Big Screen Video Pty Ltd v Pyramid Circle Holdings Pty Ltd T/a LED Sign Supply
[2016] ATMO 16
•4 March 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Big Screen Video Pty Ltd to registration of trade mark application 1601513 (9) – Big Screen Video logo - in the name of Pyramid Circle Holdings Pty Ltd t/a LED Sign Supply.
Delegate: | Debrett Lyons |
Representation: | Opponent: Margaret Ryan of Phillips Ormonde Fitzpatrick, Patent & Trade Mark Attorneys Applicant: not represented; no written submissions |
Decision: | 2016 ATMO 16 s52 opposition to registration: sections 42(b) and 60 pressed; neither ground of opposition established; opposition unsuccessful; trade mark to be registered. |
Background
1. This is an opposition brought by Big Screen Video Pty Ltd (“the Opponent”) pursuant to section 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark the subject of an application by Pyramid Circle Holdings Pty Ltd t/a LED Sign Supply (“the Applicant”), details of which follow:
Application Number: 1601513
Priority Date: 22 January 2014
Goods:Class 9: Flat screen display apparatus; Large screen video projectors; Liquid crystal display screens; Motion picture screens; Projector screens; Television screens; Video display screens; Video screens; Visual display screens; Light emitting diode (LED) displays; Light emitting diodes (LED); Light emitting diodes (LED) for use in display boards; Light emitting diodes (LED) with plugs; Digital video adaptors for displaying text with video pictures; Video cameras for use in television transmission suites; Video monitors; Video processors; Video projection apparatus; Video projection monitors; Video projectors; Video terminals; Video wall installations; Advertising signboards (luminous); Illuminated advertising signs; Illuminated signs; Illuminated signs used for advertising; Luminous electric signs; Luminous signals for giving information to pedestrians; Luminous signs; Luminous signs for roads; Recording media for video signals; Road signs (luminous); Sign apparatus (luminous, non-mechanical) for roads; Sign apparatus (non-metallic, luminous, mechanical) for roads; Signalling panels, luminous or mechanical; Signals, luminous or mechanical; Signs being illuminated; Signs being luminous; Signs of metal (luminous or mechanical); Signs, luminous; Traffic information panels (luminous signs); Traffic signs (luminous); Advertising display apparatus (electric or luminous); Advertising display signs (electric or luminous); Apparatus for displaying information; Apparatus for displaying picture signals; Computer display apparatus; Computer display monitors; Computer graphics display stations; Display apparatus for use with computers; Display apparatus for use with data processing installations; Display components using illuminated points; Display components using illuminated segments; Display monitors; Display terminals; Display terminals for use with computers; Electric devices for displaying information; Electric or electronic display instruments; Electrical devices for data information display; Electrical displays; Electrically controlled display apparatus; Electromechanical displays for public information; Electronic apparatus for home use with display apparatus; Electronic display apparatus; Electronic display boards; Electronic display panels; Electronic displays incorporating moving lights; Electronic panels for displaying messages; Electronic remote displays; Electronic scoring displays for sports and games; Electronic visual display apparatus for use with computers; Electronic visual display units; Graphic display apparatus (electric); Illuminated electronic moving information displays; Information display apparatus (luminous); Interactive display instruments (electric); Liquid crystal display (LCD) televisions; Liquid crystal display units; Liquid crystal displays; Liquid crystal electronic display modules; Luminous advertising displays; Plasma display apparatus; Roadside display boards (luminous); Score display apparatus (electric); Score display apparatus (electronic); Television display apparatus; Television display apparatus for household use; Television display apparatus for industrial use; Television display apparatus for medical use; Television display apparatus for use with computers; Television display monitors; Television display monitors for household use; Television display monitors for industrial use; Television display monitors for use with computers; Visual display apparatus; Visual display apparatus for reading data; Visual display apparatus for recording data; Visual display apparatus for use with computers; Visual display units; Plasma televisions
(“the Goods”)
Trade Mark:
(“the Trade Mark”)
2. The Trade Mark was examined as mandated by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 12 June 2014.
3. On 8 August 2014 the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. A Statement of Grounds and Particulars was filed on 11 September 2014.
4. On 6 November 2014 the Applicant filed a Notice of Intention to Defend the Trade Mark from the opposition.
5. The Opponent later filed evidence in support of the opposition in accordance with the Trade Marks Regulations 1995 (“the Regulations”). The Applicant did not file any evidence in these proceedings.
6. The Opponent requested to be heard and a hearing was convened in Melbourne on 17 November 2015. I took the hearing as a delegate of the Registrar of Trade Marks. The Opponent was represented by Margaret Ryan, a solicitor with patent and trade mark attorney firm, Phillips Ormonde Fitzpatrick.
