Deutsche Telekom AG v E! Entertainment Television Inc

[2006] ATMO 33

TRADE MARKS ACT 1995

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

Re:Opposition by Deutsche Telecom AG to registration of trade mark application 848794(41) E! Online (Logo), proceeding in the name of E! Entertainment Television Inc.

Delegate:

Iain Thompson

Representation:

Opponent

Written submissions by John McCormack of Griffith Hack.

Applicant

Deborah Jackson & Martin Pollack of Spruson & Ferguson

Decision:

1. sections ss41, 44, 60 not established.
2. Costs awarded against opponent

Background

1.    E! Entertainment Television Inc., of Los Angeles, California ('the applicant') has filed an application to register a trade mark, current details of which are:

App No:  848794

Filing Date:  1 September 2000

Acceptance Advert:  03 May 2001

Services:Class: 41:  Providing gossip, celebrity news, entertainment news and movie, television and music information through a global computer on-line network

Trade mark:  

2. On 3 August 2001 Deutsche Telekom AG, ('the opponent') filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. While the Notice cites several grounds of opposition, those under sections 41, 44 and 60 of the Trade Marks Act 1995 (‘the Act’) were pursued in written submissions by the opponent at the hearing.

3.    For the sake of completeness, I note that those grounds which were not pursued have not been established.

4. Evidence in support and evidence in answer was duly served and filed according the Act and regulations thereto.

5.    The hearing was held before me, as a delegate of the Registrar of Trade Marks, in Sydney, on 15 March 2006.  John McCormack of Griffith Hack filed written submissions for the opponent.  Martin Pollock and Deborah Jackson of Spruson & Ferguson represented the applicant.

Evidence

6.    In summary, the evidence comprises:

Declarant	Position	Date made	Exhibits
Evidence in Support
John David McCormack	Trade Mark Attorney	12 December 2002	A
John David McCormack	Trade Mark Attorney	3 July 2003	B
John David McCormack	Trade mark Attorney	31 December 2003	C
Evidence in Answer
Deborah Renate Charlotte Jackson	Trade Mark Attorney	27 January 2005	DRCJ-1 to DRCJ-4
Jeff Mayzurk	Vice President of applicant	31 January 2005	JM-1 to JM-10
Evidence in Reply
John David McCormack	Trade Mark Attorney	10 June 2005	A

7.    The following synopsis is my understanding of the most salient points of the evidence and I will refer further to the declarations if it is necessary in my discussion of the issues.

8.    The opponent is a large telecommunications company and Internet service provider based in Germany.  It has several Australian trade mark registrations which it states are relevant to these proceedings including:

Reg Number  673935

Priority date:  3 October 1995

Goods/Services:  Class: 9 Electric, electronic, optical, measuring, signalling, controlling or teaching apparatus and instruments; apparatus for recording, transmission, processing and reproduction of sound, images or data; magnetic or optical data carriers; automatic vending machines and mechanism for coin operated apparatus; data processing equipment and computers

Class: 16 Printed matter; instructional and teaching material; stationery

Class: 36 Financing services; real estate services

Class: 37 Construction, maintenance, repair and installation of telecommunication equipment, including networks, apparatus, and instruments, and of computer networks, computers, computer hardware and software

Class: 38 Telecommunication services including rental of apparatus for telecommunications

Class: 41 Publication and issuing of printed matter, including issuing of books, magazines, journals, manuals, brochures and leaflets

Class: 42 Computer programming, database services, rental of data processing equipment and computers including rental of access time to and operation of databases and rental of computer hardware and software, planning and design of equipment for telecommunications, including communication networks, apparatus and instruments

Trade Mark:  

Reg Number  673942

Priority date:  3 October 1995

Goods/Services:  See 673935, above

Trade Mark:  T-ONLINE

Endorsements:  Provisions of subsection 41(5) applied

Reg Number  915531

Priority date:  6 June 2002

Goods/Services:  See 673935

Trade Mark:  T-online

Endorsements:  Provisions of subsection 41(5) applied

9.    I understand from the evidence that the opponent’s trade mark ‘T-online’ is used primarily in relation to services concerning the opponent’s Internet portals in Europe provided at

10.   The opponent has, from time to time, used the trade mark ‘T-online’ (‘the opponent’s trade mark’) in respect of services provided via the Internet which originate in Australia and are provided or accessed in Europe.  These services were typically provided in relation to sporting events such as road bicycling events, the Olympic Games and so forth.  In some of these sporting events, the athletes wore clothing bearing the opponent’s trade mark and photographs of the athletes so adorned have been handed out to the Australian public at these events.

