Automobile Club De L'Oeust v Gardiakos
[2005] ATMO 19
•29 April 2005
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Automobile Club de l'Ouest (ACO) to registration of trade mark application 811110 (18, 24 & 25) & 826350 (32) - ADELAIDE LE MANS - filed in the name of Peter Gardiakos and Chris Kats.
Delegate: Jock McDonagh Representation: Opponent: Julia Baird, instructed by Peter Maxwell & Associates
Applicant: Written Submissions onlyDecision: Section 52 opposition - grounds under sections 42, 43 and 44 established – registration refused. Costs awarded against the applicant. Background
The applicants, Peter Gardiakos and Chris Kats, filed trade mark applications for the following trade marks:
Application Number: 811110 826350 Priority date: 22 October 1999 6 March 2000 Goods: Class 18: Umbrellas including beach/outdoor
Class 24: Flags not of paper, towels of textile
Class 25: Clothing apparel including t-shirts, casual shirts, collared shirts with placard fronts, knitwear, children's wear, jackets, scarves, ties, tracksuits, jerseys, sweat shirts and pants, sporting apparel, swimwear, underwear, boxer shorts, singlets, pyjamas, dressing gowns, aprons; footwear including shoes, socks and hosiery; headwear, caps, hats, beanies, and visors.Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices; syrups and other preparations for making beverages Trade Mark: Adelaide le Mans ADELAIDE LE MANS Advertised: 2 March 2000 6 July 2000
The opponent, Automobile Club de l'Ouest (ACO), filed notice of opposition to the registration of 811110 on 1 September 2000 and to 826350 on 4 January 2001. The notices listed grounds under sections 41, 42, 43, 44, 58, 60, 61 and 62 Trade Marks Act 1995 ("the Act") and “in the exercise of the Registrar’s discretion”.
The parties have duly served evidence in support of the opposition, evidence in answer, and evidence in reply.
The Opponent’s evidence in support of the Opposition comprises the statutory declarations of:
(i) Robynne Lyndsay Sanders dated 24 December 2001 (“Sanders 1”);
(ii) Robynne Lyndsay Sanders dated 2 July 2002 (“Sanders 2”);
(iii) Peter Stanley Tregaskis dated 14 May 2002 (“Tregaskis”); and
(iv) Jean‑Marc Desnues dated 30 June 2002 (“Desnues 1”).
The Applicant’s evidence in answer comprises the statutory declarations: of
(i) Peter Gardiakos dated 5 December 2002 (“Gardiakos “)and;
(ii) Chris Kats dated 5 December 2002 (“Kats”).
The Opponent’s evidence in reply comprises the affidavit of Jean‑Marc Desnues dated 4 June 2004 (“Desnues 2”).
The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Canberra on 19 January 2005. Ms Julia Baird of counsel, instructed by Peter Maxwell & Associates, Attorneys, represented the opponent. The applicants did not appear, but relied on written submissions filed on 16 January 2005.
Submissions as to Grounds of Opposition
At the beginning of the hearing, Ms Baird advised that the opponent would only rely on the s.41 ground if the opponent were to be unsuccessful in all other grounds. This ground was addressed in a written outline of the opponent’s submissions handed up at the hearing; however, the ground was not further discussed at the hearing.
Before Ms Baird commenced the opponent’s submissions, I advised that my preliminary view was that the s.61 ground had little merit and, subject to submissions, little likelihood of success. This ground, too, was addressed in the written outline of submissions but not further discussed at the hearing.
The opponent claimed an Australian trade mark application having earlier priority to the 826350 Application, namely 817487 le mans adelaide in classes 9, 16, 18, 24, 25, 26, 33, 35, 39, 41 and 42; with a priority date of 15 December 1999.
The opponent also claimed to be the owner of the common law mark le mans in respect of the 24 hour endurance car race that has been conducted since 1923.
The opponent submitted that the Marks the subject of the 811110 Application and the 826350 Application are in substance the same. It was submitted that there is no material difference between use of plain upper case letters and use of initial upper case letters followed by lower case letters in ordinary type. I agree with this proposition.
