origin and in particular the third game decider of the 2013[3] series. These comprise predominately articles from the Daily Telegraph, Fox Sports, The Roar, Optus, Courier Mail and Nine MSN. At the very bottom of that page is an advertisement which is a paid advertisement for The Mighty Maroons website as opposed to an organic result. Now shown to me marked "Exhibit JR-1" is a copy of the Google result images.
At the time of the Google search The Mighty Maroons website did not rank highly. It would appear to me that the lack of ranking reduces any confusion with reference to the State of Origin football team. On 9 July 2013, I was provided by the Applicant with the total-sales, that is $918, since The Mighty Maroons website was launched on 5 May 2013. At the end of the period of 5 May 2013 to 9 July 2013, the 3rd decider game of the State of Origin was played. The low level of sales, particularly during that time further confirmed the lack of confusion between The Mighty Maroons and any references to the State of Origin football team.
On or about July 2013, I conducted a Google search of "Mighty Maroons" and clicked onto The Mighty Maroons website On this website there is no branding or indicia associated with any sporting organisation. In fact, on the first page of the website a statement is worded as follows:
All garments and merchandise are designed and manufactured by The Mighty Maroons Pty Ltd, an Australian company. The Mighty Maroons Pty Ltd has no association with any sporting bodies or corporations.
Now shown to me marked "Exhibit JR-2" is a copy of the website showing the statement. It would appear to me that even if I was confused by a reference to the State of Origin Football team before clicking onto The Mighty Maroons website any confusion would be displaced by the statement on the first page of that website.
[3] I note that this is after the relevant date and that it is natural that the search engine would rank the more recent result as being most relevant and hence place them higher.
Ms Redburn relates her searches of the word ‘Maroons’ on its own:
On or about July 2013, I conducted a Google search of the use of the term "Maroons" alone.
The "Maroons" as a word is connected with a diverse range of sporting organisations, within and outside Queensland, which associate and identify themselves with the maroon colour, including:
a. The Queensland AFL team is referred to as the maroons. Now shown to me marked "Exhibit JR-3" is an article of the AFL Queensland with a title ‘WA too slick for brave maroons’;
b. The Women's Redland Softball Association that refers to the home team as the Queensland Maroon. Now shown to me marked "Exhibit JR-4" is a copy of the draw and results of the Women's Redland Softball Association which refers to the home team as the Queensland Maroon;
c. The supports [sic] of Queensland Softball refer to the team as the Softball Queensland. Now shown to me marked "Exhibition JR-5" is a copy of merchandise displayed in which Queensland Softball is described as "Maroon Softball Queensland Supporter" and "Maroon Softball Queensland Backpack";
d. Volleyball Queensland refers to its representative team as the "Maroon team". Now shown to me marked "Exhibition JR-6" is a copy of a policy notification in May 2012 making reference to the Volleyball Queensland representative team as the "Maroon team";
e. The Women's AFL is also referred to as the maroons. Now shown to me marked "Exhibit JR-7" is an article in relation to an interstate match involving the Queensland Maroons;
f. The Gawler Club is called the Gawler Maroons. Now shown to me marked "Exhibit JR-8" is a draw and results of the senior state championships for women in the South Australian Softball competition in which the Gawler Club is called the Gawler Maroon.
From the above results of the Google search in my opinion the reputation of "Maroons" is not attributed to any one sporting organisation. In fact, on 13 November 2003 the Queensland Governor in Council officially named maroon as Queensland's state colour. Whilst it was recognised that the Brisbane Broncos used maroon as its official colour (in combination with gold) Maroon has traditionally been associated with Queensland sporting organisations. Now shown to me marked "Exhibit JR-9" is a copy of the Queensland Government website referring to the Queensland maroon.
The Applicant traces the genesis of the Trade Marks to a conversation with her son who at that time was a serving soldier in Afghanistan. The Applicant states:
I saw an opportunity to sponsor sporting organisations[4] that recognised maroon as their organisation's colour.
