Comite International Olympique v Temptitng Brands Netherlands BV

[2019] ATMO 41

TRADE MARKS ACT 1995

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

ReOpposition by Comité International Olympique to extension of protection of International Registration 1293867 (3, 9, 14, 18, 25, 28) (Australian trade mark application 1761172) – Pierre de Coubertin – held by Tempting Brands Netherlands BV

Delegate:                 Robert Wilson

Representation:       Opponent: Lucy Davis of Counsel, instructed by Wrays Pty Ltd

Holder: Elena Szentivanyi of Counsel, instructed by Henry Hughes IP Ltd

Decision:                   2019 ATMO 41

Trade Marks Act 1995 (Cth): Regulation 17A.33 opposition: s 43 considered – trade mark has connotation – extension of protection to Australia refused

Background

1. Trade mark number 1761172 is the Australian designation of a request made under the Madrid Protocol by Tempting Brands Netherlands BV (‘the Holder’) to extend protection of the trade mark subject of International Registration 1293867 to Australia. The request is known as an International Registration Designating Australia (‘IRDA’). This decision relates to an opposition to the extension of protection brought by Comité International Olympique (‘the Opponent’) pursuant to reg 17A.33 of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’). Details of the IRDA are as follows:

IRDA:	1761172
International Registration:	1293867
Filing Date:	21 December 2015
Convention Priority Date:[1]	22 June 2015
Goods:	Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus Class 14: Jewellery, precious stones; horological and chronometric instruments Class 18: Animal skins, hides; walking sticks; luggage, bags, wallets and other carriers; saddlery, whips and animal apparel; sausage skins and imitations thereof; umbrellas and parasols Class 25: Clothing, footwear, headgear Class 28: Fairground and playground apparatus; festive decorations for christmas trees and artificial christmas trees; sporting articles and equipment; toys, games, playthings and novelties ( ‘the Holder’s Goods’)
Trade Mark:	Pierre de Coubertin	(‘the Holder’s Trade Mark’)

[1] Trade Marks Regulations 1995 regs 17A.2 to 17A.4.

1. Following the advertisement in the Australian Official Journal of Trade Marks of the IRDA’s acceptance for possible extension of protection on 23 March 2017 the Opponent filed a Notice of Opposition (‘the Notice’) consisting of a Notice of Intention to Oppose on 23 May 2017 and a Statement of Grounds and Particulars (‘the SGP’) on 23 June 2017. The SGP raised grounds of opposition pursuant to ss 58, 60 42(b), 43 and 62A. The Holder filed a Notice of Intention to Defend on 8 August 2017. On 11 July 2017 IP Australia sent a Notification Of Provisional Refusal Based On An Opposition to the World Intellectual Property Organisation which advised of the receipt of the Notice.

2. The Opponent filed the following Evidence in Support (‘EIS’):

   ·Declaration made on 10 November 2017 by Howard Stupp, the Director of Legal Affairs of the Opponent, with Exhibits HS-1 to HS-29 (‘the Stupp declaration’).

3. The Holder filed Evidence in Answer (‘EIA’) being:

   ·Declaration made on 27 February 2018 by Dr Johannes Baptist Jacobus Maria Lanen, the Managing Director of the Holder, with Exhibits JL-1 to JL-12 (‘the Lanen declaration’).

4. The Opponent filed Evidence in Reply (‘EIR’) consisting of:

   ·Declaration made on 4 May 2018 by Anne Van Ysendyck, the Director of Legal Affairs of the Opponent, with Exhibits HS-1 to HS-14 (‘the Ysendyck declaration’). Ms Ysendyck indicated that she has held her position since 1 January 2018.

5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Both parties requested an oral hearing. I heard the matter as a delegate of the Registrar of Trade Marks in Canberra on 12 February 2019. Lucy Davis of Counsel, instructed by Wrays Pty Ltd, appeared on behalf of the Opponent. Elena Szentivanyi of Henry Hughes IP Ltd appeared on behalf of the Holder. Both representatives’ oral submissions were supplemented by written submissions filed prior to the hearing.

