Big Day Films Pty Ltd v Big Day Enterprises

[2008] ATMO 63

TRADE MARKS ACT 1995

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

Re:        Opposition by Big Films Pty Ltd to registration of trade mark application 1098413(25, 35) - BIG DAY IN - filed in the name of Big Day In Enterprises.

Delegate:

Debrett Lyons

Representation:

Opponent: Garen Holopikian of Allens Arthur Robinson Patent & Trade Marks Attorneys

Applicant:  No appearance

Decision:

2008 ATMO 63

s. 52 opposition: s. 60 established since the applied for trade mark

is deceptively similar to opponent’s prior trade mark which has a reputation. Opposition succeeds.

Background

1. Big Day In Enterprises (the applicant) made application for a trade mark, current details of which follow:

Priority date	14 February 2006
Goods / Services	Class: 25 Clothing Class: 35 Business administration
Trade Mark

1. The application was accepted for possible registration, but on 15 September 2006 Big Films Pty Ltd (the opponent) filed a Notice of Opposition objecting to registration of the trade mark.

2. The Notice listed virtually all grounds of opposition available under the Trade Marks Act 1995 (the Act) however at the hearing the opponent restricted its grounds to those under sections 42(b), 43, 44, and 60 of the Act.

3. In accordance with the Trade Mark Regulations 1995, the opponent served and filed evidence in support of the opposition, comprising:

   ·a statutory declaration by Sahara Herald Shepherd with Exhibits SHS-1 to SHS-18 dated 10 September 2007;

   ·a statutory declaration by Tara Simone King with Exhibits TSK-1 to TSK-7 dated 13 September 2007; and

   ·a statutory declaration by Nicole Maree Lowes with Exhibits NML-1 to NML-4 dated 8 June 2007.

4. The applicant did not file evidence, nor make any written submissions.

5. The matter came before me, Debrett Lyons, acting as a delegate of the registrar of trade marks, for hearing in Melbourne on 18 June 2008.  At the hearing, the opponent was represented by Garen Holopikian of Allens Arthur Robinson, Patent & Trade Marks Attorneys.  There was no appearance by, or on behalf of, the applicant.

   Submissions and Reasoning

   Onus

6. The opponent bears the onus of establishing its opposition. The opposition will succeed if one ground of opposition is established. The standard of proof is the balance of probabilities (Blount v Registrar of Trade Marks (1998) 83 FCR 50; Rejfek v McElroy (1965) 112 CLR 517 at 521).

   Section 60

7. The application was filed before the amendment to section 60 introduced by the Trade Marks Amendment Act 2006 came into effect on 23 October 2006. As such the pre-amendment version of the section applies (Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 40; Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100 (21 February 2008)). Section 60 stated:

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

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

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

8. Accordingly, the opponent must show that:

   (a) it has a reputation;

   (b) in a deceptively similar trade mark; and

   (c) use of the applicant’s trade mark is likely to deceive or cause confusion.

9. Section 60 requires that the opponent’s reputation be assessed at the priority date of the application, namely, at 14 February 2006. In Roche Products Limited v Hylebut Pty Limited (2007) 74 IPR 551, the Hearing Officer stated at paragraph 34 that :

   Any trade mark that has the capacity to trigger section 60 must be found to have an appropriate level of reputation, and the reputation is, of course, always relevant to the question of the likelihood of people being deceived or confused in all the circumstances.

10. In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193 at 234, Lockhart J said:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

11. In McCormick & Co Inc. v McCormick 51 IPR 102, at 129, Kenny J. stated:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …

12. Under section 60 an opponent does not require a registered trade mark. Nevertheless, it is worth noting that the opponent is the owner of trade mark registration number 787744 for BIG DAY OUT in class 25 for ‘clothing, footwear, headgear merchandise sold bearing the name “Big Day Out”’ and in Class 41 for ‘musical, cultural activities; The Big Day Out is a national touring musical and cultural festival’. That registration has a priority date of 10 June 1998. It also owns trade mark registration number 788463 class 25 for ‘clothing, footwear, headgear’ and in class 41 for ‘entertainment, namely musical performances; musical and cultural entertainment, including the provision of entertainment through musical and cultural festivals’. That registration has a priority date of 16 March 1999 and is for a stylized version of the words, as shown below:

13. Shepherd is the National Event Co‑ordinator at the opponent.  She declares that first use of the trade mark BIG DAY OUT was in 1992 and that the mark has been used continuously since then. 

