Enterprise Above & Beyond Pty Ltd v Queensland Rugby Football League Limited

[2018] ATMO 140

TRADE MARKS ACT 1995

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

Re:Opposition by Enterprise Above & Beyond Pty Ltd to registration of trade mark application 1673633 (25) – QLD MAROONS - in the name of Queensland Rugby Football League Limited

Delegate:

Nicholas Smith

Decision:

2018 ATMO 140

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 41, 42, 43, 44, 58, 58A and 62A considered – none established – trade mark to proceed to registration

Background

1.  This decision concerns an opposition brought by Enterprise Above & Beyond Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Queensland Rugby Football League Limited (‘Applicant’): 

Application Number:	1673633
Filing Date:	16 September 2013 (Divisional)[1]
Goods:	Class 25: Clothing; footwear; headgear; hats; beanies; aprons; scarves; jumpers; sporting and athletic clothing in this class; boxer shorts; caps; visors; dressing gowns; bathrobes; jackets; jerseys; children's wear; babywear; cloth bibs; overcoats; casual shirts; shoes; boots; shorts; singlets; socks; swimwear; neckwear; neckties; neckwarmers; pants; tracksuits; T-shirts; underwear; sweatshirts; sweatpants; sweaters; knitwear; shirts; vests; pyjamas; nightgowns; sleepwear; nightshirts; hosiery; weatherproof clothing; rainwear; gloves; clothing belts; thongs; sheep-skin boots; sandals; flip flops (‘Applicant’s Goods’)
Trade Mark:	QLD MAROONS	(‘Trade Mark’)
Endorsements	Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied. Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

[1] The Trade Mark is a divisional application, the parent being Trade Mark no. 1580595.

2.  Following the advertisement on 1 September 2016 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 5 September 2016.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 30 September 2016. The SGP raised grounds of opposition under ss 41, 42, 43, 44, 58, 58A and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 16 November 2016.

Evidence

3.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 23 February 2017.  This evidence consists of a declaration by Fred Nugent, the owner of the Opponent, made on 23 February 2017 and various attachments described as exhibits or annexes marked A-V (‘Nugent 1’).

4.  The Applicant filed Evidence in Answer (‘EIA’) on 23 May 2017.  This evidence consists of a declaration made on 22 May 2017 by Peter Giurissevich, Senior Legal Counsel for National Rugby League Ltd, of which the Australian Rugby League Commission (‘ARLC’) is the sole member, with Exhibits PG-1 to PG-85 (‘Giurissevich Declaration’).

5.  The Opponent filed Evidence in Reply (‘EIR’) on 26 July 2017.  This evidence consists of a declaration made on 24 July 2017 by Fred Nugent, with Exhibits A-L (‘Nugent 2’). 

6.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities at that time.  By letter issuing from IP Australia on 20 September 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  On 7 November 2017 the Applicant filed its submissions (‘Applicant’s Submissions’).  The Opponent did not file any submissions.

7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act 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

8.  I note that  much of the evidence filed by the Opponent is not strictly relevant to the present proceeding, which concerns the opposition to the Trade Mark, and not rights in the phrase ‘State of Origin’, the website at or various other disputes between the Applicant and Opponent.  While I have reviewed all the material provided by the parties,  in my summary of the evidence I will focus on the information relevant to determining the various grounds of opposition to the registration of the Trade Mark.

9.  According to the evidence the Opponent is a distributor and online seller of clothing and other accessories.  The Opponent was established in 1999.

10.     The Opponent is the owner of the trade marks listed below (‘Opponent’s Trade Marks’).  The goods for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods’. 

Number	Trade Mark	Priority Date	Goods
1061690	MAROONS WORKWEAR (‘Workwear Mark’)	23 June 2005	Class 25: Clothing including workwear and safetywear included in Class 25: footwear; headgear
1623852	MAROONLAND (‘Maroonland Mark’)	20 May 2014	Class 25: Football shirts; Polo shirts; Printed t-shirts; Rugby shirts; Shirt fronts; Shirt jackets; Shirts; T-shirts; Tee-shirts; Baseball caps; Bathing caps; Beach caps; Caps (headwear); Desert caps; Flat caps; Slumber caps; Sports caps; Swimming caps; Football jerseys; Jerseys (clothing); Rugby jerseys; Sports jerseys; Polo neck jumpers; Polo sweaters; Polo tops

11.     The Nugent Declarations contain the following claims/statements:

·     The Opponent sells merchandise relating to the rugby league State of Origin (as well as other state of origin matches in other sports) from its website at The Opponent is also the owner of the Queensland business name registration for ‘State of Origin’.  The Opponent has used the term ‘Maroons’ and ‘Queensland/QLD Maroons’ on its merchandise since it commenced trading and certainly since 2003.