6. I am to decide the opposition as required by reg 17A.34N of the Regulations which relevantly provides that, unless the proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all the goods or services listed in the IRDA; or

   (b)To extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

   The Opponent

7. According to the Stupp declaration:

   Established by Pierre de Coubertin in 1894, [the Opponent] is today one of the world’s leading sporting bodies, and the supreme authority of Coubertin’s Olympic Movement. The Olympic Movement encompasses organizations, athletes and other persons who agree to be guided by the principles of the Olympic Charter. Its composition and general organization are governed by Chapter 1 of the Charter. The Movement comprises three main constituents:

   (a)[The Opponent]: the supreme authority of the Movement;

   (b)The International Federations: these are international non-governmental organisations administering one or several sports at world level and encompassing organisations administering such sports at national level; and

   (c)The National Olympic Committees: their mission is to develop, promote and protect the Olympic Movement in their respective countries. The NOCs are the only organisations that can select and designate the city which may apply to organise Olympic Games in their respective countries. In addition, they alone can send athletes to the Games.

   [The Opponent] comprises membership of 100 active members (including four Australians …) 44 honorary members, 1 honorary president and 1 honour (sic) member. Acting as a catalyst for collaboration between all parties of the Olympic family, from the National Olympic Committees (NOCs), the International Sports Federations (IFs), the athletes, the Organising Committees for the Olympic Games (OCOGs), to the TOP (The Olympic Program) partners, broadcast partners and United Nations agencies, [the Opponent] shepherds success through a wide range of programmes and projects. On this basis it ensures the regular celebration of the Olympic Games. It supports all affiliated member organisations of the Olympic Movement and strongly encourages, by appropriate means, the promotion of the Olympic values.

   The Holder

8. The Holder is a company based in the Netherlands, and according to the Lanen declaration:

   [The Holder] creates brands and licences them to itself, and to leading retailers and manufacturers worldwide.

   [The Holder’s] business model is to identify a gap in the fashionwear, accessory and IT markets and to create a brand to fill that gap. This process encompasses many activities including (a) selection and clearance of trade marks, (b) registration of trade marks, (c) acquisition of internet domain/s, (d) creation of brand identity, (e) creation of Style Guides, (f) product or fashion collection design, (g) licensing to retailers / wholesalers, (h) joint product design and product approvals for licensees, and (i) joint marketing material design and approvals for licensees. For example, we have created an authentic American lifestyle brand ‘ROUTE 66’, the ‘GENERAL MAGIC’ brand for the technology savvy and [the Holder] is now beginning the process for the ‘Marie-Antoinette’ brand for women. …

9. With respect to the adoption of the Holder’s Trade Mark the Lanen declaration states:

   In relation to clothing we are creating a brand for a specific and particular audience. To our target market a French or French sounding name is appealing. This is illustrated by our brand for women: Marie-Antoinette. It is not expected that our audience necessarily knows the full history or story of the brand’s namesake, it is more about the look and feel of the name itself.

   In order to select a new brand for men, I had a brainstorming session with [a colleague], to come up with a potential trade mark for a new range high end-men’s wear and affiliated products (sic).

   In relation to our brand for men, we wanted again to use a French name and to us Pierre is the quintessential French man’s name just like in the case of Marie‑Antoinette. We also wished to position the new brand as a brand for men competing against brands such as ‘Pierre Cardin’, which we consider to have a high profile internationally and which fits our existing customer profile well.

   Given our goal to position our new brand at the same level as brands such as ‘Pierre Cardin’, one of the ideas tabled during the brainstorm session was to find other names with Pierre as the first name, and a surname starting with C, which resulted in the candidate trade mark and brand name ‘Pierre de Coubertin’.

