Chris Kingsley v David Scott

[2011] ATMO 20

TRADE MARKS ACT 1995

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

Re:Opposition by Chris Kingsley to registration of trade mark application 1243020 (9, 28, 41) - SOUL REBELLION - filed in the name of David Scott.

Delegate:

Heath Wilson

Representation:

Opponent: Sean McGuire of Watermark Patent and Trade Mark Attorneys.

No appearance or submissions from the applicant.

Decision:

2011 ATMO 20

Section 52 opposition: Grounds pressed under sections 44, 59 and 60 of the Act – Trade mark encompassed within another mark – not deceptively similar - intention to use the trade mark – use of trade mark unlikely to result in confusion – Trade mark to proceed to registration.

Background

1. David Scott (‘the applicant’) applied on 28 May 2008 to register the trade mark ‘Soul Rebellion’ (‘the applicant’s trade mark) for the following goods and services:

   Class 9:

   Cinematographic films prepared for exhibition; films contained within cassettes for use with projectors; films for cinematographic exhibitions; films for sound recordings; films for the projection of images; films incorporating lenses; films on video tape; pre-recorded cinematographic films; pre-recorded motion picture films; pre-recorded video films; strips of film (cinematographic, exposed); strips of film (cinematographic, unexposed); strips of film (photographic, exposed); strips of film (photographic, unexposed); strips of sensitised film (exposed); strips of sensitised photographic film (exposed); television films; television films prepared for exhibition; television films prepared for video use; video films; video films prepared for exhibitions

   
   
   Class 28:

   Bags especially designed for skis and surfboard; leashes (surfboard); non-motorised surfboards; non-motorised surfboards incorporating sails; shaped polyurethane surfboard blanks; shaped surfboard blanks; surfboard covers; surfboard leashes; surfboard leg ropes (leashes); surfboard wax; surfboards; surfboards with sails (windsurfing boards); wax combs for surfboards; protectors for elbows for use when skateboarding (sports articles); protectors for the knees for use when skateboarding (sports articles); skateboards; wake boards

   
   
   Class 41:

   Cinematographic film editing; film production; production of films

2. The above trade mark was examined, and later advertised as accepted in the Australian Official Journal of Trade Marks on 25 September 2008. Chris Kingsley (‘the opponent’) Director of Rebellion Developments Limited, then filed a notice of opposition on 25 February 2009 under section 52 of the Trade Marks Act 1995 (‘the Act’) nominating all possible grounds of opposition.

3. The opponent made and filed a statutory declaration dated 15 February 2010 with exhibits CK-1 to CK-17. The applicant did not serve any evidence in answer and the opponent requested to be heard on the matter.

4. Prior to the hearing, the opponent provided written submissions pressing grounds of opposition under sections 44, 59 and 60 of the Act. On Friday 4 February 2011, I heard this matter in Canberra as a delegate of the Registrar of Trade Marks. The opponent was represented by Sean McGuire of Watermark Patent and Trade Mark Attorneys. The applicant did not appear at the hearing or provide written submissions.

Onus and Reasons

1. The grounds pursued were sections 44, 59 and 60 of the Act. In order to succeed in the opposition, the opponent bears the onus of establishing at least one of these grounds on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891at [22] to [26].

Section 44: Identical etc. trade marks

1. Section 44 of the Act relevantly provides:

2. Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

3. Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)         it is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

4. The notice of opposition and the opponent’s evidence refers to trade mark REBELLION (no. 795029) filed on 25 November 1998 and registered for the following goods and services below.