11.   While the opponent has an Australian website, this site does not advertise goods or services but provides links to the opponent’s German websites.

12.   The applicant provides an information and entertainment service via satellite television and online which is available worldwide in 120 countries – this service is also provided within Australia to an Australian audience.  I understand from the Mayzurk declaration that the applicant’s online service is an adjunct to the satellite television service which is available to Australia ‘pay tv’ subscribers and that it provides information about the entertainment industry, film stars and so on.

13.   The applicant operates an Internet website which has a ‘splash page’ specific to Australia which has approximately 224,000 hits per month.

14.   This issue is one of several disputes around the world between the parties.  The opponent has unsuccessfully opposed registration of the applicant’s trade mark in Europe – Deutsche Telekom AG v E! Entertainment Television, Inc 991/2004 ‘(the OHIM decision’) and in Thailand –Deutsche Telekom AG v E! Entertainment Television No 205/2545.  The opponent was also unsuccessful in infringement proceedings against the applicant in Germany – Deutsche Telecom v E! Entertainment Television Inc of 25 May 2004, docket number 312 0 774/03.

Comment on use

15.   While Mr McCormick exhibits much documentation to his declarations showing the extent of the opponent’s reputation in Europe, and also the extent of the use of its trade mark ‘T-online’ in Germany and Europe, the opponent’s trade mark does not appear to have been used in trade within Australia.  Rather, it seems to have appeared on some sportsmen and possibly on some related promotional matter in order that the trade mark might appear in images transmitted to Germany or Europe.  This public appearance of the trade mark is not use in order to distinguish goods or services in the course of trade within Australia[1]  Thus, the trade mark does not appear to have been used in trade in Australia. 

[1] See, for example Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278, where Lander J said, “It will only be a mark if the intention is to use the mark to distinguish goods or services dealt with or provided by the applicant from those dealt with or provided by any other person.”

16.   Neither do I consider that the provisions of section 228 assist the opponent.  In considering whether the opponent’s services have been exported from Australia, the question might be answered by considering whether, in the possible export of the services from Australia, there was a financial transaction involved or some recompense from some person other than the opponent for the provision of the service.  Either the answer to this question is in the negative, or, alternatively, the opponent has not established that there was a fee charged by it for this service.  The services have not, thus, been exported from Australia.

17.   In submissions, Mr McCormick points to the information service that is provided by the opponent through the Internet portal and submits that the access by Australians of this website should constitute a use of the trade mark in Australia. 

18.   I do not agree.  In Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471 Merkel J stated:

In summary, the use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded.

19.   In an unpublished decision involving these parties in a related section 92 matter I observed:

It would logically appear that the upload of the [opponent’s] trade mark from Australia to the German website does not constitute use of the trade mark in Australia; neither does its accidental viewing by Australian sporting spectators when the trade mark is being used to support, advertise or promote goods and services in a country outside Australia. Absent of genuine intention to target and engage the Australian public in trade, the accidental viewing of a trade mark on the Internet on sports teams, or on television broadcasts, does not constitute use of the trade mark in Australia. [parenthetical material added]

20.   It thus appears from the evidence that the opponent has not used its trade mark in Australia.

21.   It is possible, of course, that reputation of a trade mark in Australia might be established by use overseas despite the fact that the opponent does not carry on business in Australia: ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193 at 202 and 231–2. However, there is no evidence as to how many Australians might have been exposed to the opponent’s trade mark and logic appears to dictate that most people, when travelling overseas, would access their email via either their own service provider or a ‘free’ service such as Yahoo, Hotmail, Gmail or Lycos.

22.   Accordingly, the evidence does not establish that the opponent has used its trade mark in Australia or that its trade mark has a reputation in Australia.

23. The evidence therefore will not support grounds in terms of section 60 of the Act.

Section 41

24. Section 41 provides a scheme for the assessment of the capacity of a trade mark to distinguish goods or services (whether this be the trade mark’s inherent capacity or that gained through use) and for the acceptance for possible registration of those trade mark which are capable of distinguishing goods or services.

25. The operation of section 41 is described in Blount Inc v Registrar of Trade Marks [1998] 440 FCA by Branson J.

26.   The test to be applied, in terms of subsection 41(3) is that in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, where Kitto J said:

“... the question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it”.