The gist of the applicant’s evidence and submissions was to the effect that the trade mark adelaide le mans had not been registered in the applied for classes prior to their application; however, the words adelaide and le mans had been used extensively in Australia and overseas in respect of a wide variety of businesses. Thus, it was submitted, the le mans trade mark had been ‘diluted’ in Australia such that the public would not be deceived or confused, indeed much of the Australian public “would not care at all”.
The applicants also pointed out that the opponent’s evidence did not demonstrate any relevant trade mark use by the opponent prior to the priority date of the applicants’ Marks. The publicity for the opponent’s motor race and its execution occurred after the applicants had filed their applications.
Deceptive Similarity
It is an element of both s.44 and s.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 (including for s.60 the common law mark le mans). The opponent accepted that if the marks are not deceptively similar, they are not substantially identical.
In considering whether marks are ‘substantially identical’, Ms Baird submitted that 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.
The opponent submitted that test to determine whether trade marks are 'deceptively similar' is set out in Shell Company v Esso 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]'
The opponent further submitted that 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.'
The opponent submitted, and I accept, that 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.
As was observed by Williams J in Sym Choon & Co Limited v Gordon Choons Nuts Limited (1949) 80 CLR 65 at 78:
'The basic principle is that the proposed mark must be so unlike the rival mark that it is not reasonably probable that a purchaser who knows of the latter and has an imperfect recollection of it is likely to be confused.'
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 Mark can be used in respect of the goods of the Applications in comparison to the opponent’s Marks. In so undertaking this task it is important to identify the essential features of the opponent’s Marks and the impression recollected and determine whether that/those essential features are to be found in the Mark and what role they play in the Mark.
The essential feature of the prior registered mark (in an s.44 comparison) or the prior used mark (in an s.60 comparison) is an important element of the impression gained from imperfect recollection. “The identification of an essential feature depends partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v Vick Chemicals Co. (1951) 68 RPC 103, at p106.
The weight to be afforded elements common to both marks is largely dependent upon how dominant the common elements are in each mark, the nature of that common element - whether it is distinctive or descriptive - and the nature of the elements of each mark that are not held in common - whether they are distinctive or descriptive.
It has been held by the High Court that where the common element in two marks is descriptive there is a heavy onus in establishing a likelihood of deception and that such common words must to some extent be discounted in considering whether the marks are deceptively similar: Cooper Engineering Pty Limited v Sigmund Pumps Limited (1952) 86 CLR 536 (rain king and rainmaster). Conversely, where the other components of a mark are directly descriptive of the relevant goods/services or are ordinary English words, used in their ordinary way, those components to some extent will be discounted in the Registrar’s analysis of the likely recollection of the mark. Those non distinctive components will leave less of an impression in the mind’s eye.
The words ‘likely to deceive or cause confusion’ in s.10 place no limitation on the nature of the confusion or deception envisaged, whether it be visual or phonetic confusion of the marks themselves or confusion or deception as to the trade provenance of the goods: see John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 113.
The test for deceptive similarity under the Act involves consideration of a lower threshold than the deception or misrepresentation to be found in passing-off or contravention of the Trade Practices Act 1974. It is enough for the mark to ‘cause confusion’; it is enough that there is a real, tangible danger that a consumer would be caused to wonder whether there is a connection between the marks, or the trade origin of goods or services supplied under them; or have reasonable doubt: Woolworths at [50].
The common feature to each of the Marks and the opponent’s Marks (both trade mark applications and common law marks) is the phrase ‘Le Mans’.
Whilst this phrase is the name of a small town in north-western France, as stated in the opponent’s evidence that phrase has become extremely well known outside France because of its association with the 24 hours endurance motor car race originally run in the vicinity of the town of Le Mans in 1923. The phrase has thus, by use of over 80 years, acquired a secondary meaning, as meaning the car race and style of car race (endurance) (and thus qualities of speed and endurance), overwhelming the initial geographical indication.
The word ‘Adelaide’ in both the Marks and the opponent’s Marks (trade mark application), however retains its geographical identity as an Australian city (although it may well have other meanings, for example that of a girl’s name, in other countries).
