Confederation of Australian Motor Sport Limited v Mountain Motor Sports Pty Ltd

[2022] ATMO 117

TRADE MARKS ACT 1995

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

Re:Opposition by Confederation of Australian Motor Sport Limited to registration of trade mark application number 2110450 (Class 41) – Australian Touring Car Championship & device – in the name of Mountain Motor Sports Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Ian Fullagar. Applicant: John Reinehr.
Decision:	2022 ATMO 117 Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds of opposition pressed under ss 43 and 60 – no ground established – trade mark to proceed to registration.

Background

1.     This is a decision on the opposition by Confederation of Australian Motor Sport Limited (‘Opponent’) to the registration of trade mark application number 2110450 (‘Application’) filed by Mountain Motor Sports Pty Ltd (‘Applicant’) on 10 August 2020 (‘Relevant Date’).

2.     The Application is for the following trade mark and services:

(‘Trade Mark’)

Class 41: Arranging of sporting events

(‘Applicant’s Services’).

3.     The Application was examined, accepted for registration, and subsequently advertised for opposition on 11 January 2021. The Opponent filed notice of its intention to oppose the Application on 14 January 2021 and a statement of grounds and particulars (‘SGP’) on 21 January 2021. The Applicant filed a notice of its intention to defend the Application from opposition on 25 February 2021.

4.     The parties were given the opportunity to file evidence in accordance with the timetable set out in the Trade Marks Regulations 1995 (Cth).[1] The Opponent filed Evidence in Support (‘EIS’) on 20 May 2021. The Applicant filed Evidence in Answer (‘EIA’) on 27 August 2021. The Opponent filed Evidence in Reply (‘EIR’) on 28 October 2021.

[1] Trade Marks Regulations 1995 (Cth) reg 5.14. Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

5.     The Applicant filed supplementary evidence, being a declaration by Peter Washington made on 26 November 2021. The declaration responds to statements in the EIR. The Applicant was advised on the same day that it would need to provide reasons as to why the supplementary evidence should be considered. On 24 December 2021, the Applicant filed submissions in the form of a declaration by its solicitor, John Reinehr, contending that the material is probative and should be taken into account. However, having reviewed the supplementary evidence, I consider it relates to matters that have no bearing on my decision. As such, I give it no weight.

6.     Both parties requested to be heard by written submissions and paid the relevant fees. The Opponent filed written submissions on 19 April 2022. The Applicant filed written submissions on 26 April 2022. I have decided this matter based on the particulars set out in the SGP, the EIS, EIA, EIR, and the submissions of the parties.  

Grounds and onus

7.     The SGP nominates grounds of opposition under ss 41, 43, and 60. However, the Opponent in the EIS stated that they no longer wished to pursue the ground under s 41.  

8.     The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

[2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

Evidence

9.     The evidence consists of the following:

EIS

Declaration of Eugene Arocca, CEO of the Opponent, made on 18 May 2021, with Exhibits EA-1 to EA-11.

EIA

Declaration of Peter Washington, Managing Director of the Applicant, made on 25 August 2021, with Exhibits PW-1 to PW-14.

EIR

Second declaration of Eugene Arocca, made on 27 October 2021, with Exhibits EA-1 to EA-2.

EIS

10.     Mr Arocca declares that the Opponent has been the custodian of motor sport in Australia since 1953, and is the governing body for the development, regulation, and administration of motorsport in Australia. The Opponent was registered as a company in 1995 and is recognised as the National Sporting Organisation for motorsport by the Commonwealth Government and is the Australian delegated National Sporting Authority by the Federation Internationale de l’Automobile, the governing body for motorsport worldwide.

11.     Mr Arocca declares that the Opponent has approximately 95,000 members in over 600 affiliated car clubs. The Opponent licences more than 27,500 competitors and 10,500 officials, and sanctions more than 3,000 events per year.

