Black Dog Institute v Black Dog Ride Pty Ltd

[2016] ATMO 66

TRADE MARKS ACT 1995

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

Re:      Opposition by Black Dog Institute to registration of trade mark application no(s) 1497671 (41) – BLACK DOG RIDE – and 1531329 (25) – BLACK DOG RIDE -  filed in the name of Black Dog Ride Pty Ltd.

AND

Re:      Opposition by Black Dog Ride Pty Ltd to registration of trade mark application no. 1549979 (35, 36, 41, 44) – BLACK DOG - filed in the name of Black Dog Institute.

Delegate:

Bianca Irgang

Representation:

Black Dog Ride Pty Ltd: Mr Chris Round of  K&L Gates

Black Dog Institute: Mr Angus Lang of counsel instructed by Holman Webb Lawyers

Decision:

2016 ATMO 66
s.52 opposition: cross opposition.
1497671 and 1531329: trade marks not substantially identical to the opponent’s trade marks – opponent established market presence but failed to demonstrate the there was likely to be any deception or confusion in the marketplace due to reputation – no evidence to establish bad faith - no ground of opposition established.
1549979: evidence not sufficient to establish the section 41 ground of opposition – no ground of opposition established.

Background

1.     Black Dog Ride Pty Ltd (‘BDR’) filed trade mark application numbers 1497671 and 1531329 on the dates shown below in classes 41 and 25 respectively of the International Classification of Goods and Services. Current details of the applications are set out below.

Trade mark:  

Trade mark application:      1497671

Filing Date:  21 June 2012

Specification:  Class 41: Organising charitable fundraising events being the provision of entertainment, sporting and cultural services

Trade mark:  

Trade mark application:      1531329

Filing Date:  13 December 2012

Specification:  Class 25: Hats; clothing

Endorsements:  Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied

2.     The applications were accepted for possible registration and the official notice of acceptance for each trade mark was published in the Australian Official Journal of Trade Marks. Subsequently Black Dog Institute filed Notices of Intention to Oppose registration of the applications followed by statements of grounds and particulars which taken together constitutes the Notices of Opposition.

3.     On 4 April 2013, Black Dog Institute (‘BDI’) filed trade mark application 1549979 in classes 35, 36, 41 and 44. Current details of the application are set out below.

Trade mark:  BLACK DOG

Trade mark application:      1549979

Filing Date:  4 April 2013

Specification:  Class 35: Charitable services, namely organising and conducting volunteer programmes and community service projects

Class 36:Charitable fundraising

Class 41:Education and training services in relation to mental health services including provision of educational services in relation to mental health services and training of professionals in relation to mental health services

Class 44:Charitable services, namely providing medical services; psychological; psychiatric: provision of mental health services, including counselling and psychological care, research into causes and treatments

Endorsements:  Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied.

4.     The application was accepted for possible registration and the official notice of acceptance was published in the Australian Official Journal of Trade Marks on 3 October 2013. Subsequently BDR filed a Notice of Intention to Oppose registration of the application followed by a statement of grounds and particulars which taken together constitutes the Notice of Opposition.

5.     I heard the cross oppositions in Canberra as a delegate of the Registrar of Trade Marks on 1 June 2016. BDR was represented by Mr Chris Round of K&L Gates. BDI was represented by Mr Angus Lang of counsel instructed by Holman Webb Lawyers.

Evidence

6.     The evidence provided in these matters is voluminous so I will list the declarations made in respect of each opposition separately.

Trade Mark Application no. 1497671

7.     The evidence provided with regards to trade mark application no. 1497671 consists of the following declarations:

Evidence in Support

·Statutory declaration of Grant Hansen made of 20 June 2013 and exhibits GSH-1 to GSH-2;

·Statutory declaration of William Bonney[1] made on 22 May 2013 and exhibit WB-1

[1] To be referred to as ‘Bonney 1’

Evidence in Answer

·Statutory declaration of Stephen Andrews[2] made on 2 October 2013 and annexures SA-1 to SA-39

Evidence in Reply

·Statutory declaration of William Bonney[3] made on 17 January 2014 and exhibits WB-1 to WB-12

·Statutory declaration of Fleur Mortimer made on 18 February 2014 and exhibits FM-1 and MF-2;

·Statutory declaration of Grant Hansen made on 18 February 2014 and exhibit GSH-1

[2] To be referred to as ‘Andrews 1’

[3] To be referred to as ‘Bonney 2’