27.   The opponent not led any evidence to support this ground and, in circumstances where the onus is clearly on the opponent to establish its ground[2], I should be most hesitant to further discuss the ground under section 41. There is no evidence to displace the original conclusions of the examiner. In addition, since a delegate has already determined that the mark is capable of distinguishing the services of the applicant it should be the case that a party should adduce evidence to show that other traders would need to use the trade mark. However, while the opponent should not establish this ground in the absence of evidence that supports it, I am mindful that an appeal is possible from this decision and make the following observations.

[2] Kowa Co Ltd v NV Organon [2005] FCA 1282

28.   The opposed trade mark is comprised of material which on their own lack capacity to distinguish the applicant’s services.  However, I am not to consider the trade mark in relation to each of the indicia which individually comprise it and conclude, on the basis of the lack of capacity to distinguish of those indicia, that the whole of the opposed trade mark suffers from the same malaise.  On this basis, hardly any word trade mark could ever be considered to be prima facie registrable – as in the hypothetical example WOMBAT which is comprised of the alphabetical letters W and O and M (etc) which, on their own as individual letters, have no inherent capacity to distinguish.  Rather, I am to consider the trade mark as a whole[3] and consider whether there is a ‘gestalt’ that forms a trade mark which has the inherent capacity to distinguish the applicant’s services.

[3] Re Diamond T Motor Co’s Application (1921) 38 RPC 373

29.   The placement of the alphabetical letter ‘E’ within an exclamation mark is most unusual and is not one that can be achieved by using normal font.  It is difficult to understand why anyone (apart from the applicant) would require to use this ‘device’ in respect of their similar services.  The word ‘online’, although lacking in capacity to distinguish the relevant services, adds to the inherent capacity of the trade mark to distinguish.

30.   I thus can think of no reason why any trader would, without improper motive, need to use the opposed trade mark in the ordinary course of trade in respect of the services in question.  In fact, the chances of any other trader innocently using the opposed trade mark on its similar services must be minuscule.

31.   The opponent has not established this ground of opposition.

Section 44

32. Section 44 of the Act relevantly provides:

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

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

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

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

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

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(2).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

33.   Given that the priority date of the opponent’s registrations are before that of this application, the questions here resolve themselves to those of the similarities of the services and the trade marks in question.

Similar services

34.   Mr McCormack did not make any submissions concerning the similarity of the services.

35. Section 14 of the Act provides:

(2)      For the purposes of this Act, services are similar to other services:

(a)         if they are the same as the other services; or

(b)         if they are of the same description as that of the other services.

36.   The expression ‘services of the same description’ received judicial attention in Mid Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] 1616 FCA where the Full Bench observed:

The question whether two sets of goods are "of the same description" has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606 the High Court said this:

"There may be many matters to be considered apart from inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In Re Jellinek's Application [(1946) 63 RPC 59]. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's case the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: `In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade ...'. "

Similarly (in a passage cited by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227 at 240) Lord Evershed MR said in Re J Lyons & Co Ltd's Application [1959] RPC 120 at 128:

"In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases ... one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged ... `in a business sense'; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the Trade Marks legislation Parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods ... . The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited ... lend some support to the view that the phrase `goods of the same description' ought not to be given too restrictive a construction - not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other."

We accept that these principles, subject to any necessary modification, apply in relation to services. But they do not advance MID's argument.

For reasons that have already been given, the services involved in managing an hotel have different characteristics than property management services. If, as we have held, particular incidental services take their character from the whole, the position is not altered by the fact that managing an hotel may involve the performance of incidental services akin to those carried out by property managers.

This conclusion is reinforced if, as Southern Cross suggests, the proper approach is that attention should be directed to the "trade channels" through which the services are provided. It is not difficult to infer that hotel management is a specialised undertaking, ordinarily carried out by different entities than those involved in providing property management services, such as real estate agents or shopping centre managers. Partly for this reason, it is difficult to regard hotel managers as being engaged in the same trade or industry as those providing property management services.

