Comite International Olympique v Risk Technology Systems Pty Limited

[2000] ATMO 79

TRADE MARKS ACT 1995

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

Re:Opposition by Comite International Olympique to registration of trade mark application number 714343 in the name of Risk Technology Systems Pty Limited for the trade mark FIRST RISK OLYMPICS in class 41.

Background
On 5 August 1996, Risk Technology Systems Pty Limited (the applicant) filed an application to register the trade mark FIRST RISK OLYMPICS, in respect of goods in class 9 and services in classes 36 and 41.  The application was subsequently amended claiming only the following services in class 41:

Financial knowledge competition and educational material published and played on Internet and also through facsimilie (sic) and hardcopy (paper) form.

Acceptance of the applicant's mark was advertised in the Australian Official Journal of Trade Marks of 23 July 1998.  A notice of opposition to registration of the mark was filed on 16 October 1998 by Comite International Olympique (the opponent).  It contains twenty-three grounds of opposition, of which only those based on sections 43, 44 and 60 of the Act were relied upon by the opponent at the hearing. 

The hearing on the opposition was held in Melbourne.  Mr John Hawker of Callinan Lawrie, patent and trade mark attorneys of Melbourne, appeared on behalf of the opponent.  The applicant forwarded brief written submissions before the hearing.

The evidence
The only evidence formally presented in these proceedings is evidence in support comprising a statutory declaration, with exhibits, by Howard M Stupp, the director of Legal Affairs of the opponent.  The opponent is the body in charge of the Olympic Games.  The declarant refers to the opponent's registration for the mark OLYMPIC in class 41 and an exhibited publication, which illustrates activities other than sporting activities conducted under the auspices of the Olympic movement.  Whilst the predominant view of the Olympics and the Olympic movement is that of being involved in sports, the declarant states, the activities of the Olympic movement are much broader.  As an example of one of the varied activities of the opponent, Mr Stupp refers to an exhibited article detailing results of the International Olympic Committee Bridge Grand Prix.  The opponent has also supported a number of cultural and intellectual pursuits and competitions, such as the International Chess Federation World Finals and the IOC Olympic Prize, which is awarded for outstanding research in movement, exercise and sport.  Brief descriptions of these are annexed to the declaration.  In addition, the opponent has been involved in the Sydney Youth Olympic Festival and, Mr Stupp says, in youth activities that are taking place prior to, and in conjunction with, the traditional sporting games.  Stressing that the opponent and the Olympic movement patronize and/or support certain games and competitions, such as chess and bridge, which are primarily intellectual and not physical in nature, he notes that the applicant's game is predominantly an intellectual challenge. 

Submissions
On the issue concerning the grounds of sections 43 and 44, Mr Hawker said that the opponent owns a number of trade marks which include the word OLYMPIC, directing my attention to registration 612571 in particular, for the word OLYMPIC.  He said that that word was also a prominent and essential feature in the applicant's mark.  The reason for using this word, in conjunction with the words FIRST RISK, by the applicant was to convey to the potential user that the applicant's educational game was being played at the highest level, which was exactly the idea the opponent's mark conveyed.  Thus, the essential feature of the applicant's mark was the word OLYMPICS, the words FIRST RISK simply suggesting to the consumer the particular part of the Olympic competition, he said.  The word acted to qualify the particular competition of the Olympics.  In view of the prominence of the word OLYMPICS in the applicant's mark and the word OLYMPIC constituting the opponent's mark, as well as the similar services covered by both of the marks, the opponent believed deception or confusion was likely to arise between the marks. 

In relation to the s.60 ground of opposition, Mr Hawker submitted that the opponent enjoyed a world-wide reputation, including Australia.  The Olympics was an event synonymous with the concept of the highest level of competition and the organisation associated with the opponent.  The reputation of the events under that name had grown up over many years from the development of the Olympic movement.  Consequently, the choice of the word OLYMPICS by the applicant was, no doubt, made to equate activities with the high level of competition concept embodied by the Olympic events.   This was done, Mr Hawker asserted, in order to gain some association with the opponent and the Olympic movement.  Although the applicant had available to it numerous other words to describe its game concept, for example, "First Risk Games", "First Risk Competition", or "First Risk Contest", it chose a word that has connotations and association with the opponent's trade mark.

