Bauer Consumer Media Limited v Big Picture (Aust) No 2 Pty Ltd

[2013] ATMO 35

TRADE MARKS ACT 1995

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

Re:Opposition by Bauer Consumer Media Limited to registration of trade mark application 1085244(41) - BIG PICTURE - filed in the name of Big Picture (Aust) No 2 Pty Ltd.

Delegate:	Nicole Worth
Representation:	Opponent: Written submissions prepared by Macek Rubetzki, Corporate and Trade Marks Counsel, Bauer Media Group. Applicant: Written submissions prepared by Colin Cheung, Actuate IP Patent & Trade Mark Attorneys.
Decision:	2013 ATMO 35 Section 52 opposition – s41, 42, 44, 58A, 59 and 60 grounds – s41 established and 41(5) partially applied – s44 established and 44(4) partially applied – other grounds not established - Applicants given opportunity to amend services –– costs awarded against Applicant.

Background

1. This is an opposition by Bauer Consumer Media Limited (‘the Opponent’) pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark detailed below in the name of Big Picture (Aust) No. 2 Pty Ltd (‘the Applicant’):

Trade Mark:               BIG PICTURE

(‘the Trade Mark’)
Application No.:        1085244
Priority Date:             11 November 2005

Services:Entertainment services; production, pre and post-production, editing and distribution of audio and/or visual recordings including television and radio programs, films, pre-recorded video tapes, cassettes and discs, pre-recorded audio tapes, cassettes and discs, and computer software programs; production management services; organisation, production and presentation of events, exhibitions and seminars for educational, cultural or entertainment purposes; rental of video production systems and apparatus; rental of screens including digital projection and LED screens; provision of information, advice and consultancy in relation to the aforementioned services.

Endorsements:           Provisions of subsection 44(4) applied.

1. The application was accepted under the provisions of subsection 44(4) on 30 January 2007 after the then-applicant[1] made amendments to its specification of services and provided evidence of use of its trade mark that was prior to the priority dates of a number of registered trade marks.

   [1] I note that the application was assigned from Big Picture (Aust) Pty Ltd to Big Picture (Aust) No 2 Pty Ltd on 9 April 2008.

2. After obtaining extensions of time in which to do so, PBL Media Mastheads Pty Ltd (‘PBL’) filed a Notice of Opposition (‘the Notice’) to the registration of the Trade Mark on 13 August 2007, citing most of the grounds of opposition available under the Act. I note that PBL changed its name to NEC Mastheads Pty Ltd (‘NEC’) in 2010. The rights and interests in the opposition subsequently became vested in the Opponent after the assignment to it of a number of registrations previously in the name of NEC.

3. After unsuccessful negotiations between the parties, the Opponent served and filed partial evidence in support on 3 November 2009 and the balance of it on 5 May 2010. The Applicant indicated, via requests for extensions of time, that it intended to serve and file evidence in answer, but then after further settlement negotiations failed it requested a hearing instead. The hearing was deferred after the Registrar was notified of further negotiations between the parties, and was again set down after those negotiations failed.

4. The hearing was scheduled for 20 September 2012. The Applicant was to be the only party to appear (the Opponent opting to rely upon written submissions it had filed). However on 17 September 2012 the Applicant informed me that it no longer intended to appear at the hearing, nor intended to provide written submissions, but instead wished to rely solely on the evidence it had filed during examination (but not served in opposition).

5. Once the Applicant had properly filed an application for permission to serve further evidence, being the evidence filed during examination but not served in opposition, I informed the parties that I intended to allow that application into proceedings and that the Opponent would be allowed a reasonable opportunity to consider and respond to the further evidence. It did so by filing a declaration of its legal representative on 1 February 2013.

6. I am therefore deciding this matter upon the written material before me comprising:

   ·     The Notice

   ·     The evidence in support served and filed by the Opponent

   ·     The further evidence served and filed by the Applicant

   ·     The Opponent’s declaration responding to the Applicant’s further evidence

   ·     The written submissions prepared on behalf of the Opponent[2]

   [2] Being submissions dated 14 September 2010 and 13 October 2011, prepared in relation to the matter previously being set down; and submissions dated 31 August 2012 which addressed changes to the legislation and developments in case law since 2010.

Grounds and Onus

1. The Notice lists twenty-three grounds of opposition corresponding to various provisions of the Act, but in its submissions to the subject hearing the Opponent confirmed it would only be pressing those grounds based on sections 41, 42, 44, 58A, 59 and 60 of the Act. To succeed in its opposition the Opponent bears the onus of establishing at least one of these grounds according to the ordinary civil standard of the balance of probabilities.[3]

   [3] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

2. The relevant date at which the rights of the parties are to be determined is the Priority Date, being 11 November 2005.[4]

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, per Kitto J at 595.

