Cadbury Schweppes Pty Ltd v Timothy Warwick Bull

[2004] ATMO 74

TRADE MARKS ACT 1995

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

Re:Opposition by Cadbury Schweppes Pty. Ltd. to registration of trade mark application 849532(39, 41) - TIM THE YOWIE MAN - filed in the name of Timothy Warwick Bull.

Delegate:	Rachel Dunn
Representation:	Opponent Chris Sgourakis of Griffith Hack Applicant Michael Kirov of Spruson & Ferguson
Decision:	1.  Opposition dismissed, application to proceed to registration. 2.  Costs awarded against the opponent.

Background

1. Timothy Warwick Bull, (the applicant) filed trade mark number 849532 for the plain words TIM THE YOWIE MAN on 11 September 2000.

2. The trade mark was examined and four citations were raised in terms of section 44 of the Trade Marks Act 1995 (the Act).  Three of the citations are owned by Cadbury Schweppes Pty Ltd, the opponent in this case.  The applicant provided written submissions which convinced the examiner that the citations did not give rise to grounds for rejecting the application.  After some discussion between the applicant and the examiner the specification of services was amended to read:

   Class 39 - Organisation, development and provision of tours and exhibitions

   Class 41 - Entertainment and cultural services being the development, organisation, production, distribution and provision of: cinematograph films; television programs; radio programs; online services by means of the Internet; videos and sound recordings (including records, compact disks, sound recording devices, CD-ROM, multi media devices, so called talking books and other like apparatus and devices); public events, including seminars and lectures; and, books, magazines and other printed matter.

3. The application was advertised as accepted on 26 September 2002.  On 24 December 2002 the opponent filed a notice of opposition.  Evidence in support and evidence in answer were served, and a Hearing was requested.

4. The matter came before me, as a delegate of the Registrar, on 14 September 2004 in Canberra.  Mr Chris Sgourakis of Griffith Hack represented the opponent.  Mr Michael Kirov of Spruson & Ferguson represented the applicant, who also attended in person.

   Evidence

5. Both parties served voluminous evidence consisting of a leading statutory declaration accompanied by numerous exhibits.

   Evidence in support:

Name and position	Date	Exhibits	Referred to as
Timothy Stanford – Marketing Director of the opponent	30/05/2003	Annexures 1-43	Stanford

Evidence in answer:

Name and position	Date	Exhibits	Referred to as
Timothy Warwick Bull –applicant.	15/04/2004	TWB1-TWB21	TWB

Evidence in Support

1. The Stanford declaration outlines the history of the opponent; the concept and creation of its YOWIE trade marks; use of its YOWIE trade marks; and the reputation of its YOWIE trade marks.  Sales figures, advertising budgets, and advertising examples are provided.  The exhibits include toys, books, multi-media productions, cereal packaging, magazines and in-store display cartons.

   Evidence in Answer

2. The TWB declaration attests to dictionary definitions of the word YOWIE and the prolific use of the term on the Internet.  The ‘creation’ of TIM THE YOWIE MAN and his popularity since 1995 is documented.  The exhibits include multi-media productions, a book, a t-shirt, a boomerang, and numerous newspaper articles.

   Grounds of opposition

3. The notice of opposition originally included many grounds and the trade mark applicant prepared submissions on all of the listed grounds.  However, at the hearing the only grounds relied upon by the opponent are those pursuant to sections 42, 43, 59, 44, and 60 of the Act.  I find the grounds not relied upon at the Hearing have not been established.  At the hearing the opponent clarified that it would be relying only upon the following trade mark registrations to support its case:

   748953  YOWIE
   Class: 41 Education and entertainment services in relation to matters concerning safety, conservation and the environment, education and entertainment services provided on-line.