   Class 9:

   Computers, electronic and electric apparatus, all for the input, output and processing of data; gaming, entertainment and amusement machines and apparatus; video game apparatus, computer games, electronic game apparatus, all adapted for use for television receivers and video apparatus; coin and counter-fed game and pinball machines; electronic table game apparatus with electro-optical screens; magnetic tapes, discs, magnetic discs, optical discs, silicone chips, microchips, electronic circuits and cassettes, all encoded with programs for games and all for use with the aforesaid games apparatus; sound and video records, sound and video recording and reproduction apparatus; computer software; computer programs; computer firmware; program memory cartridges for electronic amusement apparatus; parts and fittings for all the aforesaid goods

   
   
   Class 16:

   Printed matter; printed publications; books, manuals, brochures, pamphlets and magazines; instructional and teaching materials; photographs; posters; stationery; stickers, labels and decalcomanias; advertising materials; ordinary playing cards

   
   Class 28:

   Games, toys and playthings; electronic games; electronic amusement apparatus incorporating computer apparatus; non-coin and counter-fed games and pinball machines; parts and fittings for all the aforesaid goods

   
   
   Class 42:

   Computer programming, computer programming design and consultancy; software development; creating and maintaining websites; installation, customisation and maintenance of computer programs; computer systems analysis; design, drawing and commissioned writing, all for the creation, development, compilation and production of computer games; computer software and games research, analysis, design and development; licensing of computer software and games; advisory, consultancy and information services relating to all of the aforesaid services

5. The opponent’s trade mark is registered for specific goods which are similar[2] to some of the goods in the applicant’s specification. For example, the opponent’s sound and video records, sound and video recording and reproduction apparatus are similar to the applicant’s films. All the remaining goods in the opponent’s class 9 specification are exclusively in relation to computer/video games and related apparatus. While many computer games have been made into films (and vice versa) and both films and games may be sold in department stores, I am not satisfied that the use and nature of films make them goods of the same description as computer games. 

   [2] Similar goods are those which are the same, or of the same description as other goods (Section 14(1))

6. The opponent’s Toys and playthings potentially encompass the surfboards, wake boards and skateboards residing in the applicant’s specification. In relation to services, I find that the applicant’s specification comprising film editing and production are (with the exception of sound and video records, sound and video recording and reproduction apparatus) neither similar nor closely related to the opponent’s goods and services.

7. The opponent submits that the applicant’s trade mark is substantially identical or deceptively similar to trade mark no. 795029. For the sake of completeness in terms of s 44, I find that on a side by side comparison the two trade marks are not substantially identical[3]. As to deceptive similarity, the determinative issue is whether the general effect of the similarities and differences between the respective trade marks SOUL REBELLION and REBELLION is such that confusion or deception would be likely to occur in the Australian marketplace. With regard to the considerations for deceptive similarity, Justices Dixon and McTiernan said in Australian Woollen Mills Ltd:[4]

   [T]he marks ought not … to be compared side by side. 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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … 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.

   [3] Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 (at 414-415).

   [4] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658).

1. The opponent’s trade mark REBELLION is wholly contained within the applicant’s trade mark. There are numerous Federal Court cases and decisions from the Registrar’s delegates where deceptive similarity has been considered with respect to the applicant’s trade mark containing the whole of the opponent’s trade mark. Some examples where deceptively similarity has been found include ERA and NEW ERA[5], JEST and EASYJEST[6], PARKER KNOLL and KNOLL[7], PACE and OLIN PACE[8], BRATS and BONZA BRATS,[9] and more recently NEXT and NEXT GENERATION[10]. It is, however, equally clear that despite a common element between the two trade marks, where a trade mark conveys a different idea or concept, deceptive similarity may not result (such as in HEALTHPLUS and INNER HEALTH PLUS[11] or BULL and BULL TRADER[12]).

   [5] Arendsen's Appn (1932) 2 AOJP 433.

   [6] John Fitton & Co Ltd’s Application (1949) 66 RPC 110.

   [7] Parker-Knoll v Knoll International [1962] RPC 265.

   [8] Olin Corporation v Pacemaker Pool Supplies (1984) 4 IPR 526.

   [9] Re Coles Myer’s Application (1993) 26 IPR 577 (at 579).

   [10] Next Retail Limited v Marlin Australia Pty Ltd [2010] ATMO 117 (29 November 2010).

   [11] Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100 (at 134-151).

   [12] Red Bull GmbH v Reschke Pty Ltd [2010] ATMO 119 (30 November 2010).

