Double Bay Newspapers Pty Ltd, General Newspapers Pty Ltd and Brehmer Fairfax Pty Ltd Trading as Courier Newspapers v Queensland Newspapers Pty Limited
[2001] ATMO 109
•5 November 2001
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by the Double Bay Newspapers Pty Ltd, General Newspapers Pty Ltd and Brehmer Fairfax Pty Ltd trading as Courier Newspapers to registration of trade mark applications 761444(16), 761446(35), 761447(39) and 761448(42) – Courier Mail series - filed in the name of Queensland Newspapers Pty Limited.
Background
The above-mentioned applications were each filed on 7 May 1998 by Queensland Newspapers Pty Limited (‘the applicant’) to register the series of trade marks appearing below in respect of goods and services which read:
761444: Class 16
Newspaper, printed publications, stationery, paper goods
761446 Class 35
Advertising services including advertising services conducted over the Internet; promotion of education and training, sporting and cultural activities
761447: Class 39
Newspaper delivery services
761448: Class 41
Sponsorship of education and training, sporting and cultural activities
The applications were advertised as having been accepted for registration on 23 December 1999 in the Australian Official Journal of Trade Marks (‘AOJP’) and Notices of Opposition by Double Bay Newspapers Pty Ltd, General Newspapers Pty Ltd and Brehmer Fairfax Pty Ltd trading as Courier Newspapers (‘the opponent’) were filed on 31 March 2000 after an extension of time was sought and granted.
Evidence in support, evidence in answer and evidence in reply was served and filed by the parties as provided for in the regulations. In tabular form, the details of the declarations are:
| Declarant | Known as | Date Made | Exhibits |
| Evidence in Support | |||
| Charles Dennis | Dennis 1 | 25 June 2000 | CD-1 to CD-4 |
| Evidence in Answer | |||
| Lawrence Raymond Burrows (‘Burrows’) Ø Burrows Ø Kenneth Murphy Ø Paul Coleman | Burrows 1 Burrows 2 | 16 October 2000 16 September 1999 | A – I A – F |
| Burrows Ø Peter Camphin | Burrows 3 Camphin | 16 September 1999 13 August 1999 | A – C |
| Burrows Ø Harold Daly Ø Robert Benporath | Burrows 4 Daly Benporath | 16 September 1999 19 August 1999 10 September 1999 | A – C |
| Burrows Ø Patrick McKendry Ø Jeffrey Hopp | Burrows 5 McKendry Hopp | 16 September 1999 15 August 1999 25 August 1999 | A – C A |
| Evidence in Reply | |||
| Charles Dennis | Dennis 2 | A – E |
The hearing in Canberra on 24 September 2001 was before me, as a delegate of the Registrar of Trade Marks. David Logan of Counsel, instructed by Minter Ellison appeared for the applicant. Ron Webb, instructed by David Purvis, Solicitors, appeared for the opponent.
The evidence shows that the applicant publishes a newspaper – The Courier Mail – based in Brisbane. The opponent has three ‘free’ newspapers – The Inner West Suburban Courier, the Wentworth Courier and the Southern Courier around the Sydney area
The Courier Mail trade mark is the masthead of the newspaper and was adopted in 1933 as the result of the amalgamation of two Brisbane newspapers, The Brisbane Courier and The Daily Mail. Since, then, according to the evidence, The Courier Mail has been Brisbane’s only daily newspaper and is distributed both locally and nationally. Much of the advertising in The Courier Mail is national advertising and much of the advertising is placed from interstate – the major source being New South Wales, but also from Victoria, the Australian Capital Territory, Western Australia and South Australia.
The Courier Mail advertises and promotes itself through a variety of means and it sponsors a range of local sporting and cultural organizations and events. It runs an Internet site ( through which it is possible to access the news and features of The Courier Mail as well as to interface with the advertising and editorial departments.
