Chaser Publishing Pty Ltd v ITV Studios Limited

[2023] ATMO 182

TRADE MARKS ACT 1995

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

Re:Opposition by Chaser Publishing Pty Ltd to registration of trade mark application 2126239 (9,41) – BEAT THE CHASERS – in the name of ITV Studios Limited

Delegate:	Nicholas Smith
Representation:	Opponent: Anthony Jucha of Counsel instructed by Jennifer Potter Applicant: Alison McGinn and Vina Ngo of Banki Haddock Fiora
Decision:	2023 ATMO 182 Trade Marks Act 1995 (Cth) - section 52 opposition: s 60 established – registration refused

Background

1. This decision concerns an opposition brought by Chaser Publishing Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of ITV Studios Limited (‘Applicant’): 

Application Number:	2126239
Filing Date:	7 October 2020
Priority Date[1]:	7 April 2020
Goods and Services:	Class 9: Recorded television programmes; downloadable media content, including video and films, television programmes, computer games, music, images and telephone ring tones provided by internet, telephone line, cable wireless transmission, satellite or terrestrial broadcast service; podcasts (downloadable); downloadable computer software applications; downloadable mobile applications; computer programs and mobile application software for interactive television and for interactive games and quizzes; computer game software; computer and mobile application quiz software; gambling software; application software for gambling; downloadable application software for gambling; all the aforesaid goods being in respect of game shows Class 41: Entertainment services in the form of television programmes, cable, satellite and Internet programmes; entertainment services in the nature of game shows; entertainment services relating to quizzes; television entertainment services involving telephonic audience participation; production, presentation, distribution, syndication, networking and rental of television, cable, satellite and Internet programmes and of films, sound recordings, video recordings and DVDs; development of formats for television programmes; organisation, production, presentation, provision and hosting of competitions, contests, games, quizzes, game shows, fun days, shows, roadshows, staged events, live performances, studio entertainment and audience participation events; providing online non-downloadable video clips and other multimedia digital content containing audio, video, artwork, and/or text from or related to an ongoing television series; provision of Internet based games; online computer games services; online gaming and gambling services; casino, betting, gaming and gambling services; interactive poker, bingo and skills games and gaming including single and multi-player gaming formats; pay to play games services; interactive and on-line instant win games and scratch card games; information and advisory services relating to any of the aforesaid services; all the aforesaid services being in respect of game shows (‘Applicant’s Goods and Services’)
Trade Mark:	BEAT THE CHASERS	(‘Trade Mark’)

[1] Convention priority claimed: 7 April 2020, United Kingdom, No. UK00003479738 known in this decision as the ‘relevant date’.

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 18 August 2021 (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 43, 44, 58, 58A, 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 8 November 2021. 

   Evidence

3. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 8 March 2022 by Charles Firth, Director and Co-Founder of the Opponent, with Annexures 1-8 (‘Firth 1’).[2]

   [2] Technically there are two declarations made by Mr Firth that day, the later of the two simply annexing Annexure 8.  For the purpose of the decision I treat both declarations made as a single declaration.

4. The Applicant filed the following evidence in answer:

   ·Declaration made on 27 October 2022 by Helen Stanwell-Smith, Head of Brand Protection at ITV Plc, the parent company of the Applicant, with Annexures HSS-1 to HSS-28 (‘Stanwell-Smith declaration’).

5. The Opponent filed the following evidence in reply:

   ·Declaration made on 3 January 2023 by Charles Firth, with Annexures 9-20 (‘Firth 2’).

6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  

7. On 2 February 2023 the Opponent requested an oral hearing, and the next day the Applicant did the same.  The matter was set down for a hearing by video conference on 17 October 2023 and the matter was allocated to me.  In line with usual practice, a notice was sent to the parties on 14 August 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 3 October 2023 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 10 October 2023 (‘Applicant’s Submissions’).  At the hearing Alison McGinn and Vina Ngo of Banki Haddock Fiora represented the Applicant and Anthony Jucha of Counsel, instructed by Jennifer Potter, represented the Opponent. Also in attendance was Charles Firth from the Opponent. At the hearing the Opponent indicated that, contrary to the position taken in the Opponent’s Submissions, it pressed the ground of opposition under s 62A.  As the Applicant, in preparing the Applicant’s Submissions, had in reliance on the Opponent’s earlier concession, not provided any submissions on s 62A I provided the Applicant with an opportunity to file further written submissions on the s 62A ground if it chose to do so.  The Applicant has not filed any further discussions and in any event it has not been necessary to consider the s 62A ground in this decision.

8. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   The Opponent

9. The Opponent is an Australian company founded in 1999, that has been involved in the Australian entertainment and television industry for over 20 years.  