On 2 May 2012, I applied for registration of the Australian trade mark number 1487848 for THE MIGHTY MAROONS in Class 25. Then on 21 May 2012, I applied for registration of the Australian trade mark numbers 1490916, 1490917, 1490919, 1490920, 1490924 and 1490925 each for THE MIGHTY MAROONS.
In late 2012, I engaged an overseas supplier to manufacturer goods bearing the trade mark THE MIGHTY MAROONS. Now shown to me marked "Exhibit JR-4" is a picture of the goods as manufactured. The goods arrived in Australia in March 2013.
On each of the goods bearing the trade mark THE MIGHTY MAROONS a swing tag or a sticker is prominently displayed with the intention to inform consumers that the goods are designed and manufactured by The Mighty Maroons Pty Ltd and that The Mighty Maroons Pty Ltd has no association with any particular sporting body or corporation. Now shown to me marked "Exhibit JR-5" is a copy of a swing tag and sticker.
From 12 May 2013 to 15 July 2013, goods bearing the trade mark THE MIGHTY MAROONS were advertised for sale on ebay [sic][5] at the URL Now shown to me marked "Exhibit JR-6" is a copy the website displaying the ebay [sic] site offering the goods for sale. Each listing was displayed for a maximum of 10 days and then a new listing was arranged. Now shown to me marked "Exhibit JR-7" is a copy of a table showing the listing start and end dates and the goods that were offered for sale.
From 12 May 2013 to 15 July 2013 family and friends purchased one T-Shirt and one Flag, each bearing THE MIGHTY MAROONS trade mark. One T-shirt was purchased by the public amounting to AU$30.00.
On 10 May 2013, a website for on line selling of goods with the trade mark THE MIGHTY MAROONS went live under the URL To date the total sales from goods sold bearing the trade mark THE MIGHTY MAROONS through the URL has amounted to AU$918.00. Now shown to me marked "Exhibit JR-8" is a copy of the website homepage.
[4] Details of any such sponsorship arrangement with any sporting organisations are not supplied by the Applicant.
[5] The trade mark eBay is a registered trade mark of eBay Inc.
Discussion
The expression ‘trade mark’ is defined section 17 of the Act:
17What is a trade mark?
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 words ‘a trade mark … used’ within section 17 are further defined by section 7:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
(2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.
(3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.
(4)In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).
(5)In this Act:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.
It follows that for the words ‘maroons’ or ‘the mighty maroons’ to be trade marks owned by the Opponent at the relevant date, they should be signs previously used by the Opponent (or under its auspices) to distinguish goods or services dealt with or provided in the course of trade by the Opponent from goods or services so dealt with or provided by any other person.
It is not obvious from the evidence that the Opponent has done this – it is apparent that if anything has occurred it may be the public and media which have identified the Queensland State of Origin NRL team in this way.
Accordingly, in the circumstances before me, a ground under section 60 of the Act could not be established as an opponent must rely on the reputation of a trade mark used by a person in relation to goods or services: the evidence before me suggests that if anything has occurred it is the public and media who have identified a sporting team using these words.
It is therefore appropriate to discuss the merits of the case in terms of the Australian Consumer Law provisions via subparagraph 42(b) of the Act where the Opponent is not confined to reliance on the use of a trade mark.
Subparagraph 42(b)
Subparagraph 42(b) provides:
42Trade 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; (2001) 52 IPR 24; [2001] AIPC 91-724 Madgwick J stated at [26] and [28]:
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] HCA 62; (1977) 138 CLR 1, of a power to remove a trade mark from the Register.
[…]
I acknowledge the claim made by counsel for the Registrar that such an approach requires the Registrar to look at questions of law outside his or her expertise and that this can be difficult and may place a large and onerous responsibility upon the Registrar. However, the Registrar has the comfort that the criterion is that the use "would" not "could" be contrary to law.
The law on which the Opponent relies is sections 18 and subsection 29(g) of the Australian Consumer Law (‘ACL’) within Schedule 2 of the Competition and Consumer Act 2010.
Section 18 of the ACL provides:
18 Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
(2) Nothing in Part 3‑1 (which is about unfair practices) limits by implication subsection (1).