Evidence

1. The evidence served and filed by the parties is as follows:

Evidence in support

• Declaration of Macek Rubetzki, Corporate and Trade Marks Counsel of the Opponent, with exhibits MR No.1-1 to MR No.1-31, dated 3 November 2009,

• Declaration of Macek Rubetzki with exhibits MR No.2-1 to MR No.2-34, dated 23 April 2010.

Applicant’s further evidence

• Declaration of Joe Bonanno, a Director of Big Picture (Aust) Pty Ltd, with exhibits 1 to 19, dated 12 December 2006.

Opponent’s response to Applicant’s further evidence

• Declaration of Macek Rubetzki, with exhibits “Reply Exhibit 1” to “Reply Exhibit 3”.

1. A brief summary of the evidence is as follows:

The Opponent

1. The Opponent publishes an adult magazine named THE PICTURE (‘the magazine’). The magazine features nude and semi-nude pictures (primarily of women but occasionally of men), stories, news articles, jokes, advice columns, puzzles and advertising. It is a weekly publication which was first published on 13 September 1988. The Opponent also publishes three related publications being THE PICTURE PREMIUM (since 1998), THE PICTURE SEXTRA (it is not stated since when) and THE PICTURE 100% HOME GIRLS (since 2000), all of which appear to feature much of the same content as THE PICTURE.

2. Circulation figures for the magazine are provided from June 1994 to December 2009 and readership figures are provided from 2003 to 2009 (and, for the years 1994 to 2002, readership figures are extrapolated from circulation figures). Circulation figures “measure paid copies of magazines sold in Australia (that is, sold at newsagencies, supermarkets, convenience stores etc)”, and readership figures “provide a measure of the number of people actually reading a publication, whether or not they have purchased a copy”. Both are in the range of hundreds of thousands.

3. Advertisements of video tapes featuring the THE PICTURE trade mark are in evidence. They are dated 1997 and indicate that the video tapes were of a similarly adult nature and could be purchased by telephone order.

4. As early as 2001 the Opponent’s predecessor began to sponsor the publication of an adult calendar entitled “Exotic Angels” as well as the events associated with the production of the calendar, such as model pageants and/or talent shows. The Opponent’s predecessor was allowed, by an agreement executed in 2006 with the “beneficiary” of the sponsorship, the naming rights to the events (such as “The Picture Premium Magazine Exotic Angels Promotion”), and the sponsored party was allowed to use THE PICTURE PREMIUM and/or THE PICTURE upon its website and calendar and in respect of the events it staged. Although the agreement was not executed until 2006, the evidence depicts a 2005 calendar which displays the trade mark THE PICTURE. Advertisements of DVDs, for the years 2006 and 2007, containing recordings of the events associated with the production of the “Exotic Angels” calendar are also in evidence.

5. THE PICTURE magazine is promoted upon a web site at the address The website was developed in 2001 and archived pages show use of the trade marks THE PICTURE and THE PICTURE PREMIUM upon depictions of magazine editions, and and PICTURE MAGAZINE upon the web pages themselves. The content of the web site is similar to the magazine, as well photographs and videos downloadable to the user’s computer. Advertisements from 2007 invite readers to download photographs and videos onto their mobile telephones.

6. Confidential exhibits provide the number of downloads of video material to mobile phones (between 2004 and 2009) and the number of DVDs sent to readers at their request (between 2006 and 2010).

7. Other internet material from 2008, 2009 and 2010 is in evidence including ‘myspace’® and ‘Facebook’® web pages and various third party references to THE PICTURE magazine.

The Applicant

1. As a preliminary matter, I note here that the declaration served as further evidence was executed in 2006 in response to the examiner’s report. The applicant at that time was Big Picture (Aust) Pty Ltd (‘the original applicant’, the application being assigned to the Applicant in April 2008) and the declarant Joe Bonanno was one of its founders and directors. I do not have material before me which explicitly shows Mr. Bonanno’s connection to the Applicant, such as records from the Australian Securities and Investments Commission which show the names of directors. However I consider it reasonable to assume Mr. Bonanno’s declaration applies now as being in respect of an authorised user: the declaration has been provided by the Applicant’s legal representative as being on behalf of the Applicant, and there is nothing before me to suggest that the original applicant used or uses the Trade Mark without the Applicant’s authorization. Where I refer to the Applicant it can be taken as a reference also to the original applicant.

2. Mr. Bonanno describes the services provided by the Applicant thus:

   Since 1992, the Applicant has provided entertainment services, production and editing services, production design and management services, organisation, production and presentation of television shows, events, exhibitions and seminars, and rental of various video production equipment and screens. In particular, since 1992, the Applicant has supplied video production facilities to tours that come to Australia from overseas. In addition, the Applicant has been involved in supplying video production equipment and screens as well as crew to tours travelling internationally since 1995.

   The Applicant has been undertaking major productions in the entertainment industry since 1992 and promotes itself as Australia’s premier specialist video production and display services provider for the entertainment, corporate and broadcast industries.

   The Applicant provides portable outdoor broadcast production systems, indoor and outdoor LED screens, large screen digital and HD video projection for entertainment and corporate events. It also provides post-production services and digital manipulation as well as production design and consultancy services, project management and liaison services for major productions.

