Danjaq, LLC v Great South Enterprises Pty Ltd

[2024] ATMO 195

TRADE MARKS ACT 1995

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

Re:Oppositions by Danjaq, LLC to registration of trade mark applications 2334741 (33) – Special Bond Vodka and 2332548 (33) – Special Bond Gin – both in the name of Great South Enterprises Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: AJ Park

Applicant: Bennett Litigation and Commercial Law

Decision:

2024 ATMO 195

Trade Marks Act 1995 (Cth) - section 52 opposition: s 60 considered and established – registration refused

Background

1. This decision concerns oppositions brought by Danjaq, LLC (‘Opponent’) to the registration of the trade marks (collectively ‘Trade Marks’) which are the subject of the applications detailed below in the name of Great South Enterprises Pty Ltd (‘Applicant’): 

Application Number:	2334741
Filing Date[1]:	15 February 2023
Goods:	Class 33: Vodka
Trade Mark:	Special Bond Vodka

[1] Also known in this decision as the ‘relevant date’ or ‘relevant dates’.  In this decision I have sometimes referred to relevant date in the singular as the relevant dates for each of the Trade Marks are 1 day apart and nothing turns on the distinction.

Application Number:	2332548
Filing Date:	16 February 2023
Goods:	Class 33: Gin
Trade Mark:	Special Bond Gin

2.  The goods for which the Trade Marks are sought to be registered are collectively referred to as the ‘Applicant’s Goods’.  Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  Following the advertisement of the applications’ acceptance for possible registration, the Opponent filed Notices of Intention to Oppose the registration followed by essentially identical Statements of Grounds and Particulars (‘SGPs’) on 16 October 2023.  The SGPs raised grounds of opposition under ss 42(b) and 60.  The Applicant filed Notices of Intention to Defend on 6 November 2023. 

Evidence

1. The parties filed the following evidence in these matters:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
R. Holland Campbell, Attorney-in-Fact of the Opponent (‘Campbell declaration’) (filed in respect of both oppositions)	5 February 2024	A to Z
Evidence in answer
n/a (None filed)
Evidence in reply
n/a (None filed)

1. The entirety of the Campbell declaration, including publicly available information such as the history of the James Bond franchise, is claimed to be confidential.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[2]

   [2] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

2. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

   7.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Opponent requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

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

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

4. The Opponent is a United States company that is the joint legal owner of the BOND and JAMES BOND trade marks (‘Bond Marks’) associated with the well-known film franchise.  

5. The Opponent is the registered owner of the trade marks listed below (‘Opponent’s Trade Marks’).  The Opponent provides evidence of ownership of additional trade marks however these trade marks, not being particularised in the SGP, have no relevance to the present proceeding.

Number	Trade Mark	Priority Date	Goods or Services
894821	JAMES BOND	13 Nov 2001	Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; computer software Class 25: Clothing, footwear, headgear Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees Class 41: Education; providing of training; entertainment; sporting and cultural activities
1585428	JAMES BOND	11 Oct 2013	Class 3: Cologne; Eau de Toilette and Eau de Parfum; shower gel; shaving foams and gel; shaving lotions and creams; body lotions, creams, spray and oils; and personal deodorant

1. The relevant claims/statements in the Campbell declaration can be summarised as follows:

   ·     The Opponent, its predecessors in title and related entities have used, authorised and controlled the use of the Bond Marks worldwide (including in Australia) for over 60 years, in association with the well-known franchise that has produced over 25 films featuring the James Bond character.  The Bond Marks have been extensively used in connection with the films and their promotion as well as related promotional material associated with each film. 

   ·     The Opponent and its predecessors in title and related entities have had a long history of exploiting and licensing the Bond Marks for the purposes of merchandising, particularly in connection with luxury goods featured in the Bond franchise, such with Aston Martin cars and Smirnoff vodka.

   ·     The Bond Marks have been heavily associated with white spirits for over 60 years.  The character James Bond’s favourite drink is a vodka martini, associated with the catchphrase ‘shaken not stirred’, though in the 2006 movie Casino Royal the character indicated that he preferred a martini made with gin and vodka.  The Opponent and its predecessors in title and related entities have been associated with the Smirnoff vodka brand for over 50 years, with the brand featuring heavily in the Bond franchise and in related promotions connected to the release of James Bond movies.   The most recent actor who has played James Bond, Daniel Craig, has also featured in a number of advertisements for Belvedere Vodka.  White spirits such as gin and vodka (and related products) are frequently marketed to Australian consumers in connection with the Bond Marks.  For example, the retailer Dan Murphy offers a martini shaker which offers to create drinks ‘a la Bond style’ and a martini glass advertised with the phrase ‘James Bond made sipping from cocktail glasses look effortlessly cool…’

   12.     The annexures to the Campbell declaration display various marketing material illustrating the fame and extensive use of the Bond Marks, in various formats.  I note that the use of the term JAMES BOND is more common than BOND solus, but there is evidence of a considerable reputation in the word mark BOND in connection with the film series and products licensed in connection with the film series.