Note: For rules relating to representations as to the country of origin of goods, see Part 5‑3.
Subsection 29(g) of the ACL provides:
29 False or misleading representations about goods or services
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
[…]
(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits;
[…]
Note 1: A pecuniary penalty may be imposed for a contravention of this subsection.
Note 2: For rules relating to representations as to the country of origin of goods, see Part 5‑3.
The principles which apply are those enunciated in relation to the corresponding provisions in the predecessor of the ACL – the Trade Practices Act 1974 – in particular section 52. In Re Equity Access Pty Limited v Westpac Banking Corporation and Westpac Savings Bank Limited and Challenge Bank Limited [1989] FCA 506; 16 IPR 431 Hill J said at [41]:
1. For conduct to be misleading or deceptive the conduct must convey in all the circumstances of the case a misrepresentation: Taco Bell[6] at 202. In the present case the misrepresentation on the part of the respondents is said to be that the financial product advertised and marketed by each of them is the product of the applicant or that there is some business relationship between the applicant and each of the respondents or that the applicant has endorsed the respective product of the respondents.
2. There will however be no contravention of s.52(1) of the Act unless error or misconception results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: Puxu[7] per Gibbs CJ at p 6 and per Mason J at p 15, Global Sportsman Pty Ltd v. Mirror Newspapers Ltd [1984] FCA 180; (1984) 55 ALR 25, at p 34.
3. 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 less or more than 50%: Global Sportsman at p 34. The question of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective question which the Court must determine for itself. Hence evidence that persons in the relevant class have been misled will, although admissible, not be determinative. In some cases however such evidence will be very persuasive: Puxu per Gibbs CJ at pp 198-9.
4. Conduct of a corporation causing mere confusion or uncertainty in the minds of the public in the sense that they may be caused to wonder whether two products may have come from the same source is not necessarily coextensive with misleading or deceptive conduct: Puxu at p 100; Bridge Stock Brokers v. Bridges [1984] FCA 391; (1984) 57 ALR 401 at p 413 per Lockhart J. Since actual deception need not be shown the Court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived: Weitmann v. Katies Ltd (1977) 29 FLR 336, 343. The test in passing off cases is usually expressed as being whether a “substantial number of persons likely to become purchasers ... are liable to be deceived by the defendant’s use of the name. On the other hand it is not necessary to show that all, or substantially all, persons in the market associate the name with the plaintiff’s goods, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question.” (per Wilberforce J, as he then was, in Norman Kark Publications Ltd v. Odhams Press Ltd (1962) RPC 163 at 168 and see Saville Perfumery v. June Perfect Ltd (1941) 58 RPC 147 at 175-6, 10th Cantanae Pty Ltd v. Shoshana Pty Ltd (1987) 79 ALR 299 at 315 per Gummow J).
5. In a case such as the present the applicant must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant’s business in a particular country or geographical area: Sheraton Corporation of America v. Sheraton Motels Ltd (1964) RPC 202; BM Auto Sales Pty Ltd v. Budget Rent A Car System Pty Ltd (1976) 12 ALR 363. However at least in some circumstances very slight activities may be found to be sufficient to establish that a name has become distinctive of a person’s business in a particular country: Miki Shoko Co Ltd v. Merv Brown Pty Ltd (1988) ATPR 40-858.
6. Section 52 is not confined to conduct which is intended to mislead or deceive: Puxu per Gibbs CJ at p 197 and a corporation which acts honestly and reasonably may none the less engage in conduct that is likely to mislead or deceive: Yorke v. Lucas [1985] HCA 65; (1985) 61 ALR 307 at p 309.
[6] Taco Company of Australia Inc v. Taco Bell Pty Ltd [1982] FCA 136; (1982) 42 ALR 177
[7] Parkdale Custom Built Furniture Pty Ltd v. Puxu Pty Ltd [1982] HCA 44; (1981-2) 149 CLR 191
Here the Applicant places some reliance on the disclaimer upon its website which is in the form:
All garments and merchandise are designed and manufactured by The Mighty Maroons Pty Ltd, an Australian company. The Mighty Maroons Pty Ltd has no association with any sporting bodies or corporations.