14. In addition, the opponent has used the trade mark BIG DAY IN.

    Big Day Out

15. Shepherd declares that the words BIG DAY OUT were coined by Kenneth West, the director of the opponent, who organised the first “BIG DAY OUT” music festival in Sydney in 1992.

16. The BIG DAY OUT festival is a 12 hour multi-stage rock and dance festival.  After the first Sydney festival in 1992, the festival expanded to include Melbourne, Adelaide and Perth in 1993, and the Gold Coast and Auckland in 1994.  There was no festival in 1998.

17. I note that the opponent was not formed until 1996.  In other circumstances, a question might arise as to whether the opponent was entitled to rely on reputation generated between 1992 and 1996, but here there is ten years of very clear use of BIG DAY OUT by the opponent itself before the priority date.

18. The BIG DAY OUT festival has attracted many of the best known international popular music performers.  Ticket sales are in the hundreds of thousands each year.  The exact revenue figures from ticket sales are the subject of a confidentiality request, but tens of millions of dollars has been generated for a number of years preceding the priority date.

19. Daily papers, street press and music magazines of each State in Australia have regularly carried advertisements of the BIG DAY OUT festivals.  Extensive poster and billboard campaigns are launched in all major cities and appropriate regional areas in the lead up to the BIG DAY OUT festivals.  The festival is well promoted on various well-known network radio stations each year in the weeks and months before the events.

20. Footage of the BIG DAY OUT festivals is often shown on major free to air television networks including as extended pieces such as those on the Australian Broadcasting Corporation’s music shows for example ‘Rage’ and ‘jtv Saturday’. 

21. The Lowes declaration exhibits various archive newspaper articles obtained from a press service, all from before the priority date.  The following are extracts from some of those articles.

    ‘With 250,000 people attending, it had grown into one of the World’s largest music festivals.  There was talk of a second Big Day Out in Auckland, Melbourne and Sydney, and of expanding into South Africa’ (The Age 27 January 2001).

    ‘The Big Day Out is clearly the most recognised brand, having cornered the alternative music market in Australia when it made festivals trendy again 10 years ago.  Crowd numbers have grown roughly 5‑fold to well over 250,000 people since 1992.  Likewise, ticket sales have steadily increased to around $20 million this year.  One music insider estimated it made a profit of $3 million to $5 million’ (The Sydney Morning Herald, 2 April 2002).

    ‘Undoubtedly the mother of all festivals is the BIG DAY OUT, an Australia Day institution that will enter its 14th year with next January’s show.  As ever, its line‑up boasts some absolute crackers’ (The Sydney Morning Herald, 5 October 2004). 

22. The evidence shows that the reputation of the BIG DAY OUT festival is immense.  The evidence also shows that the words BIG DAY OUT act as a trade mark and have constantly been used in association with various goods and services provided by the applicant, or under its licence and authority.

23. Shepherd declares that the opponent’s “business involves hiring of bands and performers to appear at the BIG DAY OUT festivals for monetary consideration.  It also involves the licensing of merchandise such as clothing, caps and CDs, and managing the radio and television rights for the festivals and for the BIG DAY IN television shows”.

24. Shepherd goes on in greater detail to explain that the opponent has provided business and business administration services since its inception.  Those services include:

    ·providing an opportunity to the bands and performers it hires for them to enhance their reputation;

    ·providing the bands and performers it hires with royalty streams from songs  included on the CDs which are produced annually following the festival performances;

    ·advice to prospective licensees of its BIG DAY OUT merchandise, involving the preparation of detailed business plans and projections to prospective licensees as to matters such as demographics or prospective customers and likely sales volumes of merchandise; and

    ·managing the various royalty streams and returning the relevant income streams to those licensees.

25. Merchandise including clothing has been sold under the BIG DAY OUT trade mark since 1992. Again, the exact figures are the subject of a confidentiality request, but sales of clothing bearing the BIG DAY OUT trade mark between 2001 and the priority date are in the many millions of dollars. 

26. The Shepherd declaration exhibits many examples of the items of clothing bearing the BIG DAY OUT trade mark which have been made under licence by various manufacturers since 1992 for retail sale by the opponent.  There are various forms of clothing and headwear.