   The Applicant

   13.     The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

   Grounds of Opposition, Onus and Standard of Proof

2. As indicated above, in the SGPs the Opponent nominated grounds of opposition under ss 42(b), and 60. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established the ground of opposition pursuant to s 60. Consequently, it is unnecessary that I consider the remaining ground of opposition. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

   15.     The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of s 60.[5]

   Discussion

   Section 60

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

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

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

3. Section 60 is reproduced below:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

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

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

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

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

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

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

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

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

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

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[9]

   [7] [2000] FCA 1335.

   [8] Ibid, [81].

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

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

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

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

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

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

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

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[12]

   [11] [2000] FCA 1587.

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

9. The Opponent has particularised the ground of opposition in the SGP in respect of Trade Mark Application No. 2332548 in the manner set out below.  The SGP for Trade Mark Application 2334741 is identical other than the details of the opposed mark: 

   The trade mark/s had acquired reputation before the priority date of the trade mark being opposed

   1. Trade mark application 2332548 SPECIAL BOND GIN (Opposed Mark) in class 33 (the Application) in the name of GREAT SOUTH ENTERPRISES PTY LTD (the Applicant) has a filing date of 16 February 2023 (Relevant Date).

   2. Danjaq, LLC (the Opponent) is the owner of the trade marks BOND and JAMES BOND (the Opponent’s Prior Marks), the use and reputation for which long pre-date the Relevant Date including for the reasons set out below.

   3. The James Bond character and what would become the James Bond franchise were created by writer Ian Fleming in 1953. The first book in the James Bond franchise was the 1953 published novel Casino Royale, featuring the protagonist James Bond – also simply referred to as Bond. Between 1953 and 1964, Ian Fleming wrote 12 novels and 2 collections of short stories in the James Bond book series. Since Fleming's death, other authors have written continuation works under license in the James Bond franchise.

   4. The first film in the James Bond franchise was Dr. No, starring Sean Connery as James Bond, released worldwide (including in Australia) in 1962. As of the Relevant Date, there have been twenty-five films in the James Bond film series. The James Bond film series is one of the longest continually running film series and has grossed over US$7.67 billion in total at the box office, making it the fifth-highest-grossing film series to date. The James Bond film series has also been released on home media such as video, DVD, and various streaming services.

   5. The Opponent was established in 1962 to hold and control the ownership, use and licensing of the James Bond film franchise.

   6. The James Bond franchise and the Opponent’s Prior Marks have established a substantial reputation and well known standing internationally and in Australia for various film, entertainment media, and licensed goods, services and merchandise which includes (by way of example): apparel, memorabilia, written publications about the film series, adaptations (including across film, television, radio, and so on), music, board games, and videogames (together, the Opponent’s Goods and Services) all of which are marketed and sold under and by reference to the Opponent’s Prior Marks.

   7. The Opponent’s Prior Marks have also established a reputation and become associated in the minds of consumers with various James Bond character traits (such as drinking a martini cocktail) and James Bond sayings (such as, in relation to the martini cocktail, “shaken not stirred”). The Opponent’s Prior Marks therefore also have a prior reputation in respect of the martini cocktail and closely connected goods or services.

   8. The Opposed Mark is deceptively similar to the Opponent’s Prior Marks, each comprising the substantially identical element BOND.

   9. The Opposed Mark has been applied for in respect of goods for which the Opponent has established a prior reputation for the Opponent’s Prior Marks.

   10. Due to the Opponent’s prior reputation in the Opponent’s Prior Marks, use of the Opposed Mark would be likely to deceive or cause confusion.

1. I am satisfied on the evidence before me that both the Bond Marks (and specifically the unregistered BOND Mark) had, before the relevant date, acquired an extensive reputation in Australia in respect of the film franchise, sufficient for the requirements under s 60(a).  The Bond Marks have been used in connection with the enormously popular film franchise for over 60 years, with over 25 movies released under the Bond Marks.  These films have been viewed by generations of movie-goers in Australia and have been the subject of significant promotion.

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

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

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

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

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

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

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

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

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

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

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

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

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

6. Finally I note that in considering whether there is a likelihood of confusion, I must consider the notional use of the Trade Mark by the Applicant, rather than actual use or any reputation in the Trade Mark held by the Applicant.[17]

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

7. In the present case, the Trade Marks and the BOND Mark are undoubtedly similar.  The Trade Marks consist of the BOND Mark along with a descriptive term (gin/vodka) and a laudatory term (special).  While the goods for which the Trade Marks are sought to be registered are different to the entertainment services for which the Bond Marks have a reputation, as a result of the ongoing association between the character James Bond and martinis, the Bond Marks have a particular association with white spirits, reinforced by the 50 year partnership between the Opponent and Smirnoff vodka.  Given this reputation and in particular the association between James Bond/Bond and martini ingredients, the average consumer, when viewing gin or vodka bearing the Trade Marks, is likely to immediately associate the gin or vodka with the Opponent and be caused to wonder whether it might not be the case that goods bearing the Trade Marks come from the same source or that the Applicant’s Goods were marketed under the license of the Opponent.

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

   Decision and Costs

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

   32. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs in respect of trade mark number 2334741 against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations. In respect of trade mark number 2332548 I award costs against the Opponent to be taxed in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd[18]. 

   [18] [2001] ATMO 78 (Hearing Officer Williams).

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   9 October 2024