Trade Mark Application no. 1531329

8.     The evidence provided with regards to trade mark application no. 1531329 consists of the following declarations:

Evidence in Support

·Statutory declaration of Gayle McNaught made on 11 September 2014 and annexures GM1 to GM9;

·Statutory declaration of Gayle McNaught made on 30 September 2014 and annexure GM1 and GM2;

·Statutory declaration of Grant Stahl Hansen made on 30 September 2014 and exhibit GSH-1

Evidence in Answer

·Statutory declaration of Stephen Andrews made 24 November 2014 and exhibits SA-1 to SA-6

Evidence in Reply

·Statutory declaration of Kerrie Hayward made on 31 March 2015;

·Statutory declaration of Philip Joseph made on 31 March 2015 and exhibits PJ1 to PJ8;

·Statutory declaration of Christopher Rule made on 1 April 2015 and exhibits CR1 and CR2;

·Statutory declaration of Richard Harry made on 1 April 2015;

·Statutory declaration of Philip Mitchell made on 1 April 2015;

·Statutory declaration of Louise Bavin[4] made on 1 April 2015 and exhibit LB1;

·Statutory declaration of Dawn O’Neil made on 1 April 2015;

·Statutory declaration of Kate Farquarson made on 2 April 2015 and exhibit KF1;

·Statutory declaration of Grant Hansen made on 7 April 2015 and exhibits GHS1 to GHS2;

·Statutory declaration of Louise Bavin[5] made on 7 April 2015 and exhibit LIB1 and LIB2;

·Statutory declaration of Konrad Gawlik made on 7 April 2015.

[4][4] To be referred to as ‘Bavin 1 declaration’

[5] To be referred to as ‘Bavin 2 declaration’

Trade Mark Application no. 1549979

9.     The evidence provided with regards to trade mark application no. 1549979 consists of the following declarations:

Evidence in Support

·Statutory declaration of Christopher John Round made on 6 February 2014 and exhibits CJR-1 to CJR-8.

Evidence in Answer

·Statutory declaration of Peter Joseph made on 8 May 2014 and annexures PJ-1 to PJ-4.

Evidence in Reply

·Statutory declaration of Stephen of Andrews made on 9 July 2014 and exhibits SA-1 to SA-3.

Discussion

BDI’s Evidence

10.     A broad overview of BDI’s evidence and its history can be found in Bonney 1. Mr Bonney states that BDI was established in February 2002 when the Mood Disorders Unit of the Prince of Wales Hospital changed its name to Black Dog Institute. A brief time line of the history of BDI is listed below:

·2002, BDI conducted 28 accredited education programs to GPs, psychologists, counsellors and youth workers.

·2003, BDI commenced its charitable fundraising through grant programs conducted by bodies such as the Nation Health and Medical Research Council, the Department of Health and Ageing and Beyond Blue.

·2004, BDI launched its website which had 56,000 hits for November of that year and this grew rapidly over the coming years according to Bonney 1. BDI has also made considerable submissions regarding the Black Dog Institute writing competition which also commenced 2004.

·2005, BDI appeared on television and continued to do so in the coming years.

·2006, BDI had bookstands in public libraries and commenced publication of a number of books and other materials which were available across Australia. These publications include, “Tracking the Black Dog” in 2006, “Journeys with the Black Dog” in 2007, “Mastering Bipolar Disorder” in 2008, “Navigating Teenage Depression: A guide for Parents and Professionals” in 2009, “Tackling Depression at Work: A Guide for Employees and Managers” in 2010 and “Tackling Depression Growing Older: A Guide for Professionals and Carers” in 2012.

·2007, BDI was featured in print and media nationally and the evidence demonstrated multiple examples of this from 2007 until 2012 (Annexure A accompanying Joseph 2).

·2008, BDI commences some notable fundraising initiatives such as a walk by rugby league personality Andrew Johns. “Zoo2Zoo” bike rides in 2009, 2010, 2011 and BDI commenced holding gala dinners from 2009.

·2009, BDI gave permission to BDR to use a link to BDI’s website upon which BDI’s logo appears. Discussions between the parties concerning BDR’s next scheduled charity fundraiser ride also took place but agreement concerning the level of financial support was not reached.

·2010, BDI supported the BDR event and BDR raised around $80,000 which was donated to BDI.

·2011 and 2012 also saw BDI supporting the BDR charity fundraising rides.

·2012, The Today Show television program incorrectly advertised the BDR fundraising ride as being a BDI event and advised viewers of the BDI website they could go to in order to make donations.

·11 December 2012, relations between BDI and BDR broke down when BDI decided to support a fundraising event called “Black Dog Ride to Happiness” which would be held in Bhutan in 2013.