The applicant provides both its own circulation figures and those of the opponent’s publications. This evidence shows that there are nine newsagents within the distribution area of the opponent's Wentworth Courier which also sell the applicant's The Courier Mail.
The opponent’s evidence shows that its Southern Courier had its origins in 1989 via the amalgamation of two publications, the Southern News which was first published in 1955 and the Weekly Courier which was first published in 1918. As of January 1996, says Mr Dennis at paragraph 1(a) of Dennis 1, the trade mark was amended to Southern Courier. Dennis 1 gives the turnover figures and the circulation figures for the Southern Courier.
The Wentworth Courier had its origins in 1961 via the amalgamation of the Double Bay Courier (first published in 1947) and the Wentworth News (first published in 1965). Again, the opponent gives the circulation figures for the Wentworth Courier in dollar figures and also “the revenue from the annual turnover of goods under the trade mark”.
As regards the opponent’s other publication, it was first published in 1984 as The Western Suburbs Courier and its name was changed to that currently used by the applicant in 1993. Again, the applicant provides circulation figures in a dollar amount as well as “the revenue from the annual turnover of goods under the trade mark”.
The evidence in reply of the opponent is opinion evidence of Mr Dennis which challenges the applicant’s evidence that it provides various services.
There are some aspects of the opponent’s evidence that I find surprising. Mr Dennis refers several times to “the revenue from the annual turnover of goods under the trade mark” under which the opponent’s goods are provided. However, my understanding of the evidence is that the opponent’s publications are provided free; I had further understood that revenue for such publications stems from advertising carried by the publications and not from a sale of goods. Also Mr Dennis avers that it his opinion that the opponent’s trade marks “have a substantial reputation and that any use of the trade mark COURIER-MAIL would only lead to confusion and deception of the purchasing public.” However, it is not explained how this can be true now of the applicant’s trade marks and was not true of the opponent’s trade marks when the opponent’s trade marks were adopted the face of the reputation of applicant’s trade mark at that time. Further, I do not think that it is likely that the applicant will cease use of its trade mark if these oppositions are successful.
The trade marks registered by the opponent are:
Reg Number: 659101
Priority Date: 21/04/1995
Goods: Newspapers, periodicals and magazines
Trade Mark: WENTWORTH COURIER
Reg Number: 751790
Priority Date: 30/12/1997
Goods: Newspapers, periodicals and magazines
Trade Mark: SOUTHERN COURIER
Reg Number: 669899
Priority Date: 17/08/1995
Goods: Newspapers, periodicals and magazines
Trade Mark: THE COURIER INNER WESTERN SUBERBS INCORPORATING THE INNER CITY COURIER
The following registrations also occur on the Trade Mark Registration Data Base:
Reg Number: 666807
Owner: Rural Press Limited
Priority Date: 14/07/1995
Goods: Printed publications
Trade Mark: HAWKESBURY COURIER
Reg Number: 679121
Owner: Rural Press Limited
Priority Date: 24/11/1995
Goods: Printed publications
Trade Mark: THE COURIER
Endorsement: Provisions of paragraph 44(3)(a) applied.*
Registration of this trade mark is limited to the state of Victoria.*
Reg Number: 744559
Owner: F Teare Marston Pty Ltd
Priority Date: 23/09/1997
Goods: Newspapers
Trade Mark: THE COURIER
Endorsement: Provisions of subsection 44(4) applied.*
Registration is limited to South Australia.*
I also note now that the word COURIER occurs in the mastheads of a great many different publications – usually those are newspapers. - this is confirmed by the above-mentioned registrations.
Submissions
The submissions of the parties may be broadly summarised as follows. The opponent submits that the applications are caught by the provisions of subsections 44(1) and (2) and that the evidence that the applicant provides does not constitute use in a trade mark sense.
The applicant argues that its trade marks are not caught by the provisions of section 44 viz-a-viz the registrations of the opponent; however, if they are, the provisions of subsection 44(4) were correctly applied and that its evidence of use does constitute use in a trade mark sense.