12.     Mr Arocca declares that ‘Australian Touring Car Championship’ (which he subsequently abbreviates to ‘ATCC’) has been used since 1960 in relation to a motorsport racing competition with heavily modified road-racing cars. The ATCC has been run in Australia and sanctioned by the Opponent between 1960 and 1998. In 1997, the Australian Vee Eight Super Company Pty Ltd took over the management of the event and altered the name of the ATCC from time to time (namely, to Shell Championship Series in 1999, V8 Supercars Championship Series in 2003, V8 Supercars Championship in 2011, Virgin Australia Supercars Championship in 2016, and Repco Supercars Championship in 2021). Annexed to the declaration is an Australian Securities & Investments Commission extract which indicates that ‘Australian Touring Car Championship’ has been registered as a business name of the Opponent since 1999. Also annexed is a chronology of ATCC winners, milestones, and major events.

13.     Mr Arocca declares that: “despite the various name changes of championship, the event is still the ATCC. Drivers are said to be ‘driving for the ATCC’ and the winner of the series has always been awarded the trophy and title of ‘Australian Touring Car Champion’ by the Opponent. The Opponent has a perpetual ATCC trophy that has been presented to every winner since the trophy was first awarded in 1976”. Annexed to the declaration are photos of the trophy, including with the 2019 winner, Scott McLaughlin. The trophy prominently bears the engraved words ‘Australian Touring Car Championship. The Lloyds Trophy’.

14.     Mr Arocca declares that the Supercars Championship has been a multi-series event since 1969 and is broadcast in 137 countries with an average event attendance of over 100,000 and with over 250,000 people attending major events such as the Adelaide 500.

15.     Mr Arocca declares that the ATCC has been promoted via the Supercars Championship in a variety of ways, including on the website (‘Opponent’s Website’), Instagram pages (@motorsport.australia, @supercarschampionship, and @V8supercarsaus), Facebook (@motorsportAUS and @supercars), YouTube (/SupercarsChampionship), broadcasting of the Supercars Championship on Foxtel and the Seven Network, media coverage (print, television, radio, and online), and publicity generated by the winners of the Supercars Championship who are awarded the title of Australian Touring Car Champion.

16.     Mr Arocca explains that to mark the 60^th year of the ATCC and Supercars Championship, the Royal Australian Mint released a coin collection showcasing eight of Australia’s most celebrated race cars, with each coin making reference to ATCC-Supercars. Other merchandise was also released by the Opponent featuring the words ‘Australian Touring Cars’. Further, Mr Arocca refers to a book written about the ATCC called ‘Australian Touring Car Championship 25 Fabulous Years’ although there is no information regarding when this book was published.

17.     Annexed to the declaration are extracts and photos of the Opponent’s Website, social media pages, merchandise designs, media advertisements, the Supercars coin collection, and the Australian Touring Car Championship 25 Fabulous Years book. I note that the @Supercars Facebook page had approximately 943,000 likes and the corresponding YouTube page had 125,000 subscribers, as at the date the printouts were taken (which is not specified).  I also note that references to the ATCC on the Opponent’s Website and in social media are in the body of text and not highlighted in any particularly noticeable way, and that the branding of the Opponent’s services appears to focus very heavily around ‘Supercars’. Further, the coin collection features ‘Supercars’ as the most prominent element on the coin pocket (with the words ‘60 Years of Australian Touring Car Champions’ in small text underneath). The actual coins only refer to the acronym ATCC, not ‘Australian Touring Car Championship’. There is also no information regarding the number of coins produced or sold by the Australian Mint.

EIA

18.     Mr Washington declares that the Applicant was established to develop, promote, and conduct motor racing events in Australia and that since March 2020 it has been actively developing a product called the Australian Touring Car Championship which is scheduled to commence during 2022. Mr Washington provides information regarding the Applicant’s history in conducting motorsport events, and annexes drafts of the Event Operations Manual and Crisis Communication Plan for the proposed competition to be conducted under the Trade Mark.  