    Big Day In

27. The opponent asserts common law rights in the trade mark BIG DAY IN by reason of use since 1995.

28. Tara Simone King is the General Manager of XYZnetworks’ music channels which includes Channel [V].  King declares since 1995 Channel [V] has travelled to every BIG DAY OUT festival for the reason that the opponent to authorized Channel [V] to use the trade mark BIG DAY IN in relation to its broadcast of the BIG DAY OUT concert performances, artist interviews and exclusive behind the scenes action.  King explains that the trade mark BIG DAY IN is used “for audiences who were either unable to attend a BIG DAY OUT festival, or to attendees who want to relive the festival with an experience akin to being at the festival, but in their own living room.”

29. King declares that in 2005 and 2006 Channel [V] broadcast an interactive BIG DAY IN special for FOXTEL and AUSTAR digital subscribers.  Those broadcasts, and/or excerpts from them, were also syndicated to other media including free‑to‑air television networks/stations.

30. King provides evidence of selected excerpts of Channel [V]’s BIG DAY IN television coverage of the BIG DAY OUT festivals from 2002 to 2007, together with examples of television advertisements aired on FOXTEL and AUSTAR promoting the BIG DAY IN broadcast from 2005 to 2006.

31. King also exhibits to her declaration a Channel [V] BIG DAY OUT publicity plan for November 2005 to February 2006 and a BIG DAY IN marketing plan for 2006 where the trade mark BIG DAY IN is used throughout the documents.  Exhibited are Channel [V] media releases for the BIG DAY IN broadcasts from 2005 and 2006.

32. Since 1997, Channel [V] has advertised the BIG DAY IN broadcast via the internet including on its website located at King refers to an article that partly states that ‘…The Big Day Out coverage will then culminate on Saturday February 11th [2006] with the Big Day In, a 48 hour broadcast split across 4 screens, making it the most comprehensive single presentation of a concert performance on Australian television!’.

33. Much of the evidence given by King is corroborated by Shepherd in her declaration.

    Deceptive similarity

34. For reasons which emerge, it is not necessary to made any findings on the question of whether the opponent’s use of BIG DAY IN (either as a plain word mark, or in any of its various stylizations which have mimicked use of BIG DAY OUT) is use of a substantially identical trade mark to that of the application.

35. The definition of “deceptively similar” in section 10 of the Act is:

    For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

36. In Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 French J said of deceptive similarity:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd

    (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set

    out a number of propositions which have frequently been quoted and

    applied to the 1955 Act. The essential elements of those propositions

    continue to apply to the issue of deceptive similarity under the 1995 Act.

    Applied also to service marks and absent the imposition of an onus upon

    the applicant they may be restated as follows:

    (i)       To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

    (ii)      A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii)     In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv)     The rights of the parties are to be determined as at the date of the application.

    (v)     The question of deceptive similarity 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) 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.”

37. The evidence shows that, at the priority date, the opponent enjoyed a huge reputation in the trade mark BIG DAY OUT.  There is ample evidence that the trade mark had been used in connection with an array of services which could be described as “business administration”.  There is an abundance of evidence that the trade mark had been used for many years on a wide range of clothing and that sales of clothing bearing the trade mark had been very significant.

38. The evidence also shows that, at the priority date, the opponent enjoyed a lesser, but still substantial, reputation in the trade mark BIG DAY IN.  That reputation does not in my opinion extend to clothing but it does enjoy the springboard effect of the opponent’s reputation in BIG DAY OUT and at the very least is established over a broad range of entertainment services.  It shows that at the priority date of the application, the BIG DAY OUT trade mark was mentally associated in the public mind with the BIG DAY IN trade mark.   Moreover, quite apart from the opponent's use of the BIG DAY IN trade mark, there is a strong associative force between the trade marks BIG DAY OUT and BIG DAY IN.

39. Applying the criteria set out above from the Woolworths case, I have no doubt that the trade mark is likely to cause confusion since its use would result in a substantial number of people wondering whether the products come from the same source, or whether the products are related to the services, or whether the services are offered by the same enterprise.

    Decision

40. Section 55 of the Act provides:

    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.

41. The opponent having established one of its grounds of opposition, I refuse to register the trade mark.

    Costs

42. I direct that the applicant pay the opponent’s costs according to the official scale.

    Debrett Lyons

    Hearing Officer

    Trade Marks Hearings

    187 July 20086