   The types of productions for which the Applicant provides its services include live events, festivals, concert tours, corporate seminars, trade shows, annual general meetings and product launches.

3. Undated brochures are provided which show the Trade Mark is used at times in conjunction with a device and at other times in a particular font, as below:

1. Several articles about the Applicant are in evidence as are several advertisements in print media. They date from 1995 to 2004 and appear in Connections Magazine, Encore Magazine, Dawsons Venue Selection Magazine, BEN Magazine and Total Production Directory Magazine, all of which appear to be industry publications for the audio-visual and entertainment venue industries. The articles indicate various entertainment events in which the original applicant was involved, including the provision of cameras and camera crew, audio visual equipment hire, editing and associated crew for productions by Janet Jackson, John Farnham, Stevie Wonder, LIVE, The Tweenies, and Kylie Minogue and the circa 2001 Hill Song conference at the SuperDome.

2. It is declared that the Applicant has advertised its business via street signage since 1996, in the Yellow Pages® since 1992, and via the website since 1998. Undated print outs of the website are in evidence which display the trade mark in conjunction with the logo.

3. Lastly several letters of appreciation are in evidence thanking the Applicant or its directors for unspecified services rendered, including in relation to The Variety Club Special Children Christmas Party, the AMP Champions party, the Sydney Film Festival, the Westpac Budget Dinner, the Great Australian Muster at the Royal Easter Show and Sony Tropfest.

Section 41

1. I will deal first with the Trade Mark’s alleged lack of distinctiveness. Section 41 of the Act relevantly provides:

   (2) 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 (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.

   (3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   (4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

   (a) the Registrar is to consider whether, because of the combined effect of the following:

   (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
   (ii) the use, or intended use, of the trade mark by the applicant;
   (iii) any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

   (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
   (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

   Note 1:  For goods of a person and services of a person see section 6.

   Note 2:  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 (1) and 7(3) and section 8).

2. The test for determining whether a trade mark is adapted to distinguish was proposed by Kitto J in Clark Equipment Co v Registrar of Trade Marks[5]:

   [W]hether a mark is adapted to distinguish [will] be tested by reference to the likelihood of 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.

   [5] [1964] HCA 55; (1964) 111 CLR 511 at 514.

3. The Opponent provides dictionary definitions of the words “big” and “picture” and submits that the Trade Mark is descriptive according to its literal meaning. It further submits that although “big picture” is defined as a phrase, indicating an “overarching perspective on a set of circumstances” (as per definitions from the Merriam-Webster Dictionary and ‘yourdictionary.com’), the definitions indicate it almost never appears unless preceded by the word “the”. Consequently, it is submitted, the absence of “the” means that the phrase has particular descriptive meaning in relation to the specified services. In this regard the Opponent states:

   The Applicant’s trade mark is BIG PICTURE, and I think that when that actual mark is used in relation to the Applicant’s Services, those words do not mean “an overarching perspective”. Instead, they make a simple and clear reference to the Applicant’s Services: that is, the Applicant’s trade mark simply means a large representation or image etc, as in “that’s a big picture being projected above the entertainers on the stage”.

4. In support of its assertion the Opponent submits several internet searches and web pages which allegedly show other traders using the Trade Mark in respect of similar or closely related goods or services.

5. I do not consider that the literal meaning is the first thing that comes to mind upon reading the words ‘big picture’. Even without the word ‘the’ the figurative meaning of the phrase is immediately clear – for example, someone can be a big picture person, or have a big picture idea. Many of the internet searches and web pages, referred to above, show use of the phrase in its figurative rather than literal sense and do not make reference to the services provided.

6. At the same time there are also many instances of descriptive use, or use precisely because of the play between the literal and figurative meanings, particularly in relation to equipment which projects visual material. Some examples are as follows:

• “The big picture on HD TV”

• “Sharp’s 65 inch AQUOS LCD delivers the big picture”

• “Screen goo gives people the big picture…screen goo wall gives the ultimate big picture experience at home”

• “Sharp PG-F267X DLP projector – short throw, big picture”

• “BenQ W5000 home theatre projector: the big picture”

• “Shop the latest Entertainment TV Projector online at Macys.com. Big picture, big fun!”

• “Sharp’s new DLP Conference projector highlights the big picture”

• “Present with ESP-Projectors: Short distance! Big picture!”

• “InFocus Play Big projectors deliver an amazing big picture experience”

• “The big picture: new projection systems are allowing teachers to bring the world large than life right into the class room”

• “TI Introduces New DLP® Pico™ Projector Technology Chip Enabling Big Picture Experiences in the Palm of Your Hand”

• “Lasers project the big picture”

• “Big picture experience from mobile devices is one step closer to reality”

• “The big picture fits the small screen: microdisplays can do the job as well as their larger counterparts”

1. Such examples indicate that it is reasonable to conclude that other traders, particularly those who provide goods or services in respect of projecting or presenting visual material, are likely to desire to use the Trade Mark in respect of them.