37.   The opponent’s services in Class 41 are:

Publication and issuing of printed matter, including issuing of books, magazines, journals, manuals, brochures and leaflets

38.   The applicant’s services in Class 41 are:

Providing gossip, celebrity news, entertainment news and movie, television and music information through a global computer on-line network

39.   While the two processes of assembling information for print or alternatively for dissemination via the Internet is similar, the media and hence trade channels through which they are provided to the public appear to me to be quite different.  The opponent has not led any evidence to show otherwise and, in the absence of such evidence, it is better to accord with my own knowledge of the world rather than to hypothesise as to what otherwise might be the case.  Accordingly, I do not find that the services of the parties are different from each other – rather, I consider that the opponent has not established to my satisfaction that the services are of the same description.

40. It follows that the opponent has not established its opposition under section 44 of the Act.

Deceptive Similarity

41.   For the sake of completeness, I will also note that I do not consider the trade marks of the parties to be deceptively similar for the following reasons.

42. The expression ‘deceptively similar’ is defined within section 10 of the Act which provides:

10  Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. As stated by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

2. The approach to these considerations was discussed by Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, where he said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

   45.   The only similarity between the trade marks of the parties ‘online’.

   46.   In relation to the word ‘online’, and my finding, it is convenient to adopt the reasoning of the OHIM decision in relation to the opponent’s opposition to the EU registration of the applicant’s word-form trade mark ‘E! ONLINE’ to which I have added my own footnotes:

   Moreover, when comparing trade marks it must be considered whether any of their elements could be deemed descriptive of the kind, quality and/or intended purpose of the goods and/or services. If any element of the trade mark can be considered as being a descriptive or generic term for the goods or services protected, then its importance in the comparison will be diminished.[4]

   In the present case, both marks have the word “ONLINE” in common and differ in their first letter and their separating elements.

   According to , the word “ONLINE” means “connected to the computer (said of peripherals); or connected to a computer network”. Taking into account that the services applied for are provided through a global computer on-line network as well as the fact that the opponent’s business activity is mainly telecommunications, the term “ONLINE” is clearly descriptive of the services involved and consequently, it is devoid of distinctive character. Apart from this, this word “ONLINE”, the marks only consist of a single letter followed up by a hyphen in the case of the earlier mark or an exclamation symbol in the case of the CTM application.

   Thus, taking into account the descriptive character of the word “ONLINE” and that one letter is per se very weak and may not, in principle, serve in trade to distinguish the goods of one undertaking from those of other undertakings, the Office considers that the distinctive powers of the marks at hand reside in the particular combination of these individual elements.

   The possible association of the letters “T” and “E” with the idea of “telecommunications” and “electronic” or “entertainment” suggested by the opponent would make even clearer the weak distinctive character of these letters.

   Therefore, the identical element “ONLINE” of both marks provides them with phonetic, visual and conceptual similarities. However, as the marks only coincide in a non distinctive element, the existing differences are sufficient for the public to distinguish between them. These differences, as said above, consist of their different first letter and their different separating elements, these being a hyphen which denotes the presence of two joined elements in the earlier mark, and an exclamation symbol that introduces the idea of emotion in the CTM application. Moreover, these differing elements are placed at the beginning of the marks, which is the part that firstly catches the consumer’s attention.[5]

   Taking into consideration all the above, the Office considers that the marks have a dissimilar overall impression despite the fact that they have the word “ONLINE” in common.

   [4] See for example Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536; The Coca-Cola Co of Canada Ld v Pepsi-Cola Co of Canada Ld (1942) 59 RPC 127 and Sports Café Ltd v Registrar of Trade Marks (1998) 42 IPR 552 (‘Sports Café’).

   [5] See, for example, Re London Lubricants (1920) Ltd's Application [1925] 42 RPC

   47.   Here, the opponent’s difficulties in establishing its opposition are substantially greater as it is the logo form of the applicant’s trade mark which it now opposes.

   48.   The trade marks are not deceptively similar and, as I have noted above, the services are provided (according to the registrations of the opponent and opposed specification of the applicant)[6] in different marketplaces through different trade channels.

   [6] Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8.

   49. The opponent has not established its opposition in terms of section 44 of the Act.

   Decision

   50. Section 55 of the Act provides:

   55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

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

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

   Note:  For limitations see section 6.

   51.   Subject to the opponent notifying the Registrar of an appeal against my decision within one month of the date of this decision, the application may proceed to registration.  If such appeal is notified and not withdrawn, the application should be dealt with as the Court directs.

   Costs

   52.   The applicant, having been successful in these proceedings is entitled to its costs which I order at the official scale against the opponent

   Iain Thompson

   Hearing Officer

   Trade Marks Hearings

   10 April 2006