10. The Opponent is the owner of the trade marks listed below (‘Opponent’s Trade Marks’).  The goods and services for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods and Services’.

Number	Trade Mark	Priority Date	Goods or Services
1009512	6 July 2004	Class 16: Newspapers, magazines, periodicals, books, publications, programmes, booklets, photographs, brochures, printed matter, posters, greeting cards, stationery and paper goods in this class Class 37: Entertainment services, namely production and presentation of films, radio programmes, television programmes and web sites; live performances, stage events and personal appearances; production of video, audio and audio-visual recordings; publication of books and printed material
1009513	THE CHASER (‘Chaser Mark’)	6 July 2004	Class 16: Newspapers, magazines, periodicals, books, publications, programmes, booklets, photographs, brochures, printed matter, posters, greeting cards, stationery and paper goods in this class Class 37: Entertainment services, namely production and presentation of films, radio programmes, television programmes and web sites; live performances, stage events and personal appearances; production of video, audio and audio-visual recordings; publication of books and printed material

1. The relevant claims/statements in Firth 1 and 2 can be summarised as follows:

   ·     The Opponent, under the Opponent’s Trade Marks, has produced a newspaper, radio shows and TV content, including shows such as The Election Chaser, The Chaser Decides, The Chaser’s War on Everything and The Chaser’s Hamster Wheel.  The Opponent has extensively promoted the Opponent’s Trade Marks, including on YouTube where clips of its TV shows are popular.  The Opponent has produced two game/panel quiz shows under the Opponent’s Trade Marks, namely ‘the Unbelievable Trust’ and ‘The Chaser’s Media Circus’.  Much of the Opponent’s material features the same group of on-screen performers and producers who established the Opponent, often known as ‘the Chasers’ or ‘the Chaser Boys’.

   ·     There is extensive evidence of confusion between the Opponent’s Trade Marks and the Trade Mark.

   ·     The Opponent has a substantial reputation in the Opponent’s Trade Marks and due to the varied nature of their use there is a substantial risk that the public may be confused about the origin of a television program offered under the Trade Mark. 

2. The annexures to Firth 1 include searches of YouTube and TikTok where clips produced in response to a search for ‘the Chaser’ intersperse material produced by the Applicant and Opponent.   Annexures 5-7 of Firth 1 contain e-mails to the Opponent about The Chase program produced by the Applicant, comments on Tik Tok indicating a confusion between the material produced by the Opponent and the Applicant’s The Chase program and a tweet referring to the Applicant and tagging the Opponent.  The annexures to Firth 2 contain more information about the reputation of the Opponent, including details of the programs produced, merchandise offered under the Opponent’s Trade Marks and success of the Opponent’s television programs, including both ratings and critical appreciation.  Annexures 17 to 20 to Firth 2 show further instances of confusion, including posts on Facebook, Twitter and confusion in media outlets.

   The Applicant

3. The Applicant is an UK company that holds the intellectual property, including the Trade Mark, for a broader range of related companies including ITV Plc and ITV Studios Australia Pty Ltd which in turn provide television services and produce television programmes.  The Applicant and its related entities, for the purposes of this decision, will be referred to as ITV.  

4. The relevant claims/statements the Stanwell-Smith declaration can be summarised as follows:

   ·     ITV produces a game show, in various national formats, known as The Chase, which was first launched in the UK in 2005 and has been available, both in its UK and Australian versions, since 2013. Both the UK and Australian versions of The Chase are very popular, with a key aspect of the success being the popularity of the quiz champion, known as the Chaser, that the contestant must compete against.

   ·     In 2020 ITV launched a new television show in the UK, known as Beat the Chasers, where the contestants compete against all 5 Chasers instead of one.  This show was launched in Australia in November 2020.

   ·     Both The Chase and Beat the Chasers have had significant viewership, social media engagement, advertising and promotion and have been nominated for and received awards from industry bodies.  The Applicant has a considerable reputation in both the Trade Mark and THE CHASE.

   ·     The declarant is not aware of any instance of confusion between the Trade Mark and/or THE CHASE and the Opponent’s Trade Marks.

5. The annexures to Stanwell-Smith declaration include material that supports the evidence given about the reputation and success of ITV’s The Chase and Beat the Chasers television programmes.

   Grounds of Opposition, Onus and Standard of Proof

6. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 43, 44, 58, 58A, 60 and 62A however in its submissions indicated that it did not press the s58A ground[3].  To successfully oppose the application the Opponent needs to establish one of the remaining nominated grounds.

   [3] As I have mentioned earlier, in its written submissions the Opponent indicated that it did not press the s 62A ground as well but in the oral hearing indicated that it pressed this ground.