7. In accordance with directions I gave in the weeks leading up to the hearing, Ms Ryan provided me with a written outline of the Opponent’s submissions and I have taken these into account, along with the evidence (described shortly) and oral submissions made at the hearing, in reaching my decision.
8. The Applicant was not represented and did not make written submissions.
Grounds of opposition
9. The Opponent relies on the following grounds of opposition listed in the Notice:
Section 42(b) – use of the Trade Mark would be contrary to law; and
Section 60 – because of the reputation of another trade mark in Australia at the Priority Date, the use of the Trade Mark would be likely to deceive or cause confusion.
The Opponent bears the onus of establishing at least one of those two grounds of opposition on the balance of probabilities.[1]
[1]Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132].
I find that other grounds listed in the Notice which were not pressed have not been established.
Evidence
The evidence in this matter is comprised of the following declaration:
Evidence in Support
Brett Delaney, director of the Opponent, made on 8 February 2015 together with Exhibits BD-1 to BD-18 (“Delaney”);
Evidence in Answer
None filed;
Evidence in Reply
None filed.
Discussion and reasoning
Evidence in support
Delaney states that the Opponent was incorporated on 11 July 2008 and that in 2009 it began using the words, “BIG SCREEN VIDEO”, in both plain and stylized form (as to which see further below) in connection with its business of renting trailer mounted LED screens.
Delaney states that from July 2010 use of “BIG SCREEN VIDEO” (in both plain and stylized form), was extended to the Opponent’s enlarged business which then included the provision of fixed LED screens, LED scoreboards and LED signage.
The Trade Mark has been raised as an objection to the acceptance of two later filed trade mark applications made by the Opponent, nos. 1612188 for BIG SCREEN VIDEO logo (shown hereunder) and 1612218 for BIG SCREEN VIDEO (word only and referred to hereinafter as “the Word Mark”), both in respect of the same goods and services in classes 9, 37 and 38.[2]
[2] Class 9: Electric or electronic display screens; Illuminated signs; Flat screen display apparatus; Large screen video projectors; Liquid crystal display screens; Motion picture screens; Projector screens; Television screens; Visual display screens; Light emitting diode (LED) displays; Luminous signs; Computer display apparatus; Electronic display apparatus; Television display apparatus; Visual display apparatus
Class 37: Electrical apparatus installation; Installation of electrical apparatus; Installation of electronic apparatus; Television equipment installation and repair; Repair of sound and vision recording apparatus; Maintenance and repair of electronic apparatus; Repair of electronic apparatus; Electrical apparatus repair; Maintenance and repair of electrical apparatus; Repair of sound and vision reproducing apparatus
Class 38: Rental of apparatus for the broadcast of audio signals; Rental of apparatus for the broadcast of video signals
I note here that Delaney shows use not only of the logostyle mark above, but also variations thereof, most notably where the three words take the same styles and fonts but the words are laid out in a linear manner, rather than being “stacked”. Nothing in particular turns on the use of these different trade marks and hereinafter a reference to “the Logo Mark” includes these variations.
I note here, too, that whilst Delaney also shows use of the Word Mark, in the main the exhibits show the Logo Mark.
Delaney explains that the Opponent’s clients include hoteliers, owners of sporting venues and other businesses, all of whom share a common desire to show images or advertise on a larger than normal scale.
In general terms, that larger scale is achieved by using multiple LED displays in the form of a wall, the displays co-operating to form one larger, composite, image or moving images.
So, for example, Delaney states that in the year 2013 the Opponent supplied screens under the Word Mark and/or the Logo Mark to a number of hotels and other venues or events including the Adelaide Oval, Sydney’s Star Casino (a 55 meter screen), the “Clipsal 500” launch and a KISS Concert at Central Park Sydney (a 37 meter interactive wall).
Delaney states that the Opponent has either its own offices, or a representative agent, in all States of Australia and in the Northern Territory and has used the Word Mark and the Logo Mark throughout Australia since before the Priority Date.
Since 24 August 2009 the Opponent has maintained an active website at A monthly newsletter is sent electronically to over 2000 customers in Australia. A Facebook page and a LinkedIn profile were established before the Priority Date.
Delaney provides evidence that the Opponent has advertised to hoteliers in Hotel SA’s in various 2012 and 2013 editions and has been a sponsor in the Aug/Sept 2013 edition. Further, the Opponent was featured on the cover of Australian Hotelier in its October 2013 edition. It has promoted its goods and services at a range of trade shows directed towards hotels and clubs prior to 22 January 2014.
It is submitted that the service provided by the Opponent is specialized in nature and Delaney gives (confidential) sales and advertising figures from before the Priority Date which are substantial.
The law
It is logical to consider section 60 first. It is reproduced below:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, 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.
Note: For priority date see section 12.
The section requires that I assess the likelihood of deception or confusion resulting from the combined effects of the reputation of the Opponent’s trade marks, the degree of similarity of the trade marks to the applied-for Trade Mark and the nexus of the goods or services.