2. In the ‘Barefoot’ case,[13] the words BAREFOOT and BAREFOOT RADLER were found to be deceptively similar, despite the additional element ‘RADLER’ being a distinctive and important element in the trade mark and not a recognisable English word.

   [13] E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69.

3. The general precedent indicates that if one trade mark is contained within another trade mark that fact may not necessarily lead to a finding of deceptive similarity. This is especially so if the presence of that common word (or device) is diminished by other elements in the trade mark or if the common element is descriptive of the claimed goods/services.  If the idea or meaning of the trade mark as a whole has been sufficiently altered by the differing trade mark elements, the likelihood of confusion between the two trade marks is thereby reduced. Whether the respective goods and services of the parties are specialised or commonplace is also relevant in determining if confusion is likely to result. In the end, each trade mark must be considered on its own factual circumstances.

4. The trade mark SOUL REBELLION consists of two recognisable English words and as a whole does not appear to have any readily discernible meaning in relation to the applicant’s goods and services. While ‘Rebellion’ is a memorable word in the applicant’s trade mark, neither of the words ‘Soul’ or ‘Rebellion’ by themselves have any specific meaning in relation to these goods or services. As a result, neither word can be devalued or discounted in a comparison with the opponent’s trade mark. The word in common between the trade marks does not appear foremost and in London Lubricants[14] it was commented that:

   …the tendency of persons using the English language to slur the termination of words…has the effect necessarily that the beginning of words is accentuated in comparison, and… the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

   [14] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 at 279 (CA UK).

5. The ‘Soul’ element of the trade mark, being foremost, distinctive and memorable by itself, is unlikely to be overlooked or disregarded whether the goods are purchased  by visual or aural means. SOUL REBELLION does have an ordinary dictionary meaning which is unlikely to be confused or associated with the word ‘Rebellion’ by itself. Therefore, I am not satisfied that upon imperfectly recalling either trade mark, the prospective consumer would be confused.    

6. In Southern Cross Refrigerating,[15] Justice Kitto said: “To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.” I do not find the confusion between the trade marks to be more than a mere possibility, and section 44 of the Act has not been established.

   [15] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (at 594-595).

Section 59: Applicant not intending to use trade mark

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 has argued that the applicant did not have the intention to use the trade mark at the time of filing. Section 59 was nominated in the notice of opposition and the applicant has not responded to this ground (or any other ground). In the opponent’s declaration, Mr Kingsley also declared that he was unaware of any use of the applicant’s trade mark in the marketplace or how it was intended to be used. The opponent reached this conclusion after undertaking Internet searches and being unable to find evidence of use of the opposed trade mark.

2. There is authority for the proposition that when an applicant that has been put on notice and does not respond to the opponent’s evidence,[16] a finding of lack of intention to use the trade mark may be inferred. However, that evidence from the opponent must still be sufficient to shift the onus to the applicant. While “slight evidence may suffice,”[17] an allegation that the applicant has not used its trade mark will not shift the onus. A lack of trade mark use is not unusual at this stage and is understandable from a business perspective, especially where the applied-for trade mark is currently under opposition. The mere nomination of a section 59 ground and evidence indicating an absence of trade mark use does not satisfy me that I should infer a lack of intention to use the trade mark.

   [16] Phillip Morris Products SA v Sean Ngu [2002] ATMO 96

   [17] Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254.

3. The opponent further submitted that in the event this trade mark application should proceed to registration, a non-use application could have been filed by the opponent under s92(4)(a) of the Act and a similar lack of response from the applicant would have resulted in the mark being removed from the register. This argument is based on the presumption that there would be no response at all from the applicant in that scenario. The truth of such an assumption would be for the future to decide, if and when a non-use application is filed. In any case there is a reversed onus in non-use matters and this line of speculation is not relevant to the question before me under section 59. I find that it has no bearing on my current findings.

4. The lack of any kind of response from the applicant would have been sufficient to establish this ground where the opponent produced evidence which shifted the onus to the applicant. I am not satisfied that the opponent’s evidence accomplishes this task. The ground of opposition under section 59 of the Act has not been established.