   662940  YOWIE 
   Class: 9 Animated cartoons, audio visual apparatus, exposed cinematographic film, audio visual compact discs, video tapes and amusement apparatus included in this class.
   Class: 16 Printed matter; books, cards, drawing materials, envelopes, paper flags, greeting cards, stationery, paintings, posters, postcards, transfers and wrapping paper.

   Submissions and Discussion

   Deceptive Similarity

4. As deceptive similarity is necessary to establish a ground of opposition pursuant to sections 44 and 60, and is arguably relevant to the ground under section 42, I will deal with this question first. The opponent is not arguing that the trade marks in question are substantially identical. Therefore, the only question to decide is whether or not TIM THE YOWIE MAN is deceptively similar to the opponent’s plain word YOWIE.

5. The opponent submits that its trade marks are completely encompassed in the subject application and when two trade marks share the same feature, the degree of distinctiveness of that shared feature needs to be taken into account.  Thus, argues the opponent, the visual and oral impressions of the trade marks and the idea behind them are similar; the most memorable feature of TIM THE YOWIE MAN is the word YOWIE.  The opponent contends that the smaller words in the trade mark are merely filler words, and the impression that would be taken away from each trade mark is one of similarity that would likely cause consumer confusion.  The opponent refers to cases including The Coca Cola Co of Canada v Pepsi-Cola Co of Canada (1942) 59 RPC 127; Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 26 IPR 246; and Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd [2004 FCAFC 201] (Melbourne) for a summary of the principles to be applied when considering the question of deceptive similarity.

6. The applicant relies upon the fact that the onus is on the opponent to prove a case for deceptive similarity, and that a real tangible danger of deception and confusion must exist for deceptive similarity to be established.  The trade marks must be compared as wholes, and the only common element in the trade marks is the word YOWIE, which is used with its ordinary dictionary meaning in the subject application.  The applicant submits that the presence of a common idea between the two trade marks is not determinative of the likelihood of deception and confusion, and reminds me that not one instance of actual deception or confusion has been shown by the opponent.  The applicant refers to the cases of Crook’s Trade Mark 31 RPC 79; Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536; Smyth Hayden & Co Ltd’s Appn (1946) 63 RPC 97 and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

7. Section 10 of the Act provides:

   Definition of deceptively similar

   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.

8. When deciding the question of deceptive similarity the trade marks are not to be compared side by side, as the question is one of impression based on recollection of the trade mark,[1] and this needs to be a first, overall impression rather than a careful comparison.[2]  The trade marks must be compared in their entirety, by judging the probable effect of the respective wholes upon consumers[3], and it is the ordinary consumer that should be considered – highly perceptive, very cautious and unusually stupid people may be disregarded.[4]  Deceptive similarity therefore, is really a consideration of the likely effect or impression produced on and retained by the ordinary run of customers and potential customers.[5]

   [1] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407

   [2] Aristoc Ltd v Rysta Ltd (1944) 1B IPR 467

   [3] Clark v Sharp 91898) 15 RPC 141

   [4] Australian Woollen Mills Ltd v F.S Walton & Co Ltd (1937) 58 CLR 641 and Crook’s Trade Marks 31 RPC 79

   [5] Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd [2004 FCAFC 201]

9. In Re Application by the Pianotist Co Ltd 1A IPR 379 at 380; (1906) 23 RPC 774 (Pianotist) at 777, Lord Parker (then Parker J) said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

10. The Full Court of the Federal Court in the Melbourne case observed that both Pianotist and Australian Woollen Mills Ltd v F.S Walton & Co Ltd (1937) 58 CLR 641, noted that similarities of look, sound and meaning are relevant. Also, as noted in TorpedoesSportswear Pty Limited v Thorpedo Enterprises Pty Limited (2003) 59 IPR 318 at 331:

    ‘The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them and a proprietor of a mark is not entitled to a complete monopoly of all words conveying the same idea as that mark: [Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536] Cooper Engineering at 539. This fact can, however, be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive: Cooper Engineering at 539. The presence of a common idea may be a determining factor because the idea is more likely to be recalled that [sic] the precise details of the mark (Jafferjee v Scarlett (1937) 57 CLR 115 at 121-2 (Jafferjee)) but the suggestion of differing ideas may serve to reduce the risk of confusion (Johnson & Johnson v Kalnin (1993) 114 ALR 215; 26 IPR 435 at 440 (Johnson & Johnson)). The idea that is relevant is the idea that the mark will naturally suggest to the mind of one who sees it: Jafferjee at 121.’