7. As will become apparent, the Opponent has successfully established the ground of opposition pursuant to s 60. Consequently, it is unnecessary that I consider the remaining grounds of opposition. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

8. The onus of proof in an opposition rests upon the Opponent.[4]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[5]  The date at which the rights of the parties are to be determined for the purposes of ss 42(b), 43, 58 and 62A is 7 October 2020, being the filing date of the application in Australia.⁵  The Applicant has also claimed a Convention Priority date pursuant to the Madrid Protocol being 7 April 2020 (‘relevant date’); this is the relevant date for the ground of opposition pursuant to ss 44 and 60. I note that nothing in my decision turns on the difference between the Convention Priority date and filing date.

   [4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [5] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   Discussion

   Section 60

9. Section 60 is reproduced below:

   Section 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.

10. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

11. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

    The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

    The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[6]

    [6] [2023] FCA 487, [20-21] (Kennett J).

12. In McCormick & Co Inc v McCormick[7], Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[8]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [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. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[9]

    [7] [2000] FCA 1335.

    [8] Ibid, [81].

    [9] (1992) 33 FCR 302, 343.

13. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[10]

    [10] (1999) 47 IPR 423, 436.

14. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered.  The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[11] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless, the words of Heerey J provide some guidance:

    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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[12]

    [11] [2000] FCA 1587.

    [12] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed, the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

1. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The phrase "THE CHASER" has been used continuously and extensively in Australia since 1999 by the opponent, in media including newspapers, television programs, radio programs, podcasts, stage performances, short form videos on YouTube and TikTok, and the website thechaser.com.au. "The Chaser" is included in the title of many programs. One notable example is "The Chaser's War on Everything", a comedy sketch show on the ABC, which reached over half a million viewers a week. The writers and entertainers in the programs are often referred to as "The Chaser Boys" or "The Chasers" by the public.

2. I am satisfied on the evidence before me that the Chaser Mark had, before the relevant date, acquired a very significant reputation in Australia for a broad range of light entertainment services, particularly television programs, sufficient for the requirements under s 60(a).  I reach this conclusion noting the length of time the Opponent has used the Chaser Mark and the significant presence of the Opponent and its various ‘the Chaser’ projects in Australian cultural life including its success in ratings, critical appreciation and involvement in high-profile news events.  I note that the SGP does not assert use of or reputation in ‘The Chaser Boys’ or ‘The Chasers’ as a trade mark and as such I do not need to make any finding about this for the purpose of s 60(a). 

3. I do not accept the Applicant’s submissions that by reason of the fact that many of the shows produced by the Opponent do not contain the wording ‘The Chaser’ solus the Opponent has insufficient reputation in the Chaser Mark for the purposes of s 60(a).  The evidence indicates that the Opponent’s branding, being the Chaser Mark, is strongly connected to the entertainment programs it provides, be it the newspaper known as The Chaser, or programs such as The Chaser Decides or The Chaser’s War on Everything where the Chaser Mark is used as an indicator of source, namely that the program is produced by the entertainment collective that is the Opponent.  Nor do I accept the submission that any reputation held by the Opponent rests in the names of the television shows themselves – rather the element The Chaser operates as an indicator of source for the Opponent’s television productions and related entertainment services.

4. It is not sufficient that the Opponent merely establish that the Chaser Mark had a reputation; I must also be satisfied that, because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion.  Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning trade mark infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.[13]

   [13] (1937) 58 CLR 641, 658.

5. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[14]

   [14] [1999] FCA 1020, [25]. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

6. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[15]

   [15] [2012] ATMO 124, [40] (Hearing Officer Thompson).

7. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[16]

   [16] [2016] FCA 729, [142] (Yates J).

8. I note that in considering whether there is a likelihood of confusion, I must consider the notional use of the Trade Mark by the Applicant, rather than actual use or any reputation in the Trade Mark held by the Applicant.[17]  I do not accept the Applicant’s submissions that by considering the circumstances of the consumption of the Applicant’s Goods and Services, I must also consider the reputation held in the Trade Mark by the Applicant; the case law in this area, as noted above, is clear.  In any event, as the Applicant’s Beat the Chaser television program had not aired in Australia at the relevant date, there is no evidence of reputation of the Trade Mark. Any reputation the Applicant held in THE CHASE trade mark is not something that I can consider for the purposes of determining whether confusion will occur.

   [17] See, for example, McCormick & Company Inc v McCormick [2000] FCA 1335 where it was established that the fact that the Applicant might have been an honest concurrent user is not relevant to the operation of section 60.