·11 December 2012 until February 2013, BDI and BDR continued to be in discussion at the same time that BDR was proposing to have another BLACK DOG RIDE charity event which was not associated with BDI and ‘did not benefit Black Dog Institute’ according to BDI. BDI states that confusion between BDI and BDR arose immediately when “GoFundraise” incorrectly made BDI a beneficiary of the “One Day Black Dog Ride” event when BDI was not a beneficiary.

11.     In addition to the above information, BDI has elaborated on a number of other instances of confusion between the parties over the next few years[6]. This includes an instance of confusion in July 2014 when the Hon Jai Rowell MP, contacted BDI to ask how he could become involved in BDR’s BLACK DOG RIDE.

[6] Bonney 2

BDR’s Evidence

12.     Andrews 1 states that BDR primarily organizes and carries out charitable motorcycle rides to raise awareness of depression and suicide prevention. The first of BDR’s charity fundraising rides where it used its Black Dog Ride trade make took place on 26 July 2009 and raised $34,232.80 for the Suicide Call Back Service. BDR’s evidence demonstrates that it has organized 11 charity fundraising rides and raised over $1.7 million for mental health services.

13.     Andrews 1 explains how BDR adopted their BLACK DOG RIDE trade marks and states that BDR was created in 2008 by Mr Andrews following the suicide of a close friend. Mr Andrews states that he wanted to raise awareness of depression following this tragic event and that he developed the name BLACK DOG RIDE after researching depression and coming across Winston Churchill’s well known phrase ‘Black Dog’ when referring to battles with the mood illness.

14.     Mr Andrews states that prior to the oppositions, BDR and BDI had a strong working relationship where BDR selected BDI to be the recipient of the funds raised from some of the charitable rides BDR organized.  On 23 May 2009, Mr Andrews contacted BDI to ask for permission to link BDI’s website from BDR’s website so that BDR’s followers could learn more about depressive illness and get help when they needed it. BDI agreed to this. After BDR’s 2009 charity event, Mr Andrews again contacted BDI with respect to partnering with BDI so that the 2010 BDR event would raise funds and awareness for BDI. Mr Andrews points out that this second approach he made to BDI was well received and that Ms Miller noted to him at the time that BDI had plans to take its service nationally. BDR suggests that this indicates that BDI was based in NSW at the time and did not have a national presence.

15.     Mr Andrews states that the relationship between BDI and BDR was formalized and continued from the 2009 charity event until the 2012 Black Dog Ride to the Red Centre. According to Mr Andrews, BDR raised almost $500,000 for BDI over the course of those years. On 20 November 2012, BDI gave Mr Andrews an award for all BDR’s generous support of BDI.

16.     Mr Andrews also confirms what BDI has stated. Namely, that the relationship between BDR and BDI deteriorated after BDR became aware of BDI organizing an event called the “Black Dog Ride to Happiness” and what BDR argues was the subsequent behavior of BDI to exclusively own the phrase “Black Dog”.

17.     I heard the cross oppositions at the same time. In deciding the matters I consider it appropriate and convenient to deal with the opposition against trade mark applications 1497671 and 1531329 for the stylised words BLACK DOG RIDE first.

Section 52 Opposition against Trade Mark Application 1497671 and 1531329

18.     The Notice from BDI in regards to trade mark application no. 1497671 nominated those grounds of opposition under s 43, 58, 60 and 62A the Act.

19.     The Notice from BDI in regards to trade mark application no. 1531329 nominated those grounds of opposition under s 43, 60 and 62A the Act.

20.     The onus is upon BDI to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[7]

[7] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

Ownership – section 58

21.     Section 58 of the Act provides:

Applicant not the owner of the trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

22.     Ownership of a trade mark may arise in two different ways – by statute at the filing of an application to register that trade mark[8] for particular goods or services[9], or at common-law by the use of that trade mark on the particular goods or services or goods and services which are the same kind of thing.  The owner of the trade mark is the person who first uses it, or first files the application, whichever is the earlier. For the purposes of demonstrating ownership the first use need only be a small amount[10].

[8] Or one substantially identical to it: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413

[9] Being ‘the same kind of thing’ Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75 at 639-40

[10] Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, 600 ( per Jacobs J).

23.     This ground of opposition has only been raised in respect of trade mark application no. 1497671 BLACK DOG RIDE. It must first be determined if BDI has used an identical or substantially identical mark to BDR’s trade mark BLACK DOG RIDE.

