Eagle Boys Dial-a-Pizza Australia Pty Ltd v Domino's Pizza Inc and Domino's Home Delivery Pty Ltd

[1995] ATMO 18

TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS,
WITH REASONS

Re:      Opposition by Domino's Pizza Inc and Domino's Home Delivery Pty Ltd to the registration of application 601960 in the name Eagle Boys Dial-a-Pizza Australia Pty Ltd.

Background

On 18.11.93, the above trade mark application was advertised as having been accepted for registration in the name of Eagle Boys Dial-a-Pizza Australia Pty Ltd ("the applicant").  The trade mark the subject of the application, which was lodged on 6.5.93, is the word DOMINATOR and the application is in respect of all goods in class 30, including pizza and garlic bread, but excluding flour. 

Registration of the application has been opposed, as provided for by sub-section 49(1) of the Trade Marks Act 1955, by both Domino's Pizza Inc ("Domino's") and Domino's Home Delivery Pty Ltd, on grounds which, as argued at the hearing, come down to three; that is:

that the applied-for mark is too close to the marks DOMINO'S and DOMINO'S PIZZA, registered by Domino's

that the mark DOMINATOR would cause deception or confusion in view of the existing reputation of DOMINO'S and/or the mark DOMINATOR, the latter trade mark being used in the USA by Domino's

that because of prior use of DOMINO'S, the applicant cannot claim to be the proprietor of DOMINATOR.

For the purposes of the present decision, I should note that Domino's Home Delivery Pty Ltd, ("the second opponent") is a registered user of the various marks owned by Domino's.  The opposition lodged by the second opponent is separate from, but essentially the same as, that of Domino's.  It has relied on the evidence served by Domino's, with some additional material to make plain the fact that the second opponent is a registered user of various of Domino's trade marks.

After the evidence stages provided for in the regulations, the matter was set down for hearing on 21.2.95.  Domino's and the second opponent were both represented by Ms Sandra Gibbons, a solicitor of Baker and McKenzie .  The applicant was represented by Mr Bill Bennett, a patent attorney of the attorney firm of Thompson Pizzey. 

Having heard the parties, I turn to the evidence, which I have assessed on its merits in the light of the submissions of both sides.

Domino's Pizza:
One leg of Domino's case rests on the claim that, at the relevant date, the date of application, there was a substantial reputation in the trade mark DOMINO'S.  Mr Bennett conceded that this was so, and that DOMINO'S was well known among relevant customers as a chain of pizza restaurants.

The survey:
Part of Domino's evidence was a survey of some 85 people.  These people were approached by two of the paralegal staff of Baker and McKenzie.  These two staff members declare that they conducted a random survey of people aged between 18 and 35.  Mr Bennett, on behalf of the applicant, was very critical of this survey, and I think with good reason.  I can give no weight at all to the survey because of defects in its methodology; it will be timely to deal, once and for all, with what it purports to show.

Mr Bennett was critical of the sample size, and I must agree that there seems to be no reason why I should find a sample of this size convincing.  It may be, of course, that in fact such a sample can reliably probe the opinions of customers and potential customers in the main, but if so there would need to be some authoritative evidence, for example the declaration of an experienced statistician, to that effect.  The Trade Marks Office does not necessarily have expertise in actuarial matters, certainly I, in my capacity as a delegate of the Registrar, do not, and these aspects must generally be made good by evidence. 

However, my concerns are as much with the methodology of this survey.  As Mr Bennett noted, the survey appears to have been conducted in the central business district of Sydney, an area where the applicant's business is not represented.  In itself, this is not necessarily a problem:  such a context is one which I must consider in looking at all the possibilities of notional fair use of the applicant's mark. 

I must, as Ms Gibbons argued, disregard the fact that the applicant may be able to do business in ways that do not lead to conflict with Domino's.  I therefore approach the survey to see what light it can shed on the outcome of what the applicant may do, hypothetically, if it obtains registration.  Such a broad inquiry would include, inter alia, the likely views of people (such as those surveyed) who perhaps knew of the DOMINO'S trade mark but not necessarily of the applicant or its DOMINATOR.