   In the days following the brainstorming session, a trade mark and domain name search were conducted. In these searches, we concluded that the trade mark was registered by [the Opponent]. However, our subsequent searches also indicated that the trade mark was very likely not in use.

   The name was explicitly not chosen because of a possible affiliation with [the Opponent] or the Olympics as has been alleged by [the Opponent].

   Grounds of Opposition, Onus and Standard of Proof

10. At the hearing the Opponent pressed all the grounds which were nominated in the SGP. It is necessary that the Opponent establish only one ground of opposition to successfully oppose the IRDA. As will become apparent it is necessary only that I consider the ground pursuant to s 43 in this decision. However, should this decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the appellate Court.

11. The onus of proof in an opposition rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 21 December 2015, being the filing date of the application (‘the relevant date’).[4]

    Discussion

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

    [3] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26].

    [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

    Grounds for rejecting and opposing IRDA

12. Regulation 17A.28 of the Regulations relevantly states:

    (1)The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of the Act, as affected by subregulation (2).

    (2)Sections 39 to 44 apply in relation to an IRDA as if:

    (a)a reference in those sections: 

    (i)to an application for the registration of a trade mark were a reference to the IRDA; and

    (ii)to an applicant were a reference to the holder of the IRDA; …

13. Regulation 17A.34 of the Regulations relevantly states:

    (1)The extension of protection may be opposed on any of the grounds on which an IRDA may be rejected under Subdivision 2, except the ground that the trade mark cannot be represented graphically. …

    Section 43

14. Section 43 of the Trade Marks Act 1995 (Cth) (‘the Act’) provides:

    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.

15. This ground of opposition was particularised in the SGP as follows:

    The Opponent submits that [the Holder’s Trade Mark] is an obvious imitation of the name and trade mark ‘Pierre de Coubertin’, the Founder of the International Olympic Committee.

    When seeing [the Holder’s Trade Mark] in relation to the goods claimed, the public will inevitably confuse [the Holder’s Trade Mark] with Pierre de Coubertin and/or will be deceived into believing that [the Holder’s Goods] have a license, sponsorship or approval from the Opponent, that they do not have, or that [the Holder] has a license, sponsorship, approval from the Opponent or affiliation with the Opponent, that it does not have.

16. In McCorquodale v Masterson (‘McCorquodale’) the court found:

    In an opposition to registration, s 43 of the Act requires an opponent to show that: (1) there is a connotation in the proposed trade mark or in a part of it; and (2) because of this connotation, the use of the proposed mark would be likely to deceive or cause confusion. The connotation must be contained within the mark itself. [5]

    [5] (2004) 63 IPR 582, 589 [25].

17. McCorquodale concerned an opposition to the registration of a trade mark which comprised the words ‘Diana’s Legacy in Roses’ together with a number of graphic elements as shown below (‘the Diana Trade Mark’):

1. Having considered the significant reputation of the late Diana Princess of Wales, Kenny J stated in McCorquodale, ‘Taken together, I find that the words ‘Diana’s Legacy in Roses’ and the stylised ‘D’ within the proposed mark clearly connote the late Princess of Wales’.[6] Kenny J went on to consider whether, because of that reputation, deception or confusion would be likely to arise as to whether or not the registration and use of the Diana Trade Mark occurred with sponsorship or approval of the opponents to the registration of that trade mark. Her Honour noted that the charitable activities of the Princess were well known during her lifetime and that:

   [S]oon after her death, her executors recognised that her name, image and other indicia of her might be used as a means of earning income through commercial sponsorship arrangements, and that this income could be used for the various charitable causes that the Princess had supported in her lifetime. [T]his recognition led to the establishment of [a charitable fund], which was licensed by the trustees of the Princess’ Estate to control such sponsorship arrangements …[7]

   [6] Ibid 591 [32].

   [7] Ibid 592 [37].