24.     BDI is the registered owner of one trade mark with an earlier priority date to the opposed trade mark applications. BDI’s registered trade mark is:

(TM no. 898534 ‘the silhouette logo’)

25.     However, since the oppositions commenced BDI has applied for and obtained registration of two additional trade marks being:

26.      

Black Dog Institute

( TM no. 1549984)

(TM no. 1549988)

27.     I find that the earlier registration no. 898534 is not substantially identical to the opposed BLACK DOG RIDE trade mark, and therefore use of that trade mark cannot be relied upon to establish the ground under section 58. The test for substantial identity is that the trade marks are:

compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.”[11]

[11] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 per Windeyer J at 414

28.     A total impression of dissimilarity arises from BDI’s silhouette logo when compared to BDR’s stylized Black Dog Ride trade mark. The same applied in respect of 1549988 and I also note that BDI can demonstrate earlier use of its trade mark comprising the words BLACK DOG INSTITUTE. However, a side by side comparison of those trade marks also reveal some striking and memorable differences:

Black Dog Institute

29.     Both of the above trade marks do contain the words BLACK DOG but also a third and differing word being INSTITUTE and RIDE respectively. Both of these additional words are not to be discounted or ignored as it is the whole of the trade mark which must be considered. I also note that the word INSTITUTE is a striking term which changes the entire meaning or impression of the trade mark to being something completely different from BLACK DOG RIDE and only adds to the impression of dissimilarity between the trade marks. I find that BDI’s BLACK DOG INSTITUTE trade mark is not substantially identical to the opposed trade mark.

30.     Mr Lang, Counsel for BDI, states that BDI has also used another trade mark at common law being the words “Black Dog” solus. He argues that BDI’s use of the words BLACK DOG in relation to charitable events before the priority date of the opposed application is sufficient to establish the section 58 ground of opposition as the trade marks BLACK DOG and BLACK DOG RIDE are substantially identical. Mr Lang states they are substantially identical because the word RIDE in the opposed trade mark application is purely descriptive as it describes a charitable event, a ride, which is the subject of the specified services.

31.     However, I do not agree with BDI. As mentioned earlier, the word ‘RIDE’ within the opposed trade mark is not to be discounted or ignored. While it has the potential to describe a ‘ride’ there are many different ‘rides’ it could potentially refer to in the context of the trade mark including those type of rides found at fairs or amusement parks. I also note that the specification of services includes all ‘organising charitable fundraising events being the provision of entertainment, sporting and cultural services’ which is in no way limited to car, motorbike, bicycle and/or horse rides. Since there is also some degree of association of the phrase ‘BLACK DOG’ with services relating to mood disorders, the word RIDE takes greater prominence in differentiating the trade marks than might be for the a phrase that is utterly unique.

32.     There is nothing before me which suggests that ‘RIDE’ is completely descriptive of the services claimed in the specification, indeed, the word RIDE appears to be quite striking for the organization of charitable fundraising events. The word RIDE may suggest to people that the organizing of the charitable events may include a ride of some shape or description but there is no way of knowing what type of ride it may be or potentially, if actual black canines are involved. I am not satisfied that the word RIDE is descriptive of the services claimed. It is a step removed from being descriptive of the organizing of charitable events. Nor am I satisfied that the word RIDE in the opposed trade mark should be ignored for the purpose of comparing the trade marks to determine if they are substantially identical.

33.     Even if I were to accept that BDI had used the words ‘BLACK DOG’ solus as a trade mark prior to the first use demonstrated by BDR, then placing the trade marks side by side for a comparison reveals a number of differences which preclude my finding them substantially identical.

Black Dog

34.     The addition of the word RIDE to BDR’s trade mark precludes the respective trade marks from being substantially identical. Therefore, the opponent has failed to establish the section 58 ground of opposition in relation to trade mark application no. 1497671.

Section 60 - Reputation in Australia

35.     Section 60 of the Act provides:

60 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.

36.     Unlike other sections of the Act, section 60 does not require that the goods and services upon which BDI uses its trade marks be of a specified standard of similarity to the goods and services of interest BDR, nor is there a requirement that the trade marks be substantially identical or deceptively similar. It is for me to determine whether BDI has established that before 21 June 2012 and 13 December 2012 respectively its various trade marks such as BLACK DOG INSTITUTE and the silhouette logo were recognized by the public generally, or at least by a significant number of persons in the marketplace for organization of charity fundraising events and whether because of that, the use by BDR of its trade marks on the goods and services listed in trade mark application nos. 1497671 and 1531329 would be likely to cause the public confusion.