Turning to Mr Stupp's declaration, Mr Hawker drew my attention to the opponent's involvement in a broad scope of activities, some of which were highlighted in a copy of the publication Olympic Review annexed to the declaration.  The opponent was also involved in and had a close association with intellectual skills competitions, Mr Hawker said, referring to the Bridge Grand Prix and the Chess Federation World Finals, both in 1998, and submitting that those were games primarily intellectual in nature.  The fact that the opponent was engaged in a variety of what were once regarded as non-traditional sporting activities would tend to support the view that the consumers were likely to see the Olympic movement as embracing other than the traditional activities, Mr Hawker submitted.  The applicant had a chance to adopt another name, but chose one which had the effect of trading off the opponent's reputation.  Similarly, Mr Hawker added, the opponent had a broad reputation in relation to intellectual games, as well as the traditional sporting activities.  Mr Hawker concluded his submissions by requesting that costs in the matter be awarded to the opponent.                    

The applicant's submissions, which were transmitted by facsimile, were received by me before the hearing.  These include an annexure.  Although I will include in my decision the submissions in a summary form, I will not be able to give the material included in the annexure and any submissions relating to the annexure any weight for the reasons to be explained under the heading Discussion.   

The applicant states that its trade mark is used in respect of a specialised derivatives risk intelligence questionnaire appearing on the web site.  A copy of the relevant pages appearing on the web site are attached to the submissions.

In response to any suggestion of a likelihood of deception or confusion arising from the use of the present mark, caused by the consumers perception that the applicant's mark denoted an association with or the approval of the opponent and the Olympic movement in general, the applicant submits that the web site clearly states "This game is not connected in any way with the activities of the IOC (International Olympic Committee) or SOCOG".  This statement, the applicant submits further, appears in a prominent place on the first page of the game, in full size text.  The statement is made on the web site to appease the IOC and SOCOG, the applicant says.  It is not considered to be necessary for the general public, because it is obvious that this simple questionnaire on complex financial technical issue has no connection with any past, current or likely future activities of the IOC.  FIRST RISK OLYMPICS has no relationship to any known sport or an intellectual game, the submissions continue.  The questionnaire was developed by the applicant, and the concept of testing derivatives knowledge in this manner is novel.  The applicant adds that it has not encountered anyone who even considered the possibility that this game was connected with the opponent.  The game is free and accessible to anyone on the web, the applicant stresses, and is designed to help finance students and professionals to discover the hidden dangers in the casual use of financial derivatives.

In a hand-written note, the applicant has also added to the submissions: "Additional comment: please note we have been using the mark for approximately four years".   

Discussion
Preliminary comment on the applicant's submissions. 
I have already indicated that the applicant did not file any evidence concerning the present opposition.  The written submissions, which were made by the applicant on the day of the hearing, primarily comprise a copy of a printout of pages from the web site in relation to the applicant's game under the trade mark FIRST RISK OLYMPICS and the applicant's comments in relation to this material.  As the printout constitutes matter which was not properly served and filed as evidence in answer, under the provisions of reg.5.9, so as to provide the opponent an opportunity to consider the evidence and respond to it, if it so desired,  I cannot take account of it.  Thus, in these proceedings, no regard will be given to the material submitted as "attachment' to the applicant's written submissions and the references thereto in those submissions.    

Section 44 of the Act reads:

44.(1)         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.

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

The mark alleged by the opponent to be in conflict with the applicant's mark is the word mark OLYMPIC (612571), registered from 28 September 1993, in respect of the services in class 41:

Education, providing of training, sporting and cultural activities, organizing and conducting sports competitions, film production, publication of books and of texts (other than publicity texts).

The wording of the applicant's statement of services does not permit one to fully comprehend the exact nature of those services.  The services of interest to the applicant as described in the statement "financial knowledge competition and education material published and played on Internet and also through facsimilie (sic) and hardcopy (paper) form" essentially are a competition and educational material.  Both of such services are also included in the opponent's registration.  However, not all of these services can be regarded as similar.  In view of the totally different nature of the services pertaining to competitions in the respective statements of services - one relating to financial knowledge and the other concerning sporting activities - I do not believe those services could be similar, i.e. neither the same services, nor services of the same description within the meaning of s.14.   However, "education" and "publication of books and of texts" are broad descriptions, which could encompass services such as the applicant's "educational material published and played on Internet and also through facsimilie (sic) and hardcopy (paper) form".         

On applying the side-by-side comparison test, as per Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414-415, to assess the total impression of resemblance or dissimilarities between the applicant's and the opponent's marks, it is obvious that the marks exhibit sufficient differences, for the marks not to be substantially identical.