But the fact is that, if the applicant is not doing business in the CBD of Sydney, Domino's may be.  There is no evidence as to where the random survey was taken and, while the paralegal employees who conducted the survey were very methodical in recording how and in what order those surveyed were questioned, there is no evidence that they avoided asking questions of people anywhere near a Domino's restaurant or a Domino's advertisement. 

That is, I think, a major failing.  If it were not, then the first significant question which they ask would be.  That first question is in fact a double question, the second part of which will contaminate an inherently suspect first part.  The question was apparently asked in full:  "If you became aware of a pizza being sold under the name "Dominator", would you associate it with a particular pizza chain.  And secondly, if so, what would be the name of that chain".  There is an immediate suggestion, where perhaps there was none previously, of a possible association between Dominator and a single pizza restaurant chain, one chain only, and a chain that it might be possible to name.  The answer given thus very likely reflects the asking of the question, not necessarily the natural or uncoloured opinion of the person surveyed.

Secondly, a vital piece of balancing information was not collected.  It is possible to see, in some depth, the assessed views of those who would associate a DOMINATOR pizza with a restaurant chain.  Those people are asked subsequent questions.  They are asked to name the chains with which they are familiar, and indeed most of them are aware of the DOMINO'S chain.  But no further questions are asked of the ones who would not make the initial association with any chain at all.  I am not able to see if any of those people knew of the DOMINO'S chain.  It would no doubt have been interesting and relevant to see how many of those surveyed knew, in advance, of the chain in question and yet still, despite what I consider to be a leading question, refused to make an association between Domino's and DOMINATOR.

Thirdly, some of the data appears to be skewed.  Two people conducted the survey, and their results seem to me to differ markedly.  Here, I do not speak as a statistician, and it may be, again, that the results are as they could be expected to be through normal actions of the rules of probability.  None the less, unexplained discrepancies would reduce the weight I could give to a survey, and in this instance the discrepancy contributes to my decision to ignore the survey in making my final decision. 

To be specific, one of the poll conductors, Ms Button, surveyed 47 people, 15 of whom did not associate DOMINATOR pizzas with any particular chain.  The second pollster, Mr Hunter, on the other hand, encountered only two people out of 38 who would not associate DOMINATOR pizzas with any particular chain.  Of those who would make the association, 31 of 36 named DOMINO'S as the associated chain, so the group he surveyed was perhaps no more or less familiar with DOMINO'S than were those surveyed by Ms Button.  My concern, though, is with the apparently very different outcome from the first and leading question.  Apparently Mr Hunter encountered a group of people with a significantly different view of the word DOMINATOR, and I am left to speculate on the possible causes of this:  location of survey venue, way of asking the question or small sample size leading to a simple fluke.  None of those possibilities supports the accuracy of the survey.

DOMINATOR in the USA:
In the United States, Domino's has used the trade mark DOMINATOR since October 1991, in which year 31 stores in California offered a pizza under that trade mark as part of the DOMINO'S business.  This pizza was available in either medium or large sizes, but in April 1993 the trade mark was revamped, and used over a wider part of the USA to indicate a rectangular pizza of very large size, 30 inches long by 10 inches wide. 

The only evidenced reference in Australia to that American situation is after the lodgement of the opposed application.  It is in a single article in the Sydney Morning Herald of July 11 1993.  The article is clearly directed at the US situation, though it notes that Pizza Hut's equivalent of the DOMINATOR, called BIG FOOT, is "already selling in Australia".