37.     In relation to reputation Kenny J states in McCormick & Co Inc. v McCormick[12]:

In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 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.

[12] 51 IPR 102, at 128

38.     At 129 Kenny J continues:

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:…

39.     The amount of money spent on marketing and promotions including fundraising costs that BDI has engaged in since its inception in 2002 until June 2012 is relatively modest considering that the amount listed in the Bonney 1 declaration is the total spent in a decade. However, the table provided in Bonney 1 declaration does demonstrate an ongoing increase in promotional spending with a significant increase in expenditure in 2009. I note that the amount spent on the promotion of its fundraising activities over the years from 2007 until 2012 (figures for earlier are not before me) fluctuates considerably. The details of sales of BDI’s various books in exhibit WB-1 accompanying the Bonney 1 declaration demonstrate reasonable sales across Australia.

40.        I also note a number of news articles published over the course of the years which relate to BDI and the work they do (tab 20 in exhibit WB-2 accompanying Bonney 1 declaration). These news articles all distinctly mention BDI in complimentary terms. BDI also trains health professionals ranging from interactive workshops, presentations, lectures and training programs to attending national and international conferences. According to Mr Bonney, in 2011 BDI delivered 162 seminars, presentations and workshops that reached over 10,000 individual participants. The 2011 annual report for BDI contained in WB-1 accompanying the Bonney 1 declaration provides additional details of all the training that BDI engaged in. Overall, I am satisfied that BDI had a reputation in Australia for its BLACK DOG INSTITUTE and silhouette logo trade marks in relation to health professionals and training/education for mood disorders before the priority dates of the respective BDR trade marks. However, I now need to determine if because of this reputation use of BDR’s trade marks would be likely to deceive or cause confusion.

Likelihood of confusion and deception in the marketplace

41.     To this end, BDI has put into evidence a number of instances where there has been confusion in the Australian marketplace between BDR and BDI. Notably, Mr Bonney provides evidence that on 13 February 2013, GoFundraise contacted BDI to apologise for incorrectly making BDI a beneficiary of the One Day Black Dog Ride event in March 2013. According to Mr Bonney, GoFundraise assumed the BDR event supported BDI and that there were 12 fundraisers registered to support BDI instead of BDR. The Bonney 2 declaration outlines seven additional instances of confusion that occurred in April 2013 and August 2013 (exhibits WB8 to WB12 accompanying the Bonney 2 declaration) although I note that three of the instances of confusion are in relation to a single article which appeared in the Caboolture Shire Herald on 16 April 2013 which appears to have misquoted an earlier article published in The Courier-Mail on 11 April 2013 as both articles contain the quote “Losing two brothers…has prompted one Kilcoy man to get behind Angry Anderson’s Black Dog Institute”. As Angry Anderson is an ambassador for BDR it is clear that this quote is an error and has been duplicated by one or other of the articles. I acknowledge that all these instances of confusion have occurred after the filing date of the applications.

42.     While I do not doubt that BDI does have a reputation in its BLACK DOG INSTITUTE trade marks in the field of health professionals, training and education, I do not believe that the instances of confusion before me are attributable solely to BDI’s reputation or that BDI’s reputation is so great that a significant number of the consumers of charitable and fundraising activities – arguably all Australians – would become confused and be caused to wonder whether there was a connection between the BDI’s services and those goods and services of BDR bearing the opposed trade marks.

43.     Winston Churchill is famously associated with using the phrase ‘black dog’ to refer to his bouts with depression. The term ‘Black Dog’ is now an expressive metaphor and common parlance when referring to or describing depression. According to the evidence of both BDI and BDR, ‘Black Dog’ is very much a part of the terminology used in relation to mood disorders, especially depression and both parties have actively engaged in promoting awareness of the allusory meaning of the term within Australia.

44.     Therefore, I am faced with the situation where two parties, both significantly involved with promoting mental health and awareness of depression and who engage in fundraising within Australia, have adopted the allusory term BLACK DOG as the prominent element at the beginning of their respective trade marks. Both parties were also formally linked together in a mutually and well publicized partnership to raise funds for depression and mental health. Given these facts, I am not overly surprised that there have been instances of confusion experienced by the parties once that relationship deteriorated without fanfare at the end of 2012.