Whether the marks in question are deceptively similar depends upon an assessment based on the criterion that the marks could be taken one for the other, in the absence of an opportunity to scrutinize them in close proximity, because of an impression or recollection the marks might form and leave an impact on the minds of the potential customers - Australian Woollen Mills Ltd v F.S. Walton & Co. Ltd (1937) 58 CLR 641 at 658. There are considerable differences between the marks when considering the aspect of their appearance, pronunciation and concept. The applicant's mark consists of three recognizable words FIRST RISK OLYMPICS, whereas the opponent's mark is simply one word OLYMPIC. In the normal parlance, both words OLYMPIC and OLYMPICS relate to the Olympic Games, the latter actually being a direct reference to the modern Olympic Games.

It has been submitted by the opponent that the words FIRST RISK, in combination with the word OLYMPICS, denote a particular part of the Olympic Games competition.  I do not accept this proposition.  A trade mark must be considered in the relevant context, i.e. use of the mark in relation to the services the applicant is providing, which, in the present case, are competitions concerning financial knowledge.   It seems to me that various meanings may be attributed to the words FIRST RISK, none of which would describe any particular competition in the Olympic Games.  The words might convey the idea that it is a financial knowledge competition with a high level of risk factor, or such a competition where the participants are expected to respond immediately to a challenge without first allowing themselves time for reasoning.

The word 'risk' has a wide application in the world of business.  The CCH Macquarie Dictionary of Business, inter alia, refers to insurance against risks of economic or financial losses, and definitions are also provided for terms relating to financial instruments, including "credit risk", "liquidity risk" and "market risk".  There are separate entries for "all risk insurance; alpha risk; any one risk cover; assigned risk; assumption of risk; attachment of risk; audit risk; average risk; beta risk; borderline risk; catastrophe risk; diversifiable risk; exclusion of risk; financial risk; fire risk;  insurable risk; insurance risk; operating risk; physically impaired risk; pure risk; risk management; seasonal risk; target risks; war risk insurance".   Noting that one of the terms among this list is "alpha risk", I suggest that it could even equate the words FIRST RISK in the applicant's mark.   Even if this interpretation of the meaning of FIRST RISK is incorrect, given the commonality and significance of the term 'risk', when used with reference to finance, I think it can be reasonably assumed that the prospective participants in the competition offered by the applicant would either be professional persons, or those with special interest in and at least some knowledge of  financial matters. The persons familiar with the financial terms are unlikely to focus their attention merely on the word OLYMPICS, dismissing the other components in the applicant's mark.  In such circumstances, the words FIRST RISK would be perceived to be words in their own right, with the result that the significance of the word OLYMPICS in the mark would be relatively diminished.  Consequently, the words FIRST RISK cannot be easily ignored for the purpose of distinguishing the applicant's and the opponent's marks.    No evidence has been provided to the effect that the words FIRST RISK might be associated with any events held at the Olympic Games,  and  I can find no support for the contention that the words could be construed as describing something characteristic of Olympic Games that would lead persons to assume that the services of the applicant and the opponent were provided by the same entity - see John Fitton & Co Ltd's Appn (1949) 66 RPC 110. Consequently, it is unlikely that the general impression of the marks created in the minds of the persons concerned would be one word OLYMPIC or OLYMPICS. While such terms as 'Winter Olympics' and 'Paralympics' are well recognized in the community at large as denoting particular type of competitions in the Olympic Games, the former referring to competitions associated with winter sporting activities and the latter involving sports competitions for the disabled, there does not appear to be any reason why the words FIRST RISK OLYMPICS, used in relation to financial knowledge competitions, should be seen as bearing any relationship with the Olympic Games.

In view of the above factors, although I have found that some of the applicant's and the opponent's respective services to be similar, I consider there are sufficient dissimilarities between the marks in question so as to distinguish them in use.  Consequently, as I see it, the applicant's and the opponent's marks are not deceptively similar.  It follows then that the opposition fails as far as it relates to s.44 of the Act.

Section 43 reads:

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.

The opponent has argued that, in view of the connotation of the word OLYMPICS in the applicant's mark FIRST RISK OLYMPICS, the mark would be likely to deceive or cause confusion, because it could be perceived by members of the public that the applicant's competition was sponsored or endorsed by the opponent and the Olympic movement.

The concept of 'connotation' was discussed at some length in Down to Earth (Victoria) Co-operative Society Ltd v Schmidt (1998) 41 IPR 632, where the hearing officer observed, at 644:

Therefore it can be said that the word connotation refers to that which is implied in a trade mark - in addition to its essential or primary meaning.  A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark.  The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.  Considerations under s 43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public.  For example, deception or confusion could arise in regard to the character of the services, or the implied endorsement or licence of services by a person or organisation. 