·     The Opponent has used the Opponent’s Trade Marks for a number of years on various products and more actively from 2013. It has used the Opponent’s Trade Marks in its eBay shop and in its catalogue.  Over the last two years the Opponent has spent $10,000 in advertising and has a long history of advertising with Rugby League Week magazine.

·     The Opponent was a former distributor of the Applicant’s State of Origin merchandise pursuant to a merchandising agreement but the relationship has broken down and the Applicant seeks to stop the Opponent from selling State of Origin product through its website.  Furthermore the Applicant has purchased products from the Opponent which they have sold on their own website.  Prior to this dispute the Applicant and Opponent had entered into an agreement to allow the website to be the official website for State of Origin products but the agreement has now broken down. 

·     The colour maroon is the official colour of the state of Queensland and is used for Queensland’s sporting teams.  Other sporting bodies need to be able to use the Trade Mark when they play representative sports.

12.     The EIS or EIR does not clearly state when the Opponent started using either of the Opponent’s Trade Marks, but from my reading of the EIS and EIR it appears that there is no evidence of any use from before the relevant date.  The vast majority of clothing offered by the Opponent makes reference to the Rugby League State of Origin and the participants in that series (including the Queensland Maroons) but does not display either of the Opponent’s Trade Marks.  The EIS provides no information about the extent of the Opponent’s sales of products bearing either of the Opponent’s Trade Marks, nor any significant detail about advertising featuring the Opponent’s Trade Marks prior to the relevant date (as opposed to more general advertising undertaken by the Opponent).   

The Applicant

13.     The Applicant is a member of the ARLC and in conjunction with the ARLC, is the body that governs the sport of rugby league in Queensland, including the administration of the Queensland rugby league team that competes in the State of Origin series against New South Wales. 

14.     The Giurissevich Declaration contains the following claims/statements:

·     As related entities, the Applicant licences to the ARLC various trade marks and intellectual property rights held by the Applicant to promote rugby league. The ARLC is also assisted by Velocity Brand Management (‘VBM’) in managing its intellectual property and licensing its intellectual property to third parties.

·     Rugby league teams from NSW and Queensland have competed against each other since 1908 and a regular annual series, that following changes in player selection and eligibility criteria became known as the State of Origin, has existed since 1980.  Since 1908 the Queensland team has worn maroon as a team colour and has colloquially been known as the Queensland Maroons.  The NSW team has worn blue colours and has colloquially been known as the NSW Blues.  The State of Origin is a very popular sporting event, with the 2012 series having over 10 million television viewers across 3 games nationally and three million spectators having attended State of Origin games between 2000 and 2014.

·     The Trade Mark has been used in Australia in various formats by the Applicant and ARLC and their predecessors and licensees for over 100 years and particularly since 1980.

·     The Applicant manages a merchandise licensing program with the assistance of VBM and grants rights to various licensees to use its intellectual property in relation to particular categories of merchandise.  The Trade Mark and variations such as Queensland Maroons and QLD Maroons Team have been applied to a range of products, merchandise and memorability associated with the Queensland Rugby team and sold by the Applicant, related entities and licensees since at least 1980.  This includes a large variety of clothing, sporting equipment and miscellaneous merchandise.  Annexed to the Giurissevich Declaration are copies of various catalogues dating back to 2001.

·     The Applicant has controlled the use of the Trade Mark by way of style guide, sets out exactly how the Trade Mark can be used by its licensees including what goods it can be applied to and how it can be displayed.  The presence of the style guide is evidence that the Trade Mark was created and licenced to third parties by the Applicant since at least 2012.

Grounds of Opposition, Onus and Standard of Proof

15. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 41, 42, 43, 44, 58, 58A and 62A of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

16.     The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is 16 September 2013 (‘relevant date’), being the priority date of the application in Australia.[4]

Discussion

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

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

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

Section 41

17. Section 41 of the Act is set out below:

41 – Trade Mark not distinguishing applicant’s goods or services

(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note:       For goods of a person and services of a person see section 6.

(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)This subsection applies to a trade mark if:

(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)This subsection applies to a trade mark if:

(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances.

Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)the time of production of goods or of the rendering of services.

Note 2: For goods of a person and services of a person see section 6.

Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1: For applicant and predecessor in title see section 6.

Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the

18. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’ which I for completeness that the presumption of registrability also applies at the opposition stage and in an appeal under s56 of the Act.[5]  As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG:

[5] Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300, [27], quoting Pfizer Products Inc v Karam (2006) 70 IPR 59, 602.

Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[6] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

[6] (1998) 40 IPR 498, 505.

The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

(a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

(b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

(c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Applicant’s Services]. [that is, s 41(4) applies][7]

[7] [2017] ATMO 25, [38]-[40].