Ms Gibbons noted that there is a great deal of tourist travel between the USA and Australia, particularly to the West Coast, where the DOMINATOR was first marketed in the USA.  However, there is no evidence that there was any significant reputation in the trade mark DOMINATOR, in Australia, at the time that the opposed application was filed.  Nor is there any reason why I should expect this US trade mark, applied only to one variety of pizza sold by a pizza chain in California, to be significantly well-known in this country at that date.  This was after only some two and a half years of use, albeit with brief and more widespread use from April 1993.

Decision

Deception and Confusion
The matters to be considered under this heading are of concern under ss 28 and 33 of the Trade Marks Act 1955.

Leaving aside the many points of difference between the sections, one of the concerns of s28 is deception and confusion which would arise in practice, given:
i)  the evidenced use or reputation of an opponent's trade marks or business and
ii)  notional fair use of an applicant's mark for the goods covered by the application. 

The concern of section 33, noting the definition of "deceptively similar" in s 6(3), is deception or confusion which would reasonably arise from the notional fair use of an applicant's trade mark in the face of equally notional fair use of the opponent's trade mark in respect of the goods for which it is registered. Section 33 also requires consideration of the extent of overlap or resemblance of the relevant goods, but here that is beyond dispute.

The possibility of deception or confusion, be it relevant to s 28 or to s33, can be disposed of fairly easily. While I agree entirely with most of the principles of law on which Ms Gibbons relied, I do not agree that there is any evidence which can be relied on to stretch them to the present facts. I do not see that, on the evidence as I have weighed it, use of the trade mark DOMINATOR by the applicant would, at the relevant date, the date on which the opposed application was lodged, have caused deception or confusion, either in theory or in practice.

Ms Gibbons argued that there is a degree of resemblance between the trade mark DOMINO'S and DOMINATOR which will result, when the latter trade mark is put into a market already familiar with the former, in deception or confusion.  Her argument was that there was a reasonable probability that consumers would expect, or reasonably speculate about, a link between the two trade marks.  She argued that this would come about quite naturally because of the shared syllables DOMIN-, in a context where DOMINO'S was already well-known.

She relied, in this, on cases such as those listed in Shanahan's Australian Law of Trade Marks and Passing Off, p 181.  Shanahan notes that the sort of deceptive similarity alleged by Domino's can be the result of marks which "appear to be related".  In particular, Ms Gibbons noted the decision in Ravenhead Brick Co Ltd v Ruabon Brick and Terra Cotta Co Ltd (1937) 54 RPC 341. In that case there was actual evidence that those in the trade would, because of the reputation of the opponent's marks, be deceived or confused by a trade mark which was, prima facie at least, safely distinguishable. It was for the deciding judge to accept the trade evidence, and he did so.

Without getting into the fine points of reputation, and whether such an argument can ever intrude into s 33 or is a factor only under s 28 of the Act - see Shanahan p 182 - I have said that I am not at all convinced by the survey evidence put before me by Domino's.  Thus I am able to decide the matter on the conventional inquiries as to the look and sound of the mark in the circumstances in which it will notionally be used, assessing as best I can the reactions of potential buyers. 

I note the caution applied by Justice Gummow when he referred to the uncertainties in our knowledge of the cognitive process through which words are recognised by matching against features which are contained in memory, see Johnson and Johnson v Kalnin 26 IPR 435. None the less, the words DOMINATOR and DOMINO'S do not look or sound more than remotely the same. They have ordinary and very different meanings and in the ordinary course of business they would not, as far as I can see, be confused.

I note that the attention paid to trade marks is often somewhat low, and that customers entering a pizza restaurant, or buying frozen ready-made pizza, or otherwise buying the goods in question, would not always pay the ideal amount of attention to their purchasing.  None the less, even with this minimum level of attention, I do not believe that there is any reasonable likelihood of deception or confusion.  While I note the diverse decisions to which Ms Gibbons referred me, I find that the marks are and will be, all things considered, readily distinguished. 