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.

1. In order to be successful under section 60, the opponent has to establish that its trade mark REBELLION had acquired a reputation in Australia (before 28 May 2008) such that use of the applicant’s trade mark SOUL REBELLION on the claimed goods/services would deceive or cause confusion in the Australian marketplace.

2. In 1992, the opponent began operating as a computer games developer in the United Kingdom. The word REBELLION was first used as its trade mark in Australia in 1999. In 2000, the opponent branched out into comics, acquiring the titles 2000AD and Judge Dredd Megazine. From 2006-2008, the opponent also acquired book publishing companies. Over the years prior to the applicant’s priority date, the opponent developed games for a range of different formats, including popular titles such as “Aliens Vs Predator”, “The Simpsons Game” “Harry Potter and the Order of the Phoenix” “James Bond: From Russia with Love”, and “Judge Dredd”, amongst others. The appearance of the trade mark on all of these games and comics is:

   .

3. The above presentation of the opponent’s trade mark on computer game products usually appears in combination with other companies involved in the production (or publishing) of those video games (such as Eidos®, LucasArts® and Twentieth Century Fox®). The opponent has also sold books, graphic novels and figurines, however these are associated content from the aforementioned comics and video games. There is nothing in the evidence to suggest that the opponent is known for adding extraneous material (descriptive or otherwise) to its depiction of the REBELLION trade mark (as seen above). Accordingly, the character of the reputation is firmly in the word itself and consumers are less likely to expect SOUL REBELLION to be associated with (or be an extension of) the opponent’s trade mark.

4. With regard to advertising and sales figures, Justice Kenny found in McCormick & Co Inc v McCormick[18]:

   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.

   [18] McCormick & Co Inc v McCormick (2000) 51 IPR 102 at 127.

1. The net sales of Rebellion games in Australia from 2003 - 2008 are impressive. These figures have been provided by other video game publishers. The opponent’s declaration refers to sales of a Sony Playstation game ‘Free Running’ from the UK distributor to an Australian retailer on 4 April 2007. However, these sales do not detail the amount of games that the Australian retailer actually sold to consumers.  While a number of copies of the opponent’s Harry Potter and The Simpsons games were sold from January 2009 - March 2009, those sales occurred after the filing of the applicant’s trade mark and are thus not relevant for this opposition.

2. The opponent does not directly advertise its products to the Australian consumer, as the opponent declares that this is the responsibility of the games publisher. The general figures for advertising expenditure provided in support of the reputation of the opponent’s trade mark are substantial but represent worldwide promotion with no indication of the amount of advertising targeted at Australian consumers.

3. The film and video game industries involve cross-licensing from one medium to the other and the average Australian consumer is aware of this practice. The applicant’s goods and services and the goods bearing the opponent’s trade mark with a demonstrated reputation do not have to be similar for the opponent to succeed under this ground. Neither do the opponent’s and applicant’s trade marks have to be deceptively similar. However, these factors would still affect the likelihood of confusion in the marketplace upon the use of the applicant’s trade mark.   

4. I am satisfied that the opponent did enjoy a reputation at the priority date of the opposed application as a developer of video games. The strength of that reputation is confined primarily to computer or video games, despite its activities indicating an expansion of the use of REBELLION into books and comics. I find that the reputation in the opponent’s “Rebellion” trade mark as at 28 May 2008 was not sufficient for the notional use of “Soul Rebellion” on the applicant’s specification of goods and services to deceive or cause confusion.  

5. I find that the ground of opposition under section 60 of the Act has not been established on the balance of probabilities.

Decision

1. Section 55(1) of the Act provides:

   (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.

2. The opponent has not established a ground of opposition under the Act. I direct that trade mark application 1243020: SOUL REBELLION may proceed to registration after one month from the date of this decision. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the application be subject to that order.

Heath Wilson

Hearing Officer

Trade Marks Hearings

8 March 2011