45.     While I do not doubt that BDI has a reputation in its trade marks, I am not satisfied that BDI has established on the balance of probabilities that due to its reputation the average consumer would become confused and be caused to wonder whether there was a connection between the BDI’s services and those goods and services of BDR bearing the opposed trade marks. I believe that the cases of confusion brought to my attention are the result of other factors such as:

·Both BDI and BDR adopting a term which was made famous in relation to mental health by Winston Churchill before either party existed;

·Both parties promoting and educating the Australian public as to the allusory meaning of BLACK DOG and its association with Winston Churchill in relation to mental health;

·Both parties having a mutually beneficial relationship with each other which was well publicized for three years and culminated in an award from BDI being presented to Mr Andrews of BDR in December 2012;

·The deterioration of the relationship in late 2012 and early 2013 which attracted no media coverage.

46.     The above factors indicate that far more factors than BDI’s reputation in its trade marks have contributed to the few instances of confusion brought before me. On the face of it, the instances of confusion before me appear to arise from the fact that both parties adopted a striking and allusory term which they both effectively made use of when publicizing their respective services and events in relation to depression which has only strengthened the association of the words BLACK DOG with depression in the mind of the Australian public. Both parties also had a well-publicized relationship and the Australian public, or at least those more astute consumers who were aware of the relationship between the two parties, continued to believe that relationship was in place when it no longer was.

47.     Any confusion that has resulted in this matter is not, in my view, due to a reputation in a trade mark owned by BDI. I am also not satisfied that BDI has demonstrated that use of BDR’s trade marks would be likely to cause confusion and deception in the marketplace. While BDI does have a reputation in its services within the mental health community, I am not satisfied that the average Australian consumer, to which clothing and fundraising services are directed, is likely to be aware of the BDI and become confused when faced with the BDR trade marks.  I therefore find that section 60 of the Act has not been established in relation to either of the opposed trade marks.

Section 43 – Trade mark likely to deceive or cause confusion

48.     Section 43 of the Act states:

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

49.     It is well established that to make out this ground of opposition there would need to be some connotation inherent in the opposed trade marks such that use of the trade marks is likely to deceive or cause confusion.  In Winton Shire Council v Lomas,[13] for example, Spender J said:

Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.

[13] (2002) 56 IPR 72 (at [19])

50.     In Pfizer Products Inc v Karam[14], to take a further example, Gyles J put it this way:

‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of some similarity with other marks…

[14] (2006) 70 IPR 599 (at [53])

51.     Mr Lang’s submission was that:

…the use of the mark BLACK DOG RIDE in relation to the organization of charitable events has the connotation of a charitable ride which is organized by the well-known entity Black Dog Institute.

52.     As these submissions depend ultimately on a comparison of the trade marks under consideration, they cannot succeed.

53.     The opposition ground based on section 43 of the Act is therefore not established in regards to either of the opposed trade marks.

Section 62A – Application made in bad faith

54.     Section 62A of the Act provides:

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

55.     Bennett J in DC Comics v Cheqout Pty Ltd[15] considered bad faith and endorsed the approach taken by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2) [16], wherein her Honour commented:

Bad faith, in the context of s62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

The formulation in the United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison [Harrison’s Trade Mark Application [2005] FSR 10, in which the “combined test” of bad faith was said to involve both subjective and objective elements].

Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character…

The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.

[15] [2013] FCA 478; (2013) 101 IPR 334.

[16] [2012] FCA 81; (2012) 94 IPR 551, at [164].

56.     I am not persuaded that BDI has discharged the onus of establishing that BDR, as at the priority dates, applied for the BLACK DOG RIDE trade marks in bad faith, in the sense that in all the circumstances, persons adopting proper standards would regard the decision to register as in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.

57.     Mr Andrews states that BDR adopted its BLACK DOG RIDE trade marks in 2008 after researching depression and coming across Winston Churchill’s well known phrase ‘Black Dog’ when referring to battles with the mood illness. BDR then commenced using its BLACK DOG trade marks on its charitable fundraisers and clothing and raised considerable funds for BDI over the course of three years. Over the course of those three years, I note that BDI had no objection to BDR using the BLACK DOG RIDE trade marks and did indeed present Mr Andrew with an award in December 2012 to thank BDR for all its support. BDI did not suggest through the course of that association that BDR should use a different trade mark. The break down in the relationship between the parties occurred around late December 2012 and early 2013 which is after the priority date of the first trade mark application.

58.     Mr Lang argued that Mr Andrews stated on 11 December 2012 he became aware that BDI was organizing a motorcycle fundraising event called “Black Dog Ride to Happiness”. Mr Lang points out that Mr Andrews states he raised concerned he had about this with BDI on 11 December 2012 at 2:59pm and that the precision of the timing in this statement suggests the sending of an email which is not in evidence.