1. This applies in particular to the Applicant’s services of “rental of video production systems and apparatus; rental of screens including digital projection and led screens” and the “provision of information, advice and consultancy” in relation to the rental of that equipment. Such services are encompassed within the broad descriptions “entertainment services” and “organization, production and presentation of events, exhibitions and seminars for educational, cultural or entertainment purposes” specified in the application, and so the conclusion applies to them also.

2. The services in the application described as “production, pre and post-production of audio and/or visual recordings including television and radio programs, films, pre-recorded video tapes, cassettes and discs, pre-recorded audio tapes, cassettes and discs, and computer software programs” and “production management services” appear to have industry-specific meanings.

3. According to Wikipedia® there are three parts to a production (such as a music, theatre or film production), and they are ‘pre-production’, ‘production’ and ‘post-production’. Pre-production is the process of preparing all the elements involved in creating the production, including identifying visual effects and hiring any necessary crew. Production is the principal photography, recording or performance (whichever is relevant). Post-production occurs at the end of recording and includes editing, compiling, and adding any special effects. That being the case, I consider the Trade Mark is likely to be desired for use by other traders insofar as “production, pre and post-production, editing and distribution of audio and/or visual recordings including television and radio programs, films, pre-recorded video tapes, cassettes and discs, pre-recorded audio tapes, cassettes and discs, and computer software programs” encompass projecting or presenting visual material.

4. The Opponent has provided material which indicates the nature of the claimed “production management services”. A production manager appears to be principally responsible for the scheduling and budgeting of a production, although some references indicate that a production manager is responsible for all physical aspects of a production including overseeing technology and equipment rental. Again, insofar as production management services encompass managing visual presentation or displays, the Trade Mark is likely to be desired for use by other traders.

5. Therefore, although the trade mark has some inherent distinctiveness owing to its double meaning, I am unable to decide on that basis alone that the trade mark is capable of so distinguishing the specified services. I turn then to a consideration of subsection 41(5) and the combined effect of:

   ·     the extent to which the trade mark is inherently adapted to distinguish the specified services;

   ·     the use, or intended use, of the trade mark by the applicant; and

   ·     any other circumstances.

6. The Applicant declares use since 1992, although I note that the earliest exhibits date back only so far as 1995. Of most relevance are the articles and advertisements in Connections Magazine, Encore Magazine, Dawsons Venue Selection Magazine, BEN Magazine and Total Production Directory Magazine. I note the Opponent’s contention that articles about the Applicant do not equate to trade mark use by the Applicant. Many of the articles refer to the Applicant as simply ‘Big Picture’, for example in relation to a Kylie Minogue tour an article states “Big Picture is supplying all the vision equipment…and crew”. I consider such references to be references to the Trade Mark as they identify ‘Big Picture’ as the source of the services provided. Moreover, given that those articles show the Applicant has provided its services to numerous major international acts I consider the Trade Mark has gained considerable recognition in the audio-visual industry.

7. Although the Applicant’s evidence is relatively brief, I am satisfied there is sufficient material to establish that the Trade Mark has come to identify the Applicant in respect of rental of video production systems and apparatus; rental of screens including digital projection and LED screens; hire of personnel to operate video production systems and apparatus, digital projection screens and LED screens; editing of audio and/or visual recordings including television and radio programs, films, pre-recorded video tapes, cassettes and discs, pre-recorded audio tapes, cassettes and discs, and computer software programs; and provision of information, advice and consultancy in respect of the foregoing, and I would be prepared to apply the provisions of subsection 41(5) in respect of them.[6]

   [6] I note that the service hire of personnel to operate video production systems and apparatus, digital projection screens and LED screens were not explicitly claimed in the original specification of services, however I consider that it was encompassed within the broad claims listed in paragraph 39.

8. I am not satisfied, however, that the Applicants evidence shows sufficient use of the Trade Mark in respect of the broader services “Entertainment services; production, pre and post-production, and distribution of audio and/or visual recordings including television and radio programs, films, pre-recorded video tapes, cassettes and discs, pre-recorded audio tapes, cassettes and discs, and computer software programs; production management services; organization, production and presentation of events, exhibits and seminars for educational, cultural or entertainment purposes; provision of information, advice and consultancy in relation to the aforementioned services. That being the case, the ground of opposition under section 41 is established in respect of those services.

9. Given that the ground of opposition under section 41 has been partially established, I will discuss the remaining grounds of opposition only in respect of those services for which I would be prepared to apply the provisions of subsection 41(5), namely rental of video production systems and apparatus; rental of screens including digital projection and LED screens; hire of personnel to operate video production systems and apparatus, digital projection screens and LED screens; editing of audio and/or visual recordings including television and radio programs, films, pre-recorded video tapes, cassettes and discs, pre-recorded audio tapes, cassettes and discs, and computer software programs; and provision of information, advice and consultancy in respect of the foregoing.