19.     Mr Washington declares that a ‘touring car’ in the world of motorsport has a particular meaning, being a manufacturer’s production motor vehicle available to the public but modified for racing to include safety items including, amongst other things, a roll cage and motor racing harness. Mr Washington contrasts a touring car with a vehicle used in the Supercars series, which he states are hybrid vehicles built and raced according to prescribed specifications.

20.     Mr Washington refers to a previous unsuccessful application by the Opponent to register the words ‘Australian Touring Car Championship’ as a trade mark. The application (number 849053) was filed in 2000 and lapsed in 2002.

21.     Mr Washington disputes that the winner of the Opponent’s Supercars Championship is given the title of Australian Touring Car Champion, and contends that the winner is in fact referred to as ‘Supercars Champion’.  Mr Washington annexes copies of the Supercars Press Releases regarding the Supercars Gala Awards and trophies for 2018 and 2019, which do not refer to the ‘Australian Touring Car Championship’ or ‘Australian Touring Car Champion’.  

22.     Mr Washington refutes various claims made by the Opponent, including that the public would associate the Trade Mark with the Opponent, or consider that the Applicant would be delivering the Opponent’s accredited motorsport services. Mr Washington also refers to the fact that the Applicant has obtained sanctioning, insurance, and other services from a competitor of the Opponent, Australian Auto Sport Alliance Pty Ltd (‘AASA’).

EIR

23.     Mr Arocca in his second declaration responds to and makes criticisms of various statements made by Mr Washington in the EIA, expresses his views on the Applicant’s business, and details previous interactions between the Opponent and the Applicant / Mr Washington. Mr Arocca also provides information regarding the AASA and how it differs from the Opponent.

24.     Overall, the information contained in Mr Arocca’s second declaration (particularly criticism and concerns regarding the Applicant’s business, conduct, and motivations) is of little relevance to the grounds of opposition, or otherwise does not advance the Opponent’s case. It is also not necessary to repeat the opinions expressed by the Opponent regarding the Applicant and others given that such information has no bearing on the criteria for deciding ss 43 and 60.

25.     To the extent that Mr Arocca’s second declaration contains material in the nature of legal submissions, these have been taken into account in reaching my decision.

Discussion

Section 60

26.     To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Trade Mark is likely to deceive or cause confusion.

27.     It is not necessary for the Opponent to establish that the trade mark relied on by the Opponent as the basis for this ground and the opposed Trade Mark are deceptively similar, or that the relevant goods or services of the parties are similar or closely related. However, the greater the similarities in the respective trade marks and goods or services, the more likely the existence of a reputation in the trade mark relied on by the Opponent is to give rise to a likelihood of confusion. 

28.     In McCormick & Co Inc v McCormick, Kenny J considered the requirements for establishing reputation. Her Honour said:

It may be correct to say, as counsel for Mary McCormick did, that the volume of the company’s sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company’s products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:

[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 the 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.

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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.[4]

[4] [2000] FCA 1335, [85]-[86].

29.     In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:

The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[5]

[5] [2019] FCA 923, [83] (O’Bryan J).

30.     The Opponent relies on reputation in the trade marks ‘Australian Touring Car Championship’ and ‘Australian Touring Car Champion’ as the basis for this ground.

31.     I am satisfied that there was use of ‘Australian Touring Car Championship’ by the Opponent as the primary brand for a touring car competition held in Australia in between 1960 and 1998, and the winner of that competition was referred to as the ‘Australian Touring Car Champion’. I am also satisfied that there has been use of ‘Australian Touring Car Championship’ between 2000 and the Relevant Date including on the trophy awarded to the driver of the variously named V8 Supercars championships over this period. However, establishing use in itself does not suffice to establish reputation at the Relevant Date, which is more than 20 years after ‘Australian Touring Car Championship’ ceased to be used as the primary brand of the Opponent’s sanctioned competition.