11. The first overall impression of the trade marks is that one consists of a single plain word with a fairly well-known dictionary meaning and the other is a slogan utilizing a common trade mark construction.  The shared feature of YOWIE obviously dominates both trade marks, however the construction of TIM THE _ MAN does detract from the YOWIE element and provides visual and aural differences between the trade marks.  Both trade marks are phonetically and visually identical as far as YOWIE goes, but in an overall assessment the trade marks are not phonetically or visually similar.

12. The mere fact that both trade marks contain an identical feature does not automatically make them conceptually similar.  The word YOWIE is used with different meanings attributed to the word in each trade mark.  The applicant’s trade mark uses the word YOWIE strictly in its dictionary sense, referring to an ape-like human about two metres tall claimed to roam Australia especially in southern New South Wales.  The opponent’s trade marks use YOWIE in a more clearly fictional sense, referring to characters that are friendly animal-type creatures closely related to various native Australian animals including the koala, kangaroo and platypus.  Thus, I do not agree with the opponent’s contention that the trade marks have a similarity of meaning which must tip the balance in favour of a finding of deceptive similarity.

13. Whilst only eleven trade marks incorporating the word YOWIE have been applied for in Australia, evidence of Internet searches shows that the term is indeed common and used in its dictionary sense, with numerous hits also for the opponent and the goods and services it provides.

14. I am satisfied that a substantial portion of the Australian public would know of the dictionary meaning of YOWIE and be able to distinguish between use of the term in this sense, and use of the term by the opponent.  Therefore, whilst the word YOWIE is not common as a trade mark, neither is it so rare that any construction using it would immediately fix in the mind of consumers as belonging to only one trader.

15. I consider it highly unlikely that either trade mark will be mistaken for the other, and I believe the only possible similarity between the trade marks is that of conceptual similarity, leading to contextual confusion.  I have considered the possibility that YOWIE is currently a fairly well-known word only due to the opponent’s use of it and reputation in it.  The opponent has argued that the term is rare in the trade, and that consumers who had imperfect recollection would believe TIM THE YOWIE MAN to be part of the YOWIE range it offered.  I believe this scenario has a little merit, and that there is a slight, and by no means significant, possibility of some consumers thinking that services provided under the trade mark TIM THE YOWIE MAN may have a connection with similar services offered by the opponent under the YOWIE trade mark.  Evidence shows that the National Museum of Australia held an exhibition sponsored by the opponent (proudly presented by Cadbury YOWIE) entitled “Australia’s Lost Kingdoms” and also held a “YOWIE hunt” throughout the galleries during the same period that the applicant was presenting his show titled “Mega mysteries with TIM THE YOWIE MAN” held in the YOWIE room of the museum.  Thus, both parties used their trade marks at the same venue at the same time for closely related services, offering a near-perfect opportunity for consumer deception and contextual confusion between the trade marks.  No instances of deception or confusion were evidenced, and I conclude that even if some consumers may have construed a connection between the parties it was vague speculation at most.  Such speculation does not give occasion to wonder about common origin or a connection between the parties, and I believe there is no reasonable likelihood of consumers being deceived or confused.

16. The view that the trade mark TIM THE YOWIE MAN may bring to mind the opponent’s YOWIE trade marks is not sufficient to establish deceptive similarity.  Considering all of the above factors, I believe the likely impression produced on and retained by consumers to be one of dissimilarity.  There is insufficient resemblance between the trade marks to lead to a real tangible risk of deception or confusion, and as such the trade marks are not deceptively similar.