It follows that section 60 does not depend for its success on any requirement that the parties operate in the same field of business, nor that the compared goods/services be the same, similar or closely related. Nonetheless, it is clear that the likelihood of confusion will depend in part on the proximity of the Goods to the scope of the reputation of the Opponent’s marks.
Proof of reputation is often measured against the words of Kenny J in the case of McCormick & Co Inc v McCormick[3] where her Honour said at [86] that “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.” In that respect I have said that sales and advertising figures from before the Priority Date are substantial.
[3] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192.
Sales and promotional spending has been in respect of the rental and sale of LED screens, signage and scoreboards. I understand and accept the Opponent’s submission that the goods it supplies cater to a niche market and I am mindful of the Federal Court’s observation[4] in Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170 at [75] that:
What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.
[4] albeit in relation to subparagraph 28(a) of the Trade Marks Act1955.
On my reading, the Goods of the application are essentially visual display units, variously described, together with equipment being video projectors, light emitting diodes and video cameras. In my assessment, projectors, LEDs and video cameras are articles closely allied to the various visual display units forming the bulk of the Goods.
To the extent that the evidence shows that the Opponent sells LED screens, I find direct overlap of the Goods with the Opponent’s activities. To the extent that the Opponent’s services are the rental of those goods, there is a direct connection with the Goods. To the extent that the likelihood of confusion might depend on the parties being competitors in business, then I find that this is most likely; whilst there is no evidence from the Applicant, I observe that its trading name is LED Sign Supply.
I come then to the area of difficulty for the Opponent. As I have said, the likelihood of confusion also depends upon the similarity of the trade marks. The Opponent submits that the trade marks are identical. In particular, it submits that
… the Opponent uses the word mark, BIG SCREEN VIDEO, and variations of a logo where the essential feature is BIG SCREEN VIDEO. Except for two parallel lines, the logo contains no material other than these words. When spoken, the Opponent’s logo trade mark is pronounced “Big Screen Video”. This is identical to the words in the Opposed trade mark.
Whether the compared trade marks are identical or similar is, for the purposes of section 60 in this case, less important than the degree to which the inherent character of the words, “big screen video” influences the likelihood of confusion.
Whilst the Trade Mark is in colour I note that the application makes no claim to colour, with the consequence that, if registered, the Trade Mark would be protected for all colours. If I examine the Trade Mark putting colouration aside, there is a geometrical device element of some kind and the word “BIG” is in a fancy script and a larger font size than the other words. As a whole, the mark strikes me as reasonably distinctive despite the entirely non-distinctive words in contains.
The difficulty facing the Opponent is the fact that the only common material between the parties’ marks are words which are entirely descriptive and should be available to all traders in similar goods or services to use for legitimate description. I am mindful of what Hearing Officer Kirov had to say in the case of The BBQ Store Pty Ltd v Plantation Outdoor Kitchens Pty Ltd [2015] ATMO 34 (30 April 2015) at [40 – 43]
40. To the extent that there were a risk of genuine deception or confusion arising from use of the Opposed Mark in light of consumers’ knowledge of the Opponent’s [trade mark], I consider this would in large part be because the Opponent has chosen to trade by reference to a convenient, essentially descriptive, phrase. I agree with Mr Elkington’s submission that the reasoning of the High Court in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd, albeit a case concerning alleged misleading or deceptive conduct, is relevant in this regard. As Mr Elkington explained:
The plaintiff in that case was arguing that the name used by the respondent (Hornsby Building Information Centre) was so similar to the plaintiff’s name (Sydney Building Information Centre) that there was no doubt that members of the public would be deceived or confused [sic] into believing that the two businesses were somehow related. In rejecting this claim, the High Court applied reasoning and reached conclusions which are directly applicable to the present case.
41. In his leading judgment in that case Stephen J had this to say of what was effectively the plaintiff’s claim to exclusive rights in the descriptive phrase “Building Information Centre”:
[21] The use by the [plaintiff] of the three descriptive words was no doubt convenient. It thereby acquired a name which at the same time very clearly described its activities. ...
[22] There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words – “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.
[23]...Given that a name is no more than merely descriptive of a particular type of business, its use by others who carry on that same type of business does not mislead or deceive as to the nature of the business described. Thus both the Hornsby and the Sydney Centres are building information centres and no one is being deceived as to the nature of the service which is available there. Any deception which does arise stems not so much from the Hornsby Centre’s use of the descriptive words as from the fact that the Sydney Centre initially chose descriptive words as its title and for many years thereafter was the only centre in Sydney which answered the description which those words provide.