2. Her Honour found:

   I am satisfied that the words ‘Diana’s Legacy in Roses’, together with the stylised ‘D’ directly and immediately connote the late Princess Diana. The practice of licensing names and likenesses of celebrities, such as the late Princess, is now well recognised in the community. … There is a real likelihood that consumers would understand that goods bearing the impugned mark are in some way sponsored or approved by [the charitable fund] or the Princess’ Estate, even if they were ignorant about the specific details of the arrangements. The likelihood of this misunderstanding is sufficient to create a likelihood of confusion and deception in Australia, by reason of the connotation of the mark.[8]

   [8] Ibid 598 [60].

3. There are some parallels with the facts in McCorquodale and those under consideration here. However, as noted by Kenny J in that case:

   [W]hether a mark or part of it connotes the sponsorship or approval of a person, entity or institution will depend on all the surrounding circumstances. In each case it will be a question of fact and degree.[9]

   [9] Ibid 596 [53]

4. The principal criticism of the Opponent’s evidence made by the Applicant is that it does not demonstrate use of Pierre de Coubertin as a trade mark in Australia and to the extent that it may have been used as a trade mark that the sign ‘Pierre de Coubertin’ has not acquired a reputation through such use. As can be seen from the discussion of the law, above—in particular McCorquodale—it is not necessary that the Opponent establish this for the purposes of an opposition under s 43. What is necessary is that the Opponent establish Pierre de Coubertin (the person) has a significant reputation which connects him to the Opponent. The Applicant also questioned whether the Opponent established this. In the end, I am satisfied that the Opponent has established the existence of such a reputation, for reasons which follow.

5. In the present matter it is not disputed that a person called Pierre de Coubertin was pivotal in the establishment of the modern Olympic movement. Neither is it disputed that the Olympic movement has been controlled by the Opponent since its very early days. That Pierre de Coubertin had a long association with the Opponent during his lifetime and continues to be associated with the Opponent and the Olympic movement is also clear from the evidence. What is in dispute in this matter is how well known these facts are in Australia and whether the knowledge of the association between Pierre de Coubertin and the Opponent is likely to give rise to deception or confusion. French J stated in Registrar of Trade Marks and Woolworths:

   The use of the word ‘likely’ in this context does not import a requirement that it be more probably than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a ‘real tangible danger of its occurring’.[10]

   [10] [1999] FCA 1020, [43].

6. To support its ground of opposition under s 43 the Opponent submitted that it

   relies on the global reputation, including in Australia, of Pierre de Coubertin and the integral connection between Pierre de Coubertin and the Olympic Movement which is connected (sic) by [the Holder’s Trade Mark]’.

   Such a reputation is supported by the Stupp declaration. A few of the more significant parts of the Stupp declaration are discussed below.

7. It is safe to assume that some of the asserted facts in the Stupp declaration are common knowledge amongst Australians. For example, the Olympic Games are held every two years—the summer and winter versions, alternately—and they are watched by billions of people around the world including Australia. Probably less well-known, but without a doubt widely known in Australia, is that the Opponent is the body which controls and is responsible for the organisation of the Olympic Games.

8. It was submitted by the Opponent that the role of Pierre de Coubertin and his well‑known association with the development of the Olympic Movement ‘is evidenced in the publicly available biographies … as well as the extensive number of books written by, and about, Pierre de Coubertin’. Exhibits HS-1, HS-2 and HS-6 list a large number of such publications written in many languages. The Opponent submitted that Pierre de Coubertin is also honoured publicly in a number of other ways, including the following:

   ·His name is widely mentioned at each Olympic Games.

   ·Australian’s exposure to the honouring of Pierre de Coubertin at the Olympic Games including at the two Olympic Games held in Australia … as well as the televised broadcast of the Olympic Games every 2 years and the thousands of [Australian] athletes and training, supporting  and media persons who have attended the Olympic Games.

   ·Australian’s exposure to the international activities referred to above through travel and media, including the internet.