Section 44

1. Section 44 of the Act relevanctly provides:

   (2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

   (a) it is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar services or closely related goods; or
   (ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.

   Note 2:  For similar services see subsection 14(2).
   Note 3:  For priority date see section 12.

2. Subsections (3) and (4) contemplate registration in the face of a conflicting trade mark on the basis on honest concurrent use, circumstances which make registration proper, or prior continuous use.

3. In support of this ground the Opponent relies upon the registered trade marks shown below, all of which have earlier priority dates than the application for registration.

Trade Mark	Services	Priority Date
488749: THE PICTURE	Class 16: Printed matter being magazines and periodicals	9 June 1988
722211: THE PICTURE	Class 16: Printed matter including books, magazines and newspapers; posters; photographs Class 41: Publishing, electronic publishing; organisation of competitions for education and/or entertainment; information services (including on-line information services) relating to education or entertainment	10 Nov 1996
933449: THE BIG PICTURE	Class 36: Banking, financial services and monetary affairs, including lending, investing, financing, financial advice and financial management services and monetary transactions	8 Nov 2002
1025631: THE BIG PICTURE	Class 9: Image projection and display devices, namely, image projectors for business and home use, think liquid-crystal displays and thin television displays; software for use with image projection and display devices, namely interface software for controlling digital image projectors and digital display devices; and hardware for use with image projection and display devices, namely, wireless devices, namely wireless computer peripherals, remote controls, display screens, namely LCD display screens, projection screens, magnifying lenses and parts and connectivity equipment, namely electrical cables, power cables for projection and display devices	9 Aug 2004

1. I note that the Opponent had also cited registrations 839874, 889024 and 896638 in support of the section 44 ground of opposition. Those registrations have now been removed from the Register because their registration was not renewed. In accordance with section 80 of the Act, the removed trade marks are not barriers to the registration of the Trade Mark because they are outside the 6 month period in which the Registrar is obliged to renew registration should a request be properly made.

Trade marks for similar services

1. French J, in Registrar of Trade Marks v Woolworths (‘Woolworths’)[7] and in the context of closely related goods and services, observed that the logic of s44 suggests that the determination of whether goods and services are similar or closely related is “logically antecedent to” assessing deceptive similarity of trade marks. Accordingly I will commence by considering whether the opposed application is in respect of services similar to or closely related to the goods and services specified in the above registrations, but bearing in mind his Honour’s subsequent comment “In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend on the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question”.

   [7] [1999] FCA 1020; (1999) 45 IPR 411.

2. In respect of similar services I note that in MID Sydney Pty Ltd v Australian Tourism Co Ltd[8] the Full Federal Court accepted that, subject to any necessary modification, the principles applicable to determining similar goods also applied to determining similar services. Modifying those principles[9] the relevant considerations include the nature of the services and their respective purposes, the trade channels through which they are provided, and whether they are normally provided by the same traders in the same places to the same class of customer.

   [8] [1998] FCA 1616; (1998) 42 IPR 561.

   [9] As set out in Jellinek’s Application (1946) 63 RPC 59 and Beck, Koller & Company’s Application (1947) 64 RPC 76.

3. For ease of reference the services under comparison here are, on the one hand:

   rental of video production systems and apparatus; rental of screens including digital projection and LED screens; hire of personnel to operate video production systems and apparatus, digital projection screens and LED screens; editing of audio and/or visual recordings including television and radio programs, films, pre-recorded video tapes, cassettes and discs, pre-recorded audio tapes, cassettes and discs, and computer software programs; and provision of information, advice and consultancy in respect of the foregoing

and on the other:

Publishing, electronic publishing; organisation of competitions for education and/or entertainment; information services (including on-line information services) relating to education or entertainment specified in registration 722211; and

Banking, financial services and monetary affairs, including lending, investing, financing, financial advice and financial management services and monetary transactions specified in registration 933449.

1. I am not satisfied, for the most part, that the services are similar. I note that the Opponent’s submissions in relation to the similarity of services are primarily made with reference to services which are no longer under consideration (the ground of opposition under section 41 already having been established in in respect of them). The exception, however, is editing of audio and/or visual recordings including television and radio programs, films, pre-recorded video tapes, cassettes and discs, pre-recorded audio tapes, cassettes and discs, and computer software programs which I consider somewhat similar to the broad description publishing as specified in registration 722211. ‘Edit’ is defined in the Macquarie Dictionary as, inter alia, “to collect, prepare, and arrange (materials) for publication”[10], and ‘publishing’ is defined in Wikipedia® as “the process of production and dissemination of literature, music or information – the activity of making information available to the general public”. Editing is a process undertaken for the purpose of publication and the two are therefore linked.

   [10] Macquarie Dictionary online, © Macmillan Publishers Australia 2013.