The last sentence of the above quote appears on the swing tag of each of the Goods sold by the Applicant.
There are problems with such disclaimers.
Firstly, it is the notional use of the Trade Marks which I am to consider here; in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 French J said at [50] (albeit in relation to the likelihood of deception or confusion):
[the question] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion." [8]
[8] See also, for example, Apple Inc v Experienced apples Pty Ltd [2013] ATMO 84 per the Registrar’s delegate Kirov at [26].
Secondly, if the Trade Marks were registered, the Applicant could abandon the disclaimers; or, the Applicant could extend the sale of the Goods into methods of sale other than that at present where the disclaimers may not be apparent.
Thirdly, such disclaimers are largely ineffective and may, at one level, be regarded as a tacit acknowledgement by the owner of a trade mark that the use of that trade mark is likely to mislead or deceive.
In Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2013] FCA 1255 Besanko J commented at [68] to [69] on the following disclaimer on a website:
Mr. Bob Jane founder of the ‘Bob Jane T-Marts’ is not in any way associated with the ‘Bob Jane T-Mart’ organization. Furthermore, ‘janetyres.com’ and Bob jane Tyre Corporation (Australia) Pty Ltd is also not in any way associated with Bob Jane T-Marts or the Bob Jane Corporation Pty Ltd
The following may be noted about these statements. First, any disclaimer is not relevant to the alleged infringements of the applicant’s trade marks. […] Finally, the disclaimer comes too late. The searcher is already in the website, more interested in viewing the advertisements than reading disclaimers.
In Abundant Earth Pty Ltd and Others v R & C Products Pty Ltd (1985) 4 IPR 387, Toohey, Morling and Beaumont JJ said at pp 393-394:
Then the appellants say that their disclaimer avoids the possibility of any consumer being misled or deceived. Again, it is not possible to generalise in the area. There may well be cases where a disclaimer is effective to eliminate confusion (see Turner v General Motors (Australia) Pty Ltd (1929) 42 CLR 352 at 370 cf Malleys Ltd v Whirlpool Australia Pty Ltd, supra per Lockhart J at 45-282; Bridge Stockbrokers Limited v Bridges [1985] ATPR 40-502 per Smithers and Woodward JJ at 46,020, per Lockhart J at 46,022). But, where the competing products are small, inexpensive items the efficacy of a disclaimer, however prominent, cannot be assumed (cf Puxu, supra). The disclaimer now being affixed to the mustard is less than prominent and, we would expect, of little, if any, utility for present purposes. Nor are we persuaded that any attempt to increase the size or position of the disclaimer would improve the understanding of consumers. In the circumstances, we think that no useful purpose would be served here by any disclaimer (see Powell v The Birmingham Vinegar Brewery Co Ltd [1896] 13 RPC 235 per Lindley LJ at 256; per Smith LJ at 263–4; affirmed [1897] AC 710).
Here, as I have said, (setting aside the primary requirement that one is to consider the use of the Trade Marks to the full extent of any registration to issue) I consider the disclaimers to be ineffective. They tend to confirm the Applicant’s apprehension of the likelihood for a purchaser to be misled or deceived; the Goods are of relatively low expense; and, the purchasers are already at the website (or in receipt of the Goods in the case of the swing tags) before they see the disclaimers. I am also mindful of the maxim in Montgomery v Thompson (1891) 8 RPC 361 (at 368) that “Thirsty folk want beer not explanations”: a person wanting to purchase Queensland State of Origin NRL team merchandise is not, in my estimation, likely to read or heed explanations that the merchandise is not officially endorsed.
Neither do I accept the argument of the Applicant that, because its sales of goods from its website have been very low, the chances of any person being misled or deceived are also very low. Firstly, I am to consider the notional use of the Trade Mark on the Goods. Secondly, one would not expect any applicant to guarantee that it would maintain low levels of sales and most people enter business with the hopes that initial low sales levels may be expected to rise.