42. Like the descriptive phrase “Building Information Centre” in relation to a business which provides advice about building, the phrase “The BBQ Store” is on the face of it apt for normal description of a business which sells barbeques. That the opposed application covers “barbeques” in Class 11 rather than, say, “retail and wholesale of barbeques” in Class 35, does not alter this fact. As such some potential confusion between the parties’ businesses, and by extension their respective goods, might be anticipated. However, as Stephen J counselled, the risk “must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words.”
43. To conclude, taking into account the limited use the Opponent’s … Marks appear to have enjoyed both as to range and duration, and taking into account the low inherent distinctiveness of the words “The BBQ Store” effectively claimed as the trade mark underpinning the s 60 ground, I am not satisfied any of the Opponent’s marks had the requisite reputation contemplated by s 60 amongst potential consumers of the Claimed Goods as at the Priority Date. Any deception or confusion arising from use of the Opposed Mark is more likely to be because both parties’ marks incorporate the descriptive words “The BBQ Store” rather than because of any significant reputation attributable to the Opponent’s … Marks.
44. The Opponent has accordingly not established its ground of opposition under s 60.
In my estimation, there is nothing to significantly differentiate the case before me from that considered by Hearing Officer Kirov, other than perhaps the more rarefied market. There can be no argument that the three words, “The BBQ Store” describe a store which sells BBQs. Whilst Ms Ryan pointed out that Delaney uses various terms, such as “LED screens”, “LED scoreboards”, “LED signage”, “BIG screens” “BIG signs” and “LED panels” to refer to the goods of interest, there is no avoiding the fact that the three words, “big screen video”, directly describe the Opponent’s business in the sense that this is essentially what the Opponent rents or sells.
In Registrar of Trade Marks v Woolworths[5] French J said at [50]:
(i) …
(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.
[5] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499.
In the result, the issue is not the quantum of use, nor the relatively rarefied market, it is the lack of inherent adaptation to distinguish in what the Opponent has used, namely,
BIG SCREEN VIDEO and (and variations thereof) in the context of its goods and services.
Put another way, notwithstanding what might be said about the extent of the Opponent’s activities under the Word Mark and the Logo Mark before the Priority Date, the inherent character of those trade marks negatives in my assessment a real and tangible danger of deception or confusion, in the sense that a person who knew of the Opponent’s business and who saw the Trade Mark used in a normal and fair manner in respect of the Goods would be caused to wonder whether those Goods were being offered, sponsored, licensed by, or were otherwise associated with, the Opponent.[6]
[6] See also Watches of Switzerland Pty Ltd v Mappin & Webb Limited [2015] ATMO 23 (27 February 2015); Cars on Demand IP Pty Ltd v Cars on Demand Limited [2014] ATMO 87 (16 September 2014).
I might add a corollary to these findings. It is reasonable to assume that the examiner of the Trade Mark decided that, when considered as a whole, it was acceptable for registration having regard to the stylization of the words together with the device notwithstanding that the only words it contains are on the face of it descriptive of the Goods. The abolition of disclaimers with the coming into force of the Act in 1996 does not alter my view that the Trade Mark would not give the Applicant, upon registration, exclusive rights in the descriptive words “big screen video” alone, but merely in the Trade Mark as it is represented.
The Opponent has failed to establish its ground of opposition under section 60.
The Opponent also pressed section 42(b) of the Act but it can fare no better in this case. I must reject the application for registration of the Trade Mark if its use would be contrary to law. Whether the suggested illegality stems from section 18 or 29(1)(g) and (h) of the Australian Consumer Law 2010[7] or from a breach of the law of passing off, proof of the existence of a misrepresentation in some form is central to all.[8]
[7] Section 18 of which is the prohibition on conduct which is misleading or deceptive or likely to mislead or deceive. Section 29(1)(g) prohibits the making of false or misleading representations that goods or services have sponsorship or approval. Section 29(1)(h) prohibits the making of false or misleading representations that the person making the representation has a sponsorship, approval or affiliation it does not in fact have.
[8] See, for example, Lumley Life Ltd v IOOF of Victoria Friendly Society (1989) 16 IPR 316 Lockhart J at 323-324.
Since the Opponent has not established that the use of the Trade Mark would be likely to deceive or cause confusion in terms of section 60, it follows that neither can it establish that the use of the Trade Mark would “mislead or deceive” under the Australian Consumer Law which is a higher standard[9] or in my view make out the tort of passing off.
[9] See Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited [1982] HCA 44; (1982) 42 A.L.R. 1, per Gibbs C.J. at page 6.
The opposition under section 42(b) is not established.
Decision
Section 55(1) of the Act relevantly provides that, 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.
The opposition has not been established on any ground and so the Trade Mark is to proceed to registration one month from the date of this decision. If, within the time allowed, the decision is appealed final disposition of the Trade Mark will rest with the appellate body.
Costs
The Applicant would ordinarily be entitled to its costs at the scale set out in Schedule 8 to the Regulations but since there has been no submission on costs at this time I make no award.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
4 March 2016
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