2. I turn then to the consideration of whether THE PICTURE, being the trade mark registered in respect of publishing, is substantially identical or deceptively similar to BIG PICTURE. I am not satisfied that a side-by-side comparison, as set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil(Aust) Ltd (‘Shell’)[11], results in a “total impression of resemblance” such that the marks are substantially identical. The Trade Mark contains the word ‘BIG’, which in the context of the relevant services is not utterly descriptive such that it may be ignored for the purpose of comparison, and it conveys both a literal and figurative meaning. In contrast the Opponent’s mark contains the word ‘the’ and has no such double meaning. I consider these differences preclude a finding of substantial identity.

   [11] (1963) 109 CLR 107 at 414-415.

3. The test for deceptive similarity is a different test to that for substantial identity, and can also be found in the words of Windeyer J in Shell:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on the 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…mark.

4. The Opponent contends that confusion is likely to arise as a result of contextual confusion, such as in John Fitton & Co Ltd’s Application[12], wherein marks might not themselves be confused but nonetheless assumed to originate from the same source owing to a common feature – such as the word ‘picture’ in THE PICTURE and BIG PICTURE. This argument would carry more weight if there was not also a figurative meaning that could be applied to the Trade Mark but not to the Opponent’s mark. For the purposes of comparison, I consider that ‘big’ has significant presence in the Trade Mark such that deception or confusion between it and registration 722211, in the context of editing and publishing services, is unlikely.

   [12] 66 RPC 110.

Trade marks for closely related goods and services

1. In respect of goods closely related to services, French J in Woolworths observed that the relationship

   may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them.

2. His Honour also quoted the remarks of Lockhart J in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co[13]:

   Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods.

   [13] [1983] FCA 145; (1983) 48 ALR 511.

3. Again, for ease of reference the services and goods under comparison here are, on the one hand:

   rental of video production systems and apparatus; rental of screens including digital projection and LED screens; hire of personnel to operate video production systems and apparatus, digital projection screens and LED screens; editing of audio and/or visual recordings including television and radio programs, films, pre-recorded video tapes, cassettes and discs, pre-recorded audio tapes, cassettes and discs, and computer software programs; and provision of information, advice and consultancy in respect of the foregoing

and on the other:

Printed matter being magazines and periodicals specified in registration 488749;

Printed matter including books, magazines and newspapers; posters; photographs specified in registration 722211; and

Image projection and display devices, namely, image projectors for business and home use, thin liquid-crystal displays and thin television displays; software for use with image projection and display devices, namely interface software for controlling digital image projectors and digital display devices; and hardware for use with image projection and display devices, namely, wireless devices, namely wireless computer peripherals, remote controls, display screens, namely LCD displays screens, projection screens, magnifying lenses and parts and connectivity equipment, namely electrical cables, power cables for projection and display devices specified in registration 1025631.

1. Whilst I consider it possible that there is some relationship between printed matter and editing of audio and/or visual recordings including television and radio programs, films, pre-recorded video tapes, cassettes and discs, pre-recorded audio tapes, cassettes and discs, and computer software programs, the trade marks to be compared are THE PICTURE and BIG PICTURE. As previously discussed, in respect of editing the word ‘big’ cannot be discounted as non-distinctive and it provides the Trade Mark with a figurative meaning, one that is unrelated to the goods of the Opponent. I therefore consider deception or confusion between registrations 488749 and 722211, and the Trade Mark, unlikely.

2. The same cannot be said for the comparison between the apparatus and equipment specified in registration 1025631 and the Applicant’s rental services. In line with the comments of Lockhart J, the Applicant’s rental services necessarily involve the use of the earlier registration’s goods, and they are therefore closely related. Furthermore, I would consider that in a side-by-side comparison the trade marks THE BIG PICTURE and BIG PICTURE are substantially identical. The absence of the word ‘the’ in this context is a minor variation: both trade marks are essentially the same, whether judged by their literal and figurative meanings or their aural and visual presentation.

3. I note that registration 1025631 was raised as a basis for a ground for rejection under section 44 at the examination stage. In response the Applicant provided evidence of prior continuous use of its trade mark and the examiner accepted the application under the provisions of section 44(4). I see no reason to disturb the examiner’s decision to do so, nor has the Opponent presented any reason why I should. I am satisfied that the Applicant provided its rental services at least as early as 1995 and has continued to do so until the present time.

1. Therefore, whilst the ground of opposition under section 44 is made out on the basis of prior registration 1025631 I am prepared to apply the provisions of section 44(4) to the application.

Section 60

1. The Opponent asserts that

   [T]he opposition proceedings in respect of the Applicant’s Trade Mark commenced with the filing of a notice of opposition on 13 August 2007. As a consequence, the Section 60 Ground is to be adjudged on the basis of section 60 of the TMA as amended by the Trade Marks Amendment Act 2006, meaning that the issue of deceptive similarity is not relevant.

2. The issue of the date at which the amended version of section 60 applied was discussed in Apple Computer Inc. v Todaytech Group Pty Ltd.[14] There, Hearing Officer Lyons considered the appropriate application of the ‘new’ section 60 (which was not subject to an application provision) and found, at paragraphs 47 and 48:

   In matters under the Act, the ‘right’ spoken of must include the right or privilege of a trade mark applicant to have its application dealt with by the law as it stood at the time the trade mark application was filed. That is an accrued right. It must include the right to find the grounds of opposition to be as they were at the filing date, certainly not of wider ambit.