17. As I have decided that the trade marks are not deceptively similar, I find that the grounds pursuant to section 44 and section 60 are not established and I dismiss those grounds of opposition.

18. In respect of the ground of opposition pursuant to section 42, the opponent argued that the use of the applicant's trade mark would infringe sections 42 and 44 of the Fair Trading Act 1987 (NSW).  The opponent's argument was based on the likelihood of consumers being misled or deceived by the use of TIM THE YOWIE MAN in the face of YOWIE, and connected to the contention of deceptive similarity of the trade marks.  I have already found that the trade marks are not deceptively similar and that use of TIM THE YOWIE MAN would not deceive or confuse consumers.  The standard for establishing infringement under the Fair Trading Act 1987 (NSW) is higher than the standard required when considering arguments of deception and confusion pursuant to the Trade Marks Act 1995.  As this lesser threshold has not been met, obviously the higher one has also failed.  Consequently I dismiss the section 42 ground of opposition.

    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.

19. For section 43 to be established there needs to be inherent connotation in the trade mark or in part of the trade mark, and due to this connotation there needs to be a reasonable likelihood of deception or confusion arising, taking into account the nature of the services involved.

20. The opponent contends that the words TIM THE YOWIE MAN have the secondary meaning and inherent connotation that TIM is one of the characters used by the opponent in its YOWIE promotional and marketing concept.  The opponent has shown it uses fictitious characters in its YOWIE concept with the memorable names of BOOF, NAP, SQUISH, CRAG, RUMBLE and DITTY.  The opponent believes that this will lead the purchasing public into viewing TIM THE YOWIE MAN as simply the name of another of the opponent’s characters.  This belief is heightened due to the target audience for the opponent’s goods and services being children, who will also be among the applicant’s customers.

21. The applicant submits that any connotation found must be inherent to the trade mark, it cannot be construed from the reputation or prior use of any other trade mark.  The fact that the opponent has not evidenced one instance of confusion should be fatal to its case pursuant to section 43.

22. Both parties agree that TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc [2000] FCA 720 confirms that the connotation referred to in section 43 relates to the inherent nature of the trade mark itself. The opponent discusses the cases of Amalgamated Television Services Pty Ltd v Pickard [1999] ATMO 103 and Twentieth Century Fox Corporation Limited v Die Hard Pty Ltd (2000) 52 IPR 455 in regard to comparison of the trade marks and the marketing activities of the parties; and Torrag Pty Ltd v Lydboots Pty Ltd (2000) in regard to the significations of the phrase TIM THE YOWIE MAN as words rather than a trade mark.  The applicant relies upon Picasso v Thomas [2001] ATMO 84, wherein the trade mark was found to have connotation, but no real tangible danger of any deception or confusion was found and the trade mark was ultimately registered.

23. Whilst the opponent has provided evidence showing use of character names and personas linked to its YOWIE creatures, I am not convinced that this leads to any connection with TIM THE YOWIE MAN.  Tim is an ordinary male name, well known in the English language, bearing no resemblance to names such as BOOF, RUMBLE and DITTY.  TIM THE YOWIE MAN may denote a man named Tim dressed as a Yowie, a man named Tim who resembles a Yowie, or a man named Tim who simply deals in some way with a Yowie.  I believe that children are more sophisticated consumers than the opponent gives them credit for, and I am satisfied that the general public, including children, will appreciate the difference between names such as NAP, SQUISH and RUMBLE and the name Tim.

24. The opponent does have an impressive reputation in the word YOWIE when it is used as a trade mark, however the word YOWIE within TIM THE YOWIE MAN is used in a somewhat descriptive sense within a trade mark phrase.  I can see nothing implied in addition to any possible primary meanings of TIM THE YOWIE MAN that refers to the opponent or would lead to deception or confusion among consumers.  The connotation referred to in section 43 cannot be based upon reputation of the opponent or any similarity to a name already used by an opponent, and this ground of opposition is not established.[6]  .