The association of the colour maroon with sport in the State of Queensland goes back over a hundred years. The history is alleged to be as follows:
In the first inter-colonial Rugby match between Queensland and New South Wales in Sydney in 1882, the Queensland players wore the red and black hooped jerseys of the Brisbane club. Queensland also wore the Brisbane Club jerseys in 1883.
This remained the Queensland jersey colours until 1884 when they wore the chocolate jerseys of the Wanderers (Brisbane) club.
In 1885 and 1886 Queensland sported a smart new Oxford blue jersey which had the NRU (Northern Rugby Union) on the chest.
For the 1887 & 1888 games Queensland wore white jerseys before reverting back to Oxford blue in 1889 which they continued to wear until 1894.
It is interesting to note that the NSW Rugby jersey was originally heather green with a southern cross on the chest. In 1891 they played in scarlet jerseys with a dragon on the chest – in the Welsh style – before adopting the familiar light blue. In 1891 Queensland in blue played NSW in red.
In 1892 the NSWRU ordered ‘Cambridge blue’ jerseys that had to be imported from England. So for three seasons (1892-4) the NSW and Queensland sides battled in the colours of Cambridge and Oxford.
In 1895 the Queensland Rugby Union introduced maroon as the colour for Queensland. It is reported to have been selected because it was the predominant colour in Queen Victoria’s robes and so was a fitting colour for a state named Queen’s Land.
The jersey was maroon with a white shield and an embroidered “Q”. Rugby teams thus became the first to wear to wear what became established as the Queensland colour. They were followed by Lacrosse, the Queensland Rowing Association and the Queensland Cricket Association.
In succeeding years, the Queensland Rugby jersey continued to be maroon with a “Q” and the relevant year embroidered on the chest. Initially the date was enclosed in the ”Q” but sometimes it was placed below.
However, the white Queensland jersey was used for matches against Great Britain in 1888 and New Zealand in 1893.
The maroon jersey was also worn by Australia for games played in Brisbane until 1914.
Rugby was not played in Queensland from 1920 to 1927 due to a rebuilding phase after the war. The Rugby revival in the late 1920′s saw the maroon jersey reappear, with a new crest that included a koala. This style jersey was used until World War II.
When rugby re-emerged once again after World War II the maroon jersey sported an embroidered “Q” and the relevant year.
Since the emergence of professional rugby in 1996, the Queensland franchise has been known as the “Reds” and the jersey, which since 2010 has been red rather than maroon, has included both the franchise name “Reds” and the koala.
In 2007 a 125 year commemorative jersey was worn with a panel that included four of the crests previously used.
The current jersey features a gold star under the “Q” which represents the Reds 2011 Super Rugby Championship win.
In 2013, the Queensland jersey features the 130 Logo, representing 130 years of Rugby in Queensland.[9]
[9] >
Further, a Queensland State Government website explains:
On 13 November 2003 the Governor in Council officially named maroon as Queensland's state colour.
This announcement was made as a result of a long-held, but informal, tradition of using maroon to represent Queensland.
Maroon has traditionally been associated with Queensland sport in particular and is the official colour (in combination with gold) for rugby league club the Brisbane Broncos.
While the Governor has elected a particular shade of maroon, Queenslanders continue to wear all shades of maroon at sporting and other events to continue to show the spirit of the state.[10]
[10] type="1">
While the Applicant’s apparent position (which I infer from its evidence) is that the import of the above is that the colour maroon is not popularly identified with one particular Queensland sporting body; if this is correct, it is not necessarily also true of the words ‘the Maroons’ or ‘the Mighty Maroons’. Further, the association of the word ‘maroon’ with the Queensland State of Origin NRL team appears to have preceded the adoption of the colour as Queensland’s official colour.