59.     Mr Lang argues that regardless of this correspondence, that Mr Andrews did not advise BDI that BDR was going to file the further trade mark application no. 1531329. Mr Lang states that this behavior is not in keeping with section 62A as given that Mr Andrews had previously approached BDI for permission to be associated with BDI for his fundraising rides, and given that he was aware that BDI itself used the words BLACK DOG RIDE TO HAPPINESS (which I note BDI did not advise BDR of), and that Mr Andrews was suggesting that BDI should not use those words, it is, according to the ordinary standards of commercial conduct, incumbent upon Mr Andrews to notify BDI of his intention to register a further trade mark.

60.     I do not agree with Mr Lang’s reasoning. There is nothing in evidence before me which suggests that BDR applied for its trade mark applications in bad faith. BDR had been using its trade marks since 2009 and BDI had been aware of this usage and had not asked BDR to cease using its trade marks. Indeed, it is clear that BDI was fully aware of BDR using its BLACK DOG RIDE trade marks on the services of organizing charitable fundraising events (of which BDI was a recipient of funds raised) and the clothing that those supporters purchased and wore. BDR simply applied for a trade mark that it had been using since 2009. The questionable behavior in this situation surrounding the use of a ‘BLACK DOG RIDE’ trade mark does not appear to be on BDR’s behalf. BDI has not established the section 62A ground of opposition in regards to either trade mark.

61.     BDI has not established any of the grounds of opposition it pursued in respect of trade mark applications 1497671 and 1531329. Therefore I turn to BDR’s opposition to trade mark application no. 1549979.

Section 52 Opposition against Trade Mark Application 1549979

62.     Now I consider the section 52 opposition brought against BDI’s trade mark application no. 1549979 for the plain text trade mark BLACK DOG.

63.     The Notice from BDR in regards to trade mark application no. 1549979 nominated one ground of opposition under s 41 the Act.

64.     The onus is upon BDR to establish its ground of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[17]

[17] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

Section 41 - Trade mark not distinguishing applicant’s goods or services

65.     At the time of filing section 41 provided:

41  Trade mark not distinguishing applicant’s goods or services

(1)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1:       Forapplicantand predecessor in titlesee section 6.

Note 2:       If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

(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:          Forgoods of a personand services of a personsee 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:       Forgoods of a personand services of a personsee 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).

(6)  If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a)  if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)  in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1:       Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)  the time of production of goods or of the rendering of services.

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).

66.     Section 41 of the Act deals with a trade mark’s capacity to distinguish an applicant’s goods or services. It provides a scheme for the assessment of the capacity of a trade mark to distinguish the goods or services of one trader from the similar goods or services of another trader. However, as for any other ground of opposition the onus is on the opponent to make its case under section 41. Therefore, BDR must establish that BDI’s trade mark was not capable of distinguishing the services in question at the relevant date. If the trade mark is found to lack inherent capacity to distinguish, section 41 also provides a scheme for the assessment of whether the trade mark has acquired capacity to distinguish the services through its use in trade.

67.     The question of whether the words BLACK DOG are capable of distinguishing BDI’s services has been a point of contention between the BDI and the BDR. This issue lies at the heart of the evidence which has been exchanged between the parties. Justice Branson sets out an understanding of the structure of section 41 of the Act (as it stood at the time the application was filed) in Blount Inc v Registrar of Trade Marks[18] with the words:

[18] [1998] 440 FCA (1 May 1998), 40 IPR 498 at 504

Subsections (3) - (6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the Registrar first to "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". Having taken such matter into account, it is theoretically open to the registrar to conclude:

(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

(c) 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 there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41(2) and (3). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

If the Registrar reaches conclusion (b) above, then the provisions of paras (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33(1). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

If the Registrar reaches conclusion (c) above, then the provisions of paras (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparas (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33(1). If the Registrar, having considered the combined effect of the matter listed in subparas (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application.

68.     The test to be applied, for me to reach a conclusion regarding one of Justice Branson’s (a), (b) or (c) options above, is found in the words of Justice Kitto in ClarkEquipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514:

…. whether a mark is adapted to distinguish be tested by reference to the likelihood that 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

69.        The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[19] (‘Cantarella’) noted the following part of Kitto J’s test:

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

[19] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Grennan and Kiefel JJ.