Nor is there anything about the common features in the mark that should contribute to any reasonable belief - or reasonable doubt, as the matter was put by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry (1954) 91 CLR 592 - of a connection between DOMINO'S and DOMINATOR products. In my opinion, given the two words that make up these trade marks, it is not likely that anyone would reasonably expect the trade mark DOMINATOR to originate from Domino's or have any sort of connection with goods bearing the DOMINO'S trade mark. I simply do not accept that DOMINATOR would - per Ms Gibbons - reasonably be seen as a clever play on DOMINO'S, or that it would be expected to denote a bigger and better DOMINO'S. No doubt all things are possible, and it may be that there will be, in the minds of some customers, some vague speculation about connections with this or that pizza chain. That, however, is no more than a possibility of vague musings, well short of the level of a reasonable doubt.

A spill-over of reputation has been noted in cases such as Pioneer Hi-Bred Corn v Hy-Line Chicks Pty Ltd, (1979) RPC 410, Anheuser-Busch Inc v Castlebrae Pty Ltd, 23 IPR 54, and in a similar Hong Kong case, Tan-Ichi Co Ltd v Jancar Ltd [1990] FSR 151, on all of which Ms Gibbons relied.  However, Domino's cannot succeed here.  At the relevant date any spill-over of the reputation of the U.S. DOMINATOR product into this country was, in all probability, negligible in terms of the overall bulk of the population.  The cases on which Ms Gibbons relied in this respect were all ones where, on the facts, there was a significant spill-over.  Here, any such spill-over would be at most a dubious conjecture.

I therefore conclude that there is no objection to registration under either s 33 or s28.

Proprietorship.

Ms Gibbons did not press this aspect at the hearing.  I do not accept that the use of the trade mark DOMINO'S can defeat a subsequent claim by the applicant to proprietorship of the trade mark DOMINATOR. 

I rely in this on the decision in Karu Pty Ltd v Robert Leon Jose, 1994 AIPC 91-101, in which Drummond J followed Gummow J's decision in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 or 1994 AIPC 91-049. Drummond J comments that Justice Gummow's views on the issue of competing claims between non-identical marks were obiter to the latter decision. None the less, Drummond J applied them directly to the matter before him. He noted, in particular, the portion of Gummow J's decision which reads:

When the decision (Shell Co of Australia v Rohm and Haas Co. (1949) 78 CLR 601) is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase "substantially identical" as it appears in s. 62 (which is concerned with infringement) was discussed by Windeyer J in Shell Oil Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible. There is, as Mr Shanahan points out in his work, p. 158, real difficulty in assessing the broader notion of deceptive similarity in the absence of some notional user in Australia of the prior mark (something postulated by s. 33) or prior recognition built up by user: s.28(a)

On the evidence, it is quite arguable that the applicant knew of the overseas use of the DOMINATOR trade mark, but I do not need to make a finding on that heading.  There is no suggestion that the applicant adopted the trade mark, unused and virtually unknown in this country at the time, as anything more than, at the very worst, an exercise in sharp business practice; see The Seven Up Co v O. T. Ltd 75 CLR 203.

In summary, I dismiss both oppositions and direct that the application proceed to registration.

Costs
Mr Bennett submitted that in the event of it succeeding, the applicant should be awarded its costs in respect of both oppositions as two complete and separate matters.  As that submission was made at the hearing, I will deal with it now rather than leaving it to be dealt with subsequently as an administrative matter.

The perusal of the second opponent's notice of opposition and of its evidence in support were the only points at which the successful applicant would have incurred any significant extra costs in defending its position.  I therefore award the applicant's costs, in respect only of receiving and perusing Domino's notice of opposition and evidence in support, against Domino's Pizza Inc.  I similarly award the applicant's costs, in respect only of receiving and perusing the second opponent's notice of opposition and evidence in support, against the second opponent, Domino's Home Delivery Pty Ltd.  I award one half of all subsequent costs against each opponent.  All costs will, if taxing is necessary, be taxed at the official scale.

T. E. Williams
Hearing Officer
26 April 1995