    [6] TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc [2000] FCA 720

    Applicant not intending to use trade mark

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

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

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

    Note:  For applicant see section 6.

1. The opponent argues that the applicant does not intend to use the trade mark as it was applied for in relation to the wrong services.  The evidence shows the applicant admitting to the Registrar that not all activities outlined in its application fall into the classification originally requested.  The opponent has construed this admission as a lack of intent to use the trade mark on a vast portion of the services claimed.  Additionally, the opponent contends that the applicant has not used TIM THE YOWIE MAN as a trade mark but rather as simply the name of a presenter, and even then not for any of the services claimed, but more for entertainment, education or journalism services.

2. The applicant relied upon the oft quoted statement in Aston v Harlee Manufacturing Co (1960) 103 CLR 391 which can be simply paraphrased as the making of a trade mark application is regarded as prima facie evidence of intention to use, and a burden rests upon the opponent who attempts to show lack of such intent. The applicant also notes that the opponent has provided little evidence in support of this ground, mainly submissions, and that in any event the trade mark TIM THE YOWIE MAN has been used for relevant services.

3. The evidence shows that the original specification of services claimed by the applicant was incorrect and confusing to read, however it also shows an unfortunate attempt by the examiner to rectify the situation.  The examiner suggested a simple grammatical amendment to aid clarification of the claim, this amendment was agreed to by the applicant yet was never actioned by the examiner and the trade mark was accepted with this clarification omitted.  Similarly, the examiner suggested an amendment to the broad claim of “online services” which the applicant also agreed to, but the examiner then withdrew that proposal on the view that such an amendment would fall foul of section 65 of the Act.  The specification was finally amended by adding Class 39 and transferring some services to the new class.  The applicant stated that a fresh application to cover goods rather than services would be made.

4. Whilst this correspondence between the applicant and the examiner shows that the subject application may not cover all activities of interest to the applicant, and that the services were amended before acceptance, I am not persuaded that it shows lack of intent to use the trade mark for the services claimed.  It does show a lack of understanding of classification issues by both the applicant and the examiner; however this should not prove fatal to the applicant’s case.

5. The applicant has not made any admission that it does not intend to use the trade mark for the services left in the specifications after the examination process.  I believe a simple admission of mistaken classification and a desire to file a new application to cover goods classes does not constitute lack of intent to use the trade mark for the specification as accepted.  I believe that the wording of the specification is more important than the class of goods and/or services claimed, and it is on this basis that I distinguish this matter from case law referred to by the opponent.[7]  There is no evidence provided to suggest that the applicant does not have a resolved or settled purpose to use the trade mark for the services claimed.

   [7] AA Byrd and Company Limited’s Application (1953) 70 RPC 212

6. There has been no evidence provided by the opponent in regard to its contention that TIM THE YOWIE MAN has only been used as a name and not as a trade mark.  The applicant’s TWB declaration refers to TIM THE YOWIE MAN as a “name/trade mark” several times, but also simply as a trade mark.  Clearly, the applicant uses TIM THE YOWIE MAN as a pseudonym or ‘stage name’, but the use also stretches beyond this.  TIM THE YOWIE MAN may not always have been used strictly in a trade mark sense but through evolution of the sign in the marketplace, documented in the TWB declaration and not replied to by the opponent; the trade mark does distinguish the applicant’s services from those of other traders and thus does constitute use as a trade mark.  The opponent has not established this ground of opposition.

   Conclusion and costs

7. I have found that no ground of opposition has been established by the opponent and thus the opposition fails in its entirety.  The trade mark application may therefore proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

8. I see no reason why costs should not follow the decision, and I award costs in the official scale against the opponent.

   Rachel Dunn
   Senior Examiner
   Trade Marks Hearings
   14 December 2004