70.        Considering this passage the High Court explained that the inherent adaptation of a trade mark consisting of a word (including a foreign word) is to be tested by checking the ordinary meaning (that is the “ordinary signification”) of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods[20]. The High Court held that CINQUE STELLE and ORO (Italian words meaning FIVE STARS and GOLD) were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods. The High Court compared those trade marks to the trade mark TUB HAPPY in respect of cotton goods, as trade marks which “convey an allusive or metaphorical meaning in respect of certain goods” rather than directly describing those goods[21]. A trade mark that has an obscure reference to the applicant’s goods is not a word or phrase that is likely to be understood by others as a description/direct reference.

[20] Cantarella at [28], [30] per French CJ, Grennan and Kiefel JJ

[21] Cantarella at [73] per French CJ, Hayne, Hayne, Crennan and Kiefel JJ

71.     The consideration of inherent adaptability to distinguish is something which depends on the nature of the trade mark itself. It is not a test conducted with reference to specific traders who happen to have similar trade marks, but a general question of whether “other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods” (per Justice Kitto in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. [22]).

[22] (1965) 112 CLR 537

72.     Mr Round, representative for BDR, argued that the words BLACK DOG, when used on their own, are entirely descriptive of those services which are commonly associated with mental illness and clinical depression. As discussed earlier in the previous two oppositions, BLACK DOG is common parlance in the Australian community when it comes to metaphorical descriptors of mental illness; namely depression but is it descriptive of the services claimed in BDI’s application?  

73.     In response to BDR’s arguments surrounding section 41, Mr Lang referred me to the decision in Cantarella where the High Court emphasized that the test for inherent distinctiveness under section 41(3) was not whether other traders might desire to use a word but rather whether traders might desire to use a word which is directly descriptive in respect of the same or similar goods. This is to be contrasted with using words in relation to the goods or services which are allusive or metaphorical.

74.     A consideration of BDI’s trade mark shows that it consists of the two words BLACK and DOG in plain text.

75.     BLACK DOG is defined in the Macquarie Online Dictionary as:

Black Dog, (in figurative use) clinical depression.

76.     I note that this definition makes it clear that BLACK DOG is a metaphorical reference to clinical depression. Given BDI’s claimed services it is likely that someone aware of the metaphorical meaning attributable to BLACK DOG may assume there was a connection with those services and depression particularly when both parties have done so much to promote awareness of depression throughout Australia. I do not believe that the situation before me is analogous to the situation in TUB HAPPY but rather, that this situation falls slightly closer to the other side of the spectrum. It is clear from the evidence of both parties that the expression BLACK DOG is a well-known term in relation to depression and not a made up phrase that a consumer may extrapolate an allusory meaning from. Instead, someone familiar with the terminology used in regards to mental health may well believe that the applied for charitable, fundraising, training and educational services are somehow linked to depression.

77.     However, the term is common within the mental health industry, I am not satisfied that other traders are likely to require to use the expression BLACK DOG regard to the provision of the services BDI has listed in the ordinary course of conducting their business. They may ‘want’ to use it but they do not require use of the expression. The jump between the expression BLACK DOG and the provision of those services listed in class 35, 36, 41 and 45 is just too large and intangible. While I can appreciate how a link between the metaphorical meaning attributable to BLACK DOG and the services could potentially be drawn, it is simply not enough to establish the section 41(5) ground of opposition. I do not believe that other traders dealing in these services (which are quite broad and not specifically limited to depression) would need to use BLACK DOG as a trade mark during the ordinary course of business. Therefore, I am satisfied that BDI’s trade mark is inherently adapted to distinguish the designated services under section 41(3) of the Act.  Accordingly the section 41 ground is not established.

Decision

78.     Section 55 of the Act provides:

Decision

55 (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.

Trade Mark Application numbers 1497671 and 1531329

79.     BDI has not established any of the grounds of opposition against these trade mark applications. The trade mark applications may proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal  before that time, I direct that registration of the trade marks shall not occur until the appeal has been discontinued or registration is ordered by the courts.

Trade Mark Application number 1549979

80.     BDR has not established the ground of opposition against this trade mark application.

81.     The trade mark application may proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal  before that time, I direct that registration of the trade mark shall not occur until the appeal has been discontinued or registration is ordered by the courts.

Costs

Trade Mark Application numbers 1497671 and 1531329

82. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful opponent Black Dog Institute.

Trade Mark Application number 1549979

83.     BDR has not established any of the grounds of opposition with regards to this application. As the successful party, Black Dog Institute are entitled to costs and I accordingly award costs against Black Dog Ride Pty Ltd as per Schedule 8 of the Trade Marks Regulations 1995.

Bianca Irgang

Hearing Officer

Trade Mark Oppositions and Hearings

1 September 2016