19.     In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:

(1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

(2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.

(3) The question of whether a trade mark is adapted to distinguish the services of the applicant 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 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.

(4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

(5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

(6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].

(7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

(8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].

(9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].

(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].

(11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71]. [8]

[8] [2017] FCAFC 56 at [236]

20. The ground based on s 41 of the Act is particularised in the SGP as follows:

The applicant TM is needed by other parties and traders, Maroon is the official state colour of Queensland, and other parties need to use the word Maroon / Maroons. This mark can not be allowed to be registered. The applicants TM in its own right is not capable of distinguishing any parties goods and or services.

21. I consider that the Trade Mark is to some extent, but not sufficiently inherently adapted to distinguish in respect of the Applicant’s Goods, that is it falls within the category set out in s 41(4) of the Act. While the Trade Mark does not directly describe the Applicant’s Goods, ‘QLD’ is a common abbreviation for the state of Queensland, and the evidence before me is that ‘Maroons’ is a term commonly used by a number of sporting teams, not just rugby league teams. The Trade Mark only has a limited capacity to distinguish the Applicant’s Goods as it indicates that the Applicant’s Goods concern entities that are referred to by, otherwise associated with, or wear the colour ‘maroon’ and originate from the state of Queensland. Notably, this approach is not dissimilar to the reasoning in the case of Queensland Rugby Football League Limited, Re[9] (albeit in respect of the different rugby league related marks (being STATE OF ORIGIN and QUEENSLAND TEAM and under different legislation), referred to by the Opponent in its evidence.  Thus it will be necessary to consider the Applicant’s evidence of use of the Trade Mark.

[9] [1994] ATMO 18, 98 IPR 603

Evidence of use

22.     The Applicant has put on evidence that the Trade Mark is the name of the Queensland rugby league team that competes in the State of Origin series with NSW.  The name ‘Queensland Maroons’ has been the colloquial name of the Queensland rugby league team since 1907-08 and since 1980 the Trade Mark has been used for the Queensland rugby league team in the State of Origin series. 

23. The Giurissevich Declaration includes the statement that the Trade Mark has been used by the Applicant on television broadcasts, official playing equipment and merchandise since 1980. It contains as exhibits, clear evidence of clothing (shirts, scarves, hats, hoodies, jerseys, jackets and beanies) that have had the Trade Mark applied to the product since 2001 and I accept the statement in the Giurissevich Declaration that the Trade Mark has been used in a similar manner by the Applicant, its predecessors and related parties, since 1980. The Trade Mark, as applied to apparel and merchandise and associated promotional material, is used in a manner that indicates that the product bearing the Trade Mark is an officially licensed product by the Applicant/ARLC, and hence has been used as a Trade Mark pursuant to s 17 of the Act. The Applicant/ARLC licenses the use of the Trade Mark, through its licensing programme managed by VBM which includes a requirement that licensees comply with a style guide that controls the use and display of marks featuring ‘QLD Maroons’ (and other similar marks).

24.     The evidence of use of the Trade Mark between 2001 and the relevant date is substantial with the Applicant/ARLC receiving significant royalties as a result of their State of Origin licensing programs, a portion of which involves the licensing of the Trade Mark.  There is also significant evidence that the Applicant and licensed third parties engage in a considerable amount of paid and unpaid promotion of both apparel and general merchandise featuring the Trade Mark.

25. I am satisfied that as a result of the use of the Trade Mark by the Applicant, ARLC and various authorised users and licensees in respect of a broad range of merchandise and apparel relating to the State of Origin series since at least 2001, the Trade Mark is capable of distinguishing the Applicant’s Goods from those goods of third parties. I find that the Opponent has failed to establish the ground of opposition under s 41.

Section 44

26. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

Section 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)it 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).

(2)…

(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.

Section 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. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

2. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.

3. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks.  The Maroonland Mark postdates the relevant date and hence does not satisfy the first requirement, while the Workwear Mark does have a priority date that is earlier than the priority date of the Trade Mark.  I consider that the goods for which the Workwear Mark is registered are goods of the same description as the Applicant’s Goods, each being goods that fall into the broad categories of clothing, footwear and headgear.  The first and third requirements are satisfied. 

   Substantially identical and/or deceptively similar

4. I will now consider whether the Trade Mark is substantially identical or deceptively to the Workwear Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[10]

   [10] (1963) 109 CLR 407, [12].

5. The concepts of ‘dominant cognitive cues’ and ‘essential features’ of trade marks were considered in the decisions of the Full Federal Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[11] and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’).[12] The court stated in Pham Global:

   [11] [2017] FCAFC 56.

   [12] [2017] FCAFC 83.

   There is no doubt in our view that the Full Court in Accor in using the phrase ‘