32.     It is clear from the evidence that it is various ‘Supercar’ formative brands that have been primarily used to distinguish the motor racing competition sanctioned by the Opponent over the last 20 years. Further, the Opponent has been economical with its evidence, and in particular, has not provided any relevant metrics (e.g. crowd attendances, television viewership numbers, revenue or promotional expenditure) from which I can objectively determine the extent of use of, and associated reputation in, ‘Australian Touring Car Championship’ and/or ‘Australian Touring Car Champion’ between 1960 and 1998. As such, it is difficult to quantify the level of reputation that existed at the Relevant Date which is residual from the earlier period of use between 1960 and 1998. While I can make reasonable inferences based on the modest evidence filed by the Opponent, and on my own personal knowledge of the Australian Touring Car Championship, such inferences alone do not negate the significant lack of probative commercial information for the period 1960-1998, particularly given such evidence was presumably available to the Opponent.

33.     The evidence provided by the Opponent also indicates only sporadic and occasional reference to the ‘Australian Touring Car Championship’ or ‘Australian Touring Car Champion’ since 1998. While it appears there is some level of recognition of the term ‘Australian Touring Car Championship’ and ‘Australian Touring Car Champion’ and some esteem associated with these terms (particularly given that ‘Australian Touring Car Championship’ appears on a major sporting trophy), it is not possible on the evidence before me to conclude that at the Relevant Date there existed a reputation in ‘Australian Touring Car Championship’ or ‘Australian Touring Car Champion’ in the sense required by s 60, i.e. as trade marks. This is particularly so given the emphasis on the Supercars brands over the past 20 years and the fact ‘Australian Touring Car Championship’ and ‘Australian Touring Car Champion’ are highly descriptive terms. Further, while the Opponent alleges that it is widely recognised that the winner of the Supercars Championship is the ‘Australian Touring Car Champion’, recent evidence substantiating this claim is minimal.

34.     As I am not satisfied that reputation exists in either of the trade marks relied on by the Opponent, the ground under s 60 is not established.

Section 43

35.     To establish this ground, the Opponent must show that there is a connotation within the Trade Mark and, because of this connotation, the use of the Trade Mark would be likely to deceive or cause confusion.

36.     In the SGP, the Opponent alleged that use of the Trade Mark may lead to persons drawing the conclusion that the Applicant is endorsed by or affiliated with the Opponent, or that consumers may assume services provided the parties may originate from the same source, or that failures by the Applicant to deliver motorsport services of a standard normally expected of the Opponent could be damaging to the reputation of the Opponent.  

37. Section 43 of the Act is concerned with a connotation arising from the trade mark itself, not from a likelihood of deception or confusion arising as a result of similarities between a trade mark and another trade mark.[6] The allegations made by the Opponent, which are based on the contention that consumers associate the terms ‘Australian Touring Car Championship’ and ‘Australian Touring Car Champion’ with the Opponent due to long use over many years, are more relevant to s 60. These claims have been addressed above.

[6] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J); Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720, [43] (Wilcox, Kiefel & Emmett JJ).

38. For the purposes of s 43, I consider the meaning of the Trade Mark is clear. It refers to a touring car championship conducted in Australia. The provision of such a competition is the stated intention of the Applicant, and also falls within the scope of the Applicant’s Services. The Trade Mark does not to my mind convey any other meaning. As such, there is no connotation within the Trade Mark itself that I consider would give rise to a likelihood of confusion amongst consumers of the Applicant’s Services.

39. For the reasons given above, the s 43 ground of opposition is not established.

Decision and costs

40.     The Opponent has not established either of the grounds of opposition. As such, my decision is to register the Trade Mark.

41.     Noting the appeal period, the Trade Mark should proceed to registration one month from the date of this decision. If the Registrar of Trade Marks is served with a notice of appeal before that time, registration should not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the opposition should be in accordance with the Court’s order or direction.

1. The Applicant in the notice of intention to defend requested an award of costs. Costs generally follow the event, and I see no reason to depart from the general rule. As such, I award costs against the Opponent.

   Blake Knowles

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   18 July 2022