In the Marks the first component ‘Adelaide’ is used with its ordinary geographical meaning and would be taken generally to refer to products emanating from that city. Thus, the Mark as a whole contains the same essential features as the Opponent’s Marks (including the common law marks) to designate an Australian version of ‘Le Mans’ or as being Australian licensed or imported ‘Le Mans’ products. Thus ‘Adelaide’ is a qualifier of the essential feature of the Mark ‘Le Mans’ and by reason of that element of descriptiveness will be afforded little differentiating weight on imperfect recollection when comparing the Marks with the opponent’s common law marks ‘Le Mans’.
The goods of the specifications of the 811110 and 826350 applications are the very kinds of merchandising product commonly distributed at, licensed in association with and used to promote, sporting events. The concepts of brand extension and licensed merchandising associated with events are well understood and known by the Australian public.
I am satisfied that, having considered the applicable principles and tests, the applicant’s Marks are deceptively similar to the opponent’s Mark (common law and trade mark application). However, by virtue of the applicable principles and tests, I am not satisfied that the marks are substantially identical..
The Opponent addressed separately under s.44 and s.60 grounds the relevance of any similarity of goods.
Section 60: Prior reputation
To satisfy s.60, the opponent has the burden of establishing the following elements:
¨ a pre-existing trade mark;
¨ substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;
¨ the acquisition of a reputation in Australia by the pre-existing trade mark; and
¨ a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.
I am not satisfied that the opponent’s trade mark was being used in Australia before the priority date. The evidence suggests first trade mark use in Australia as being in December 1999.
As determined earlier, the applicant’s marks are deceptively similar to those of the opponent.
If there had been evidence of a pre-existing trade mark, the next question in respect of the s.60 ground, is whether the opponent has shown a sufficient reputation in its trade mark to satisfy the requirements of subsection 60 (b), such that the reputation is wide enough that deception and confusion is likely. The reputation must be shown to have existed at the priority date.
It is not necessary to prove reputation by direct evidence of consumer appreciation; it is commonplace to infer reputation from a high volume of sales, together with substantial advertising and other promotions: McCormick & Company v McCormick (2000) 51 IPR 102, at 127.
Reputation in Australia cannot be assumed - it must still be established as a question of fact - per Lockhart J in Conagra Inc v McCain Foods (Aust) Pty Ltd, (1992) 23 FCR 302. As stated above, there was no pre-existing trade mark in Australia to have established a reputation. While the opponent has demonstrated that it has an international reputation for its series of motor car races, it has not shown a high volume of sales, together with substantial advertising and other promotions in Australia at or before the relevant date such as to establish either trade mark use or reputation. On the basis of the evidence before me, I am not satisfied that the requisite reputation existed at the relevant date. Accordingly this ground of opposition has not been established.
Section 42: The use of the Mark would be contrary to law
In assessing whether use would be contrary to law under s.42(b), the Registrar is obliged to take into account the operation of law and legislation other than the Act: Advantage-Rent-a-Car Inc v Advantage Car Rental Pty Limited [2001] FCA 683; (2001) 52 IPR 24.
The opponent submitted that the use of the Mark by the applicants would be a contravention of s.52 of the Trade Practices Act 1974 ('TPA'), namely, that the use of the Mark by the applicants in trade or commerce in respect of goods within the Specification would be conduct that was misleading or deceptive or likely to mislead or deceive, as suggesting some association with the opponent, its goods and services or the ‘Le Mans’ car race event.
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 s.52 was made out in a name/getup type case, which can 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 s.52 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)section 52 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.
These principles have been restated by the Full Court of the Federal Court in S&I Publishing Pty Limited v Australian Surf Lifesaver Pty Limited (1998) 168 ALR 396 at 402 - 403.
The misrepresentation need only be likely to mislead. There is no requirement that actual deception be proven: Sydney Wide Distributors Pty Limited v Red Bull Australia Pty Limited (2002) 55 IPR 354 at [62]. It is no bar to succeeding in an action for contravention of s.52 that there is no consumer evidence of deception. Indeed where there has been no use of an applicant’s trade mark application there can be no evidence of deception.