In my opinion, the Olympics, which is synonymous with the Olympic Games, is universally known as an international athletic and sports meeting held every four years at various places in different parts of the world.  The opponent's evidence shows that the opponent and the Olympic movement have extended their activities from those associated with sports to a wider range of activities which embrace intellectual pursuits, such as the games and competitions of bridge and chess.  An exhibit to Mr Stupp's declaration - a copy of the report on the opponent's activities during 1997 and 1998 - indicates that the opponent granted support, inter alia, to the International Chess Federation for the final of the world championships and to the World Bridge Federation for the bridge Grand Prix. Both of these events were supported and organised by the opponent.  An indication is given in the copy of the article concerning the bridge Grand Prix that the bridge competition is being planned as a competition in the Winter Olympic Games.  As to whether either or both of the events have been included in the Olympic Games competitions is not in evidence.  Similarly, no evidence has been presented by the opponent to show that a significant number of Australians are aware of any intellectual pursuits being included in the Olympic Games programme.  For the purposes of s.43, it is necessary to consider the applicant's mark in the context of the services in question.  Here the competition conducted by the applicant concerns financial issues exclusively and would be directed to persons with knowledge in the realm of finance, thus attracting persons with special interests and knowledge.  In the absence of evidence that intellectual games and competitions have been included as events in the Olympic Games and that this fact is well established and publicised in Australia, I do not believe that deception or confusion is likely to arise among persons dealing with the applicant's services in the mistaken belief that, in view of the word OLYMPICS appearing in the subject mark, there was some sort of endorsement of or relationship with the opponent - the international body maintaining the control of the Olympic Games.  In view of the specialized nature of the applicant's services, any deception or confusion in terms of s.43 would, in my opinion, be even less likely.  

In view of the foregoing, I find that the opponent has been unsuccessful on the s.43 ground of opposition. 

In terms of section 60:

60.  The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia;

and

(b)because of the reputation of that other trade mark, the use of the first mentioned trade mark would be likely to deceive or cause confusion.

Note 1:For deceptively similar see section 10.

Note 2:For priority date see section 12.

For consideration of the ground in terms of s.60, a prior trade mark must first be found to be substantially identical with, or deceptively similar to, the applicant's mark.  Once that requirement is met, it is to be decided whether, before the date of the subject application, the reputation residing in the earlier mark, in Australia, has been so extensive as to be likely to lead to deception or confusion, having regard to the existence of the applicant's mark. 

In relation to the issue in terms of s.44, I have found the applicant's mark to be neither substantially identical with, nor deceptively similar to, the mark of registration 612571, therefore it is not necessary to go beyond this point.  However, I would like to make the following comments on the opponent's evidence in relation to the question of reputation.  The opponent's evidence primarily concentrates on the history, goals and philosophy of the Olympic Games and the Olympic movement.  It sets out the various activities conducted and/or supported by the opponent and the Olympic movement, which cover sporting events, as well as cultural and intellectual competitions, with particular emphasis on the opponent's involvement in the international bridge and chess competitions held in 1998, which is well after the filing of the present application on 5 August 1996.  Although reference is made to the mark of the opponent's registration 612571, no details are provided as to its use (or use of any other mark) that would support a reputation of the mark in Australia.  As observed previously, I believe that the Olympic Games or Olympics has a universal renown.  In view of the Olympic Games being held in Sydney in 2000, any matters associated with the games have been widely publicised in the past years, enjoying frequent and extensive exposure throughout Australia via various media.  However, had I found in the opponent's favour in respect of the substantial identity or deceptive similarity issue, given that the opponent's evidence does not specifically address the question of reputation in a trade mark, that evidence would not have been convincing to show that there was reputation in the opponent's mark (or marks) in Australia, which would be likely to result in deception or confusion with the mark of the applicant.           

Consequently, the opponent has not established a case to support its ground of opposition in terms of s.60 of the Act.

Conclusion
My finding in these opposition proceedings is that the opponent has not been successful in respect of any of the grounds of opposition upon which it relied.  I therefore dismiss the opposition and direct that the mark of application 714343 should proceed to registration.

Costs
The applicant being the successful party in these proceedings is entitled to its costs.  Accordingly, I order that the opponent pay the applicant's costs in the matter, in accordance with the Official Scale. 

Vija Zars
Hearing Officer

2 August 2000