In my consideration the evidence of Ms Vitale demonstrates that the words ‘the Maroons’ or ‘the Mighty Maroons’ does, in the context of the Goods (which are those commonly sold as sporting memorabilia and merchandise) immediately bring to mind the Queensland State of Origin NRL Team. While the Applicant has shown that there are other Queensland sporting teams which incorporate the word ‘maroons’ into their name, the overwhelming use and recognition of the word ‘maroons’ in relation to sports and sports teams is in relation to the Queensland State of Origin NRL Team. Further, the evidence suggests that the Queensland sporting teams which do use the word ‘maroon’ to refer to themselves also use other words in association with the word ‘maroon’ – the Queensland AFL teams (both men’s and women’s) call themselves ‘the Queensland Maroons’, the Queensland Softball team call themselves ‘the Softball Maroons’, the Gawler Club is called ‘the Gawler Maroons’ and so forth. It is safe to assume that the publicity surrounding these other sporting bodies is totally eclipsed by the marketing and merchandising surrounding the Queensland State of Origin NRL team. Accordingly, the words ‘the Maroons’ or ‘the Mighty Maroons’ to the most people who have watched television, listened to the radio or read a newspaper, or been exposed to social media on the Internet, are likely to immediately call to mind the Queensland State of Origin NRL Team.
The likelihood of the public being misled or deceived as a result of the above is related to whether they are likely to view merchandise offered under the Trade Mark as being offered under the aegis of the Opponent: the public perceptions and awareness of the marketing practices of the Opponent and other major sports organisations form a part of this – see, for example, Re Paul Hogan; Rimfire Films Ltd and Burns Philp Trustee Co Ltd v Pacific Dunlop Ltd [1988] FCA 361 at [35].
In this regard, Ms Vitale states:
Attached to this declaration and marked EV-28 are copies of merchandise relating to the Maroons, the majority of which prominently displaying the word "Maroons", as offered for sale in the online NRL Megastore accessed via the NRL Website as at 9 August 2013.
ARLC receives significant royalty payments from its licensees through the NRL licensing programme. I am responsible for overseeing the accounting associated with the royalties received by the NRL. Attached to this declaration and marked Confidential Annexure EV-29 is a table that I have made from ARLC's accounting records, which identifies the total retail value of sales of official licensed merchandise sold through the NRL licensing programme from 2007 to 2012 and through the State of Origin licensing program from 2009 to 2012. The information contained in Annexure EV-29 is not publicly available, and is strictly confidential to ARLC. The information is submitted only for the purpose of evidence in relation to ARLC's opposition to registration of the Trade Marks.
It is apparent from the information in Annexure EV-29 that since VBM began managing the NRL licensing programme in 2004, the size of the programme has increased consistently and significantly. The revenue generated from the programme is now more than twice the revenue generated in 2004. In addition, sales of State of Origin merchandise in Queensland in particular have consistently increased.
The NRL licensing programme is the largest licensing programme managed by VBM in Australia.
In 2010, the Australian Football League (AFL), the peak body responsible for the sport of Australian Rules Football in Australia, published a report, which concluded that the NRL licensing programme is the biggest merchandising programme in Australia.
The marketing and merchandising by the Opponent is thus pervasive and nigh on inescapable. I accordingly consider that it is likely that a high percentage of people are aware of the marketing and merchandising practices of the Opponent and (by inference) other major sporting codes in Australia.
Consequently, I consider that it is likely that members of the public encountering Goods sold under the Trade Marks will, because of both a widespread knowledge of the marketing and merchandising practices of the Opponent and the identification of the words ‘the Mighty Maroons’ with the Queensland State of Origin NRL Team believe that the Trade Marks indicate that the merchandise has the sponsorship or approval of the Opponent, that the use of the Trade Marks is by the Opponent or under its aegis. It follows that the use of the Trade Marks on the Goods is likely to mislead or deceive.
Accordingly the Opponent has established its oppositions under section 18 and subparagraph 29(1)(g) of the ACL and, therefore, the ground under subparagraph 42(b) of the Act.
Decision
At the relevant date subsection 55(1) provided:
55Decision
(1)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.
I refuse to register trade marks applications 1490916, 1490917, 1490919, 1490920, 1490924, 1487848 and 1490925.
Costs
Costs may follow the event and I award costs at the Official Scale against the Applicant to be suitably apportioned where appropriate between the Applications and to be taxed as per the official practice set out at Part 55 para 4.2 of the Trade Mark Examiner’s Manual.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
5 November 2014
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