Section 52 TPA is designed to protect consumers. It is a contravention of s.52 if a misrepresentation is conveyed by the use of the Mark that there is an association of some kind between the supplier of the goods in respect of which the Mark is sought to be registered and the user of the opponent’s Marks; that the goods to be supplied under or by reference to the Marks are in 'some way' promoted or associated with the opponent (or the ‘Le Mans’ car race events) or provided with the opponent’s consent or approval, when in fact they are not: see Mark Foys Pty Ltd v TVSN (Pacific) Ltd (2000) 49 IPR 303 at [40], [57] & [59].
The opponent submitted that as a consequence of the global and Australian reputation and notoriety of the phrase ’Le Mans’, the opponent’s Marks are directly associated with the opponent (and its licensees) and the particular car race events organised by them. While the opponent’s evidence was not sufficient to establish the reputation in Australia of a trade mark required under the s.60 ground, I am satisfied that it does establish a widespread general notoriety of the ‘Le Mans’ car race events.
The applicants seek to rely on a number of ASIC records listing instances of business and company names featuring the phrase ‘Le Mans’. I have accorded this evidence very little weight, as it is of little to no relevance to these proceedings. Business and company name registration does not confer any proprietary rights in any name. Further, the records exhibited to the declarations do not establish that any such business/ company name has been used before the first and second application dates, whether as a business name or a trade mark. Such material says nothing about any use in the Australian market of any of the names.
The applicants also appear to seek to rely on instances on the Trade Marks Register of marks not owned by the opponent which feature the phrase ‘Le Mans’ or a variation of such designation. This material has been disregarded; it does not speak to what is actually happening in the market and one has no idea about what the circumstances were to permit registration: Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 at [35]- [36]; British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281; McDonalds Corporation v David Bellamy [2004] ATMO 26 at [6]. As was observed by Wilcox J in Ocean Spray, marks in the past may have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate whether they had.
I consider 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 goods of the applications would be misled or deceived into acquiring the goods in the mistaken belief that they would be acquiring goods having some legitimate association with the opponent or the ‘Le Mans’ car race events. Such a representation would be injurious to the goodwill and reputation of the opponent. This representation causes more than mere wonderment or confusion and travels into the area of positive misrepresentation in contravention of s.52 TPA.
Section 43: Connotation within the trade mark
'Connotation' in s.43 refers to that which is implied within the trade mark itself, as a secondary implied or associated meaning. As was said in Down to Earth (Victoria) Co‑Operative Society Ltd v Schmidt (1998) 41 IPR 632 at 644:
‘considerations under s43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of ter relevant buying public. For example, deception or confusion could arise in regard to the character of the services (all goods) or the implied endorsement or licence of services (or goods) by a person or organisation’.
Section 43 looks to the inherent qualities of the trade mark of which registration is sought for the purposes of identifying whether the use of the trade mark would be likely to deceive or cause confusion: Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411 at [79] per Branson J.
Section 43 is also concerned with a Mark where a connotation of sponsorship, endorsement, affiliation or connection with another entity may arise in circumstances where the other entity possesses a degree of notoriety that surpasses the concept of reputation: Rocket Trademarks Pty Ltd v Cunliffe Management Pty Ltd [2004] ATMO 29 at [27].
As identified in Twentieth Century Fox Film Corp v Die Hard Pty Limited (2001) 52 IPR 455 at 466, the issue under s.43 may be posed as:
'To what extent has a connotation of the term 'Le Mans' established itself in Australian parlance as a result of the exposure of Australians to the [activities of the opponent with the 24 hour car endurance race event held since 1923] and if there is a connotation, is that connotation such that the use of the Mark in relation to the goods of the specification would be likely to deceive or cause confusion?'
The opponent submitted that this connotation is contained in the Mark. In that it connotes a connection with Le Mans with the ‘Le Mans’ car race event that does not exist; that is false and likely to deceive and cause confusion.
To demonstrate the establishment of the term in Australian parlance, the opponent has provided extensive examples of searches on the popular internet search engines (see Sanders 1 declaration) showing the expression in context in Australia, and of articles published in the Sydney Morning Herald newspaper from 1992 to 1999 (see Sanders 2 declaration) that contain references to the race. I am also aware that English dictionaries commonly used in Australia, including the Oxford and Macquarie dictionaries, include the 24 hour race event in their definitions of “Le Mans”.