9. I find that there is a cross-over in the nature of the goods and services, with the reputation in the Chaser Mark being in a broad range of television programs and other entertainment services, and the Applicant’s Goods and Services being goods and services produced in connection with television programmes, specifically game/quiz shows.  I do not accept the Applicant’s submissions that the Applicant’s Goods and Services being quiz shows are distinct from the Opponent’s light entertainment programs, such that confusion would be unlikely to occur.  Not only has the Opponent produced two game/quiz shows, namely ‘the Unbelievable Trust’ and ‘The Chaser’s Media Circus’, but there is specific evidence before this office of confusion between the Applicant’s program The Chase and the Opponent, indicating that the Chaser Mark’s reputation is such that consumers could consider a game show to be related to the goods and services produced under the Chaser Mark. I also note the manner in which the Opponent has used the Chaser Mark, for a variety of media in various formats and the broad, non-specialist market for the Applicant’s Goods and Services.  

10. In the present case, the trade marks are undoubtedly similar, with the Chaser Mark being wholly incorporated in the Trade Mark.  The key issue is the nature of the phrase BEAT THE CHASERS and in particular whether the presence of the word ‘beat’ and the plural form of ‘The Chaser’, provide sufficient points of distinction that the use of the Trade Mark would not be likely to cause evidence of confusion with the Chaser Mark.  I note that the impact of these differences, and in particular the presence of the word ‘beat’ is to create a mark that is visually and aurally distinct from the Chaser Mark.  Notwithstanding the differences between the marks, I am not satisfied that the differences, taken collectively, add sufficient distinctiveness such that confusion is unlikely to occur.  This is because it is possible for an addition, notwithstanding that it may add visual and aural distinctiveness, can lead to confusion in the public because the idea of the new mark creates an impression of association with the existing mark. For example, in the hypothetical trade mark THE BEST OF THE CHASER, the presence of ‘the best of’ means it is both visually and aurally distinct to the Chaser Mark, but this difference does not operate to prevent confusion.

11. While in other circumstances the addition of an oppositional word such as ‘beat’ and a pluralisation of the Trade Mark may be sufficient to avoid the existence of consumer confusion, this is not the case here.  The reputation of the Chaser Mark relates to a broad range of television programs, including game shows and entertainment programs featuring members of the Opponent (and in particular the founding members of the Opponent) commonly known as The Chasers or The Chaser Boys.  I also note that a number of the Opponent’s television shows specifically incorporate the Chaser Mark, along with additional material, with the Chaser element referring to the Opponent and/or its collective of performers.  As such it is likely that the use of the Trade Mark for the Applicant’s Goods and Services could cause members of the public to think that the show Beat the Chasers was (for example) a game show where contestants would be competing with members of the Opponent’s collective of performers. 

12. The Opponent has put on evidence of actual confusion between the Opponent and the Applicant’s programs – primarily The Chase but also Beat the Chasers.  I do not accept the Applicant’s submissions that these errors were by consumers of particularly low technological literacy; rather the market of the Applicant’s Goods and Services is a broad one and there is sufficient similarity between the respective marks that such confusion could well arise with consumers of ordinary intelligence.  Nor do I accept the Applicant’s submissions that I must disregard the evidence of confusion because it arose after the relevant date; evidence of confusion after the relevant date can be relevant in determining the likelihood of confusion at the relevant date.  In considering whether a mark would confuse the public on the relevant date, it would be perverse to disregard evidence of actual confusion that occurred after that date, especially in respect of a television program such as Beat the Chasers that did not air in Australia prior to the relevant date.  However, I note that much of the evidence of confusion is not between the Trade Mark and the Chaser Mark, but between The Chase and the Chaser Mark, which is of limited relevance to determining the likelihood of confusion between the Trade Mark and the Chaser Mark; as such the Opponent’s evidence is probative but not determinative. 

13. Ultimately the Opponent has developed a very significant reputation in the Chaser Mark in Australia across a broad range of entertainment services.  Relevantly the Chaser Mark has been used in numerous ways, both as incorporated in the name of television programs (including quiz shows) and as a descriptor of the Opponent and its collective of performers.  The Applicant seeks to register the Trade Mark for the Applicant’s Goods and Services, which has a broad range of non-specialist consumers, including consumers familiar with the Chaser Mark.  I find that by reason of the reputation of the Chaser Mark, the use by the Applicant of the Trade Mark for the Applicant’s Goods and Services would be likely to deceive and cause confusion because the Trade Mark wholly incorporates the Chaser Mark and creates an idea of competition with the performers that constitute the Opponent’s business entity

14. I find that the Opponent has established the ground of opposition pursuant to s 60.

    Decision and Costs

15. I have found the Opponent has established the ground of opposition it raised pursuant to s 60.  As the Delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.

16. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    14 November 2023