   Therefore, I find that the repeal of section 60 did have the capacity to affect rights or privileges that the applicant had acquired and, but for a contrary intention in the Amendment Act, the impact of section 8(c) of the [Acts Interpretation Act] is to preserve those rights and privileges.

   [14] 2007 ATMO 40

3. Having determined that there was no such contrary intention in the Amendment Act, Hearing Officer Lyons’ conclusion was that the pre-amendment provisions of section 60 applied to applications filed prior to the commencement of the amending legislation.

4. Given that the Trade Marks Amendment Act 2006 came into force on 23 October 2006, and the application was filed on 11 November 2005, it follows from Hearing Officer Lyons’ conclusion that the pre-amendment version of section 60 applies here.[15] Before amendment it provided that:

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

   (a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
   

   [15] See also Benelli Q.J. Srl. v Ford Motor Company [2011] ATMO 9 or Dynapac International Adtiebolag v Kobelco Construction Machinery Co, Ltd [2008] ATMO 59, wherein the unamended version of s60 was found to apply where the applications were filed prior to 23 October 2006 but the notices of opposition were filed after that date.

   (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

5. The comparison therefore is between an existing substantially identical or deceptively similar trade mark that has acquired a reputation in Australia (but which is not necessarily registered or the subject of an application for registration) and the Trade Mark.

6. In this regard the Opponent relies on the reputation of its trade mark THE PICTURE. However, as discussed in the previous section of this decision under section 44, I do not consider that the trade marks THE PICTURE and BIG PICTURE in the context of the reduced scope of the Applicant’s services are deceptively similar, and the ground fails at this hurdle.

7. I would also briefly note, however, that I consider the reputation in THE PICTURE lies with adult magazines, videos and possibly downloadable mobile telephone content. I do not consider that reputation so ubiquitous that deception or confusion is likely to occur in respect of the Applicant’s reduced scope of services.

Section 59

1. Section 59 provides:

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

1. Again, much of the Opponent’s submissions are primarily made with reference to services which are no longer under consideration (the ground of opposition under section 41 already having been established in in respect of them).

2. Given I am satisfied that the evidence shows the Applicant used the Trade Mark in respect of rental of video production systems and apparatus; rental of screens including digital projection and LED screens; hire of personnel to operate video production systems and apparatus, digital projection screens and LED screens; editing of audio and/or visual recordings including television and radio programs, films, pre-recorded video tapes, cassettes and discs, pre-recorded audio tapes, cassettes and discs, and computer software programs; and provision of information, advice and consultancy in respect of the foregoing from a time prior to filing the application to the present, I am satisfied that it had the requisite intention at the date it filed the application.

3. The ground under section 59 therefore fails.

Section 42

1. Section 42 of the Act provides:

   An application for the registration of a trade mark must be rejected if:

   (a) the trade mark contains or consists of scandalous matter; or
   (b) its use would be contrary to law.

2. Although not explicitly stated by the Opponent, in lights of its submissions it appears that it pursues only the ground under section 42(b). In any event I would not consider that BIG PICTURE contains or consists of scandalous matter.

3. Madgwick J, in Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd[16], observed that it may be difficult for the Registrar to look at questions of law outside her expertise and places an onerous responsibility on her, but nevertheless:

   …[T]he Registrar has the comfort that the criterion is that the use “would” not “could” be contrary to law

   …
   

   [16] [2001] FCA 683; (2001) 52 IPR 24 at [28].

   what is required is that the Registrar form a view as to whether the use of a trade mark would be contrary to law. Such opinion does not have a similar effect to say, a judicial conclusion of law as to breach of copyright proceedings; the effect is limited to the refusal of registration. In any case, an appeal de novo lies form the Registrar’s decision to this Court where any error of the Registrar may be corrected.

4. The Opponent must therefore satisfy the Registrar that use of the opposed Trade Mark “would”, not “could”, be contrary to law. In this regard the Opponent relies upon sections 52 and/or 53 (specifically 53(c) and 53(d) ) of the now repealed Trade Practices Act 1974 (‘the TPA’) which stated:

   Section 52. (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive

   Section 53. A corporate shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services-

   …
   (c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;

   (d) represent that the corporation has a sponsorship, approval or affiliation it does not have

5. It is not sufficient if the conduct complained of causes mere confusion or uncertainty in the minds of the relevant public. The relevant standard for section 52 of the TPA is more onerous, being that the conduct must “mislead or deceive”.[17] As already indicated in respect of sections 44 and 60, I am not satisfied that the use of the Trade Mark is likely to deceive or confuse. It follows therefore that, on the stricter test posited by the TPA, use of the Trade Mark is not likely to mislead or deceive. It also follows that, given the differences between the marks which have already been discussed, Trade Mark is unlikely to falsely represent that the Applicant has the approval or sponsorship of the Opponent.