   ·The annual award by the AOC of the Pierre de Coubertin Award since 1998 (and earlier in some states).

   ·Australian delegates sent to the International Pierre de Coubertin Youth Forum.

1. According to the Stupp declaration, the Pierre de Coubertin Award mentioned above was created by the AOC in New South Wales in 1992. Further:

   In 1995, the Pierre de Coubertin Award expanded to four states (New South Wales, Queensland, Western Australia and South Australia). In 1997 the awards expanded to Victoria and Australian Capital Territory. In 1998, the awards expanded to Tasmania and in 2014, the awards were also featured in Northern Territory.

   [Up to 2016], there have been a total of 15,862 recipients of the Pierre de Coubertin Awards throughout Australia. Attached and marked Exhibit HS-22 is a list of awards given since 1993 together with a current school nomination form as well as a sample blank Pierre de Coubertin Award.

2. Exhibit HS-23 to the Stupp declaration is declared to be ‘articles from various Australian websites discussing the Pierre de Coubertin Award’. The exhibits include three examples of what appear to be pages from two college websites and a swimming club website. The pages are dated before the relevant date. The examples typically show an article which includes a photograph of a young person—or in one case two young swimmers—who has recently received the award. The articles indicate the connection of the award with the Olympic Movement and in two cases explicitly state that the awards are named after the founder of the modern Olympic Games. In one instance there appears a photograph of the recipient holding a certificate of her award and a trophy, both of which prominently bear the Olympic rings.

3. There is no doubt in my mind that there is a real tangible danger of deception or confusion arising out of the use of the Holder’s Trade Mark in connection with the Holder’s Goods; such confusion being likely amongst those persons who are aware of the connection between the Olympic Movement and Pierre de Coubertin. It is unclear from the evidence how many people in Australia might make up that group. However, it is not necessary that every purchaser of goods in Australia be aware of the connection. If the number were only one or two, or even 100, people this is unlikely to be sufficient to warrant finding this ground of opposition established. The actual number is clearly many more than that. When considering a similar question in relation to a ground of opposition under s 60 in Toddler Kindy Gymbaroo Pty v Gymboree Pty Ltd, Moore J was satisfied that a reputation amongst a limited set of potential customers, in a limited geographical area, in that case ‘parents of young children’,[11] would give rise to ‘confusion of the relevant character’.[12] I am satisfied that there are a significant number of people who would be aware of the, almost inextricable, link between Pierre de Coubertin, the Olympic Movement and the Opponent.

   [11] [2000] FCA 618, [31].

   [12] Ibid [88].

4. Of particular relevance in this decision is the unusual nature of the name, Pierre de Coubertin, especially when used in Australia. If the modern Olympic Movement were begun by a person with what, in Australian terms, was a fairly nondescript, common name, such as John Smith, this ground of opposition might not have succeeded. However, that is not the case here. Neither ‘Coubertin’ nor ‘de Coubertin’ appear in a search of the Electoral Roll using the SFAS search tool. Pierre de Coubertin is anything but a nondescript name and will be instantly recognised as the name of the founder of the Modern Olympic movement by a large number of Australians.

5. I am satisfied by the evidence before me that because of the connotation that the name Pierre de Coubertin has, the use of the Holder’s Trade Mark in connection with the Holder’s Goods would be likely to, at least, cause purchasers to wonder whether those goods are in some way sponsored or approved by the Opponent. The Opponent has, therefore, established this ground of opposition.

   Decision

6. I have found that the Opponent has established the ground of opposition it raised pursuant to s 43 of the Act. As the Delegate of the Registrar I accordingly refuse to extend protection of the Holder’s Trade Mark to Australia.

   Costs

7. 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. As the Opponent has established a ground of opposition, I award costs against the Holder as per Schedule 8 of the Trade Marks Regulations 1995.

   Robert Wilson
   Hearing Officer
   Trade Mark and Designs Hearings
   25 March 2019