The goods of the specifications of the applications are common types of merchandising or ‘spin off’ products licensed by organisers of sporting events, and used to promote such events. This is demonstrated by the instances of licensing undertaken by Panoz (eg Cooper’s Beers; clothing: Tregaskis declaration paragraphs 50‑54) and the opponent (Desnues 1 declaration paragraphs 47‑48).
I consider that the Australian public well knows and understands the concepts of licensed merchandising and brand extension.
Accordingly, the connotation inherent in the phrase ‘Le Mans’ is such that in the context of the goods of the specifications of the 811110 and 826350 applications, the use of the Mark in relation to those goods would be likely to deceive or cause confusion within the meaning of s.43 of the Act.
Section 44: Substantially identical/deceptively similar prior registrations
To establish the s.44 ground, the opponent must establish all of the following:
· At the priority date
· there was a substantially identical or deceptively similar trade mark application or registration
· in respect of similar goods or closely related services
· in the name of a person other than the applicant.
As mentioned earlier, the opponent has filed application 817487 with a priority date earlier than that of 826350 in respect of various goods, including class 33 Alcoholic beverages; cider; cocktails; spirits; ports; wines.
The test to be applied under s.44 may be expressed as follows:
'assuming use by the owner of the cited mark in a normal and fair manner of their mark in respect of any of the goods or services covered by the registration, is the Registrar satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of goods covered by the proposed registration.'
Re Smith Hayden & Co’s Application (1946) 63 RPC 97, 101;
Johnson & Johnson v Kalnin (1993) 26 IPR 435, 438.
In other words, the correct test of comparison under s.44 is to compare the statutory rights of use of each mark conferred by registration or sought to be conferred pursuant to an application for registration (that is, the use to which a registered owner properly can put the mark within the ambit of the registration) rather than the actual modes of use of the marks.
The class 32 goods of the 826350 Application encompass beers. Are beers alcoholic beverages within the class 33 specification of trade mark Application 817487?
The issue of similar goods was considered in McCormick & Co Inc v McCormack (2001) 51 IPR 102 at [16] – [19] where Kenny J observed that there are three principal factors to be considered:
· the nature of the goods, including their origin and characteristics;
· the uses made of them, including their purpose;
· the trade channels through which the goods are bought and sold, which channels include whether it is relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops, whether they are sold to the same sort of customers and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade.
The expression ‘goods of the same description’ implies a relationship between the goods such that they would be seen by purchasers as having the same trade origin if sold under deceptively similar marks: Polo Textile Industries Pty Limited v Domestic Textile Corp. Pty Ltd (1993) 26 IPR 246; 42 FCR 227.
The Opponent submitted that the nature of the goods, the uses made of them, including their purposes, and the trade channels in respect of the goods the subject of the 826350 Application and the goods the subject of trade mark application 817487 are so similar as to result in the goods being goods of the same descriptions such as to establish them as similar goods within the meaning of s.44(2) of the Act.
As alcoholic drinks, beer and alcoholic beverages are both supplied to consumers through substantially the same distribution channels (bars, restaurants and liquor stores), subject to the same regulations as to the age of consumer and the consequences of drinking (for example random breath testing) and in many cases are manufactured or licensed by the same entities.
Further, mineral and aerated waters and other non‑alcoholic drinks , fruit drinks and juices, syrups and other preparations for making beverages are, as beverages, also supplied to consumers through the same outlets as alcoholic beverages used in association with alcoholic beverages (for example as mixers, or premixed drinks) and in many cases are used to quench thirst.
I am satisfied that the opponent has established the s.44 ground in respect of the 826350 Application.
Conclusion and Decisions
The opponent has established grounds of opposition on which it relied so that the opposition has been successful. Pursuant to s.55 of the Act, I refuse to register applications 811110 and 826350.
Costs
The opponent sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.
Jock McDonagh
Hearing Officer
Trade Marks Hearings
29 April 2005
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