   [17] See for example Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506; (1989) 16 IPR 431 per Hill J at 440-442 and Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 1a IPR 684 per Gibbs CJ at 688.

6. As such, the use of the Trade Mark by the Applicant would breach neither section 52 or 53 of the TPA and the ground under section 42 is not established.

Section 58A

1. Section 58A was also introduced by the Trade Marks Amendment Act 2006 and came into effect at the commencement date of that legislation, 23 October 2006. Unlike the amended section 60 discussed above, section 58A was subject to an application provision (Item 30 of Schedule 1 Trade Marks Amendment Act 2006) which provided that the new ground applies to:

   (a)applications for registration of trade marks made after the commencement of [the provision]; and

   (b)applications for registration of trade marks pending but not accepted at that commencement.

2. At 23 October 2006 the application was “pending but not accepted” and so section 58A may be relied on as a ground of opposition. It provides:

   (1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

   (a) subsection 44(4);…

   …

   (2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

   (a) first used the similar trade mark in respect of: 

   (i) similar goods or closely related services; or

   (ii) similar services or closely related goods;

   before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

   (b) has continuously used the similar trade mark in respect of those goods or services since that first use.

   Note:  For predecessor in title see section 6.

3. The application was accepted under the provisions of subsection 44(4), the Opponent’s registration 722211 having been raised as the basis of a ground for rejection and the Applicant having provided evidence of prior continuous use of the Trade Mark.

4. The Opponent therefore seeks to prove absolute first use, and it does show that it used the trade mark THE PICTURE since 1988. However as discussed previously I do not consider, in the context of the reduced scope of the Applicant’s services, that registration 722211 is deceptively similar to the Trade Mark and it is therefore unnecessary to apply the provisions of subsection 44(4). As such, the ground under section 58A is not applicable.

Decision

1. Section 55 of the Act relevantly provides:

   (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.

2. I find that the ground of opposition under section 41 is established, and that the Applicant has provided evidence of use sufficient for the provisions of subsection 41(5) in respect of the services rental of video production systems and apparatus; rental of screens including digital projection and LED screens; hire of personnel to operate video production systems and apparatus, digital projection screens and LED screens; editing of audio and/or visual recordings including television and radio programs, films, pre-recorded video tapes, cassettes and discs, pre-recorded audio tapes, cassettes and discs, and computer software programs; and provision of information, advice and consultancy in respect of the foregoing.

3. The ground of opposition under section 44 is also established in respect of these services and I am prepared to apply the provisions of subsection 44(4).

4. None of the other grounds of opposition are established in respect of the reduced scope of scope of services.

5. That being the case, I will allow the Applicant one month from the date of this decision to amend its services to rental of video production systems and apparatus; rental of screens including digital projection and LED screens; hire of personnel to operate video production systems and apparatus, digital projection screens and LED screens; editing of audio and/or visual recordings including television and radio programs, films, pre-recorded video tapes, cassettes and discs, pre-recorded audio tapes, cassettes and discs, and computer software programs; and provision of information, advice and consultancy in respect of the foregoing.

6. If the application is so amended, I direct that it may proceed to registration under the provisions of subsections 41(5) and 44(4). In the event that the services are not so amended, I refuse the application in its entirety.

7. If the Registrar has been served with a notice of appeal before that time the registration shall not occur until the appeal has been discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Opponent has made specific submissions in respect of costs, namely that:

   the Registrar should have regard to the Applicant’s conduct in the proceedings as regards compliance with evidence deadlines and the service of the extension applications on the Opponent.

   In particular, it should be noted that the trade mark Applicant failed, on a number of occasions, to serve deadline extension applications on the Opponent. This resulted in additional expense and inconvenience to the Opponent and to IP Australia, with both the Opponent and officers of IP Australia having to spend considerable time on correspondence dealing with these issues.

2. The Opponent then outlines several occasions upon which the Applicant failed to serve extension requests upon the Opponent and upon which the Applicant was the subject of “overdue evidence in answer” warnings from the Registrar. It concludes that “it would be in the public interest for the Applicant to suffer a costs penalty as a result of this pattern of repeated conduct”.

3. I note further the delay caused by the Applicant’s notification, only days before the ultimately cancelled hearing, that it intended to rely on evidence filed during examination but not served in opposition. I therefore have regard to the Opponent’s frustration.

4. The Opponent has had a measure of success in its opposition, in that it has established a case sufficient to significantly reduce the scope of the Applicant’s services. That being the case, and bearing in mind the delays caused by the Applicant’s failure to serve extension requests and it’s last-minute decision to rely upon evidence that could easily have been served much earlier in proceedings, I consider it appropriate to award costs against the Applicant. I therefore award, against the Applicant, the Opponent’s costs in accordance with the official scale.

Nicole Worth
Hearing Officer
Trade Marks Hearings
29 May 2013