Section 44
Section 44 of the Act provides:
44 Identical etc. trade marks
(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar goods or closely related services; or
(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1:For deceptively similar see section 10.
Note 2:For similar goods see subsection 14(1).
Note 3:For priority date see section 12.
(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.
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note:For limitations see section 6.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i)the similar goods or closely related services; or
(ii)the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2:For predecessor in title see section 6.
Note 3:For priority date see section 12.
Given that the opponent’s registrations that it relies on have priority dates earlier than those of these applications, and that it was not argued that the trade marks are substantially identical, two issues arise for consideration in terms of section 44:
Are the applicant’s goods and services the same as, or closely related to, the goods of the opponent’s registrations?
Are the applicant’s trade marks deceptively similar to those of the opponent?
In Registrar of Trade Marks v Woolworths [1999] FCA 1020 at paragraph 39, French J observed:
The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as "conceptually distinct" but accepted that one could not be addressed in isolation from the second:
At paragraph 40, His Honour continued:
In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.
Deceptive similarity
Deceptive similarity is a subjective test of similarity. In the words of Mansfield J in Britt Allcroft (Thomas) LLC v Miller [2000] FCA 699 at paragraph 60, “it is really a matter of impression”. In Australian Woollen Mills Ltd v F S Walton and Co Ltd (1937) 58 CLR 641 at 658, the test to be applied was expressed by Dixon and McTiernan JJ at 658:
In deciding this question, the marks ought not, of course, to be compared side by side. 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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. 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. Evidence of actual cases of deception, if forthcoming, is of great weight.
Further, Parker J in the Pianotist case (1906) 23 RPC 774, at 777, stated as follows:
You must take the two [marks]. 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.
I do not believe that the trade marks on which the opponent relies and the applicant’s trade marks are deceptively similar. I have noted, under the heading Evidence, that the word COURIER is common in the mastheads of newspapers. While the use of the word COURIER is not essential to traders in this field in order to describe their goods, it is obvious that a great many traders do use the word. The pattern of registrations on the Register reflects this. The word does, I believe, therefore fall into very much the same class of words as do the words TELEGRAPH, TIMES, HERALD, GAZETTE and so forth which are frequently used in the mastheads of newspapers.
Further, ordinary people, when buying newspapers, are accustomed to distinguishing between newspapers which incorporate the above or similar words into their mastheads. My general knowledge is that newsagents sell a great many newspapers which originate both locally, nationally and internationally and that purchasers do distinguish between them on the basis of combinations of words which include words the same as, or similar to, those listed above. The use of these, or similar words of this type does not, in my experience, give rise to any expectation amongst newspaper purchasers that the commonality of the use of the indicia indicates a commonality of origin. It is, for example, possible to point to a great many newspapers which incorporate the word TIMES in their mast head – however, this occurrence does not give rise to an expectation of a common origin of the newspapers.
The situation may, obviously, be different where there is no other matter in the masthead that enables the purchaser to distinguish between the papers – however, such is not the case here.
As I have found that the trade marks are not deceptively similar, it is not necessary for me to go on and consider any similarity between the goods of the opponent and the goods and services of the applicant.
Decision
The opposition therefore fails on the ground on which it was argued and the applications may, subject to any appeal against this decision which is filed within the time allowed, and on payment of appropriate registration fees, proceed to registration.
I have given some thought as to whether it is appropriate to remove the endorsements under which the applications were accepted. Counsel for the applicant did not make submission on this issue at the hearing. As there are reasons why the applicant might wish to have the endorsement either reamin or be removed, I will allow the applicant four weeks from the date of this decision to advise whether it wishes to have the endorsements removed from the applications.
Costs
Costs may follow the event and the applicant is entitled to its costs in this matter.
Ian Thompson
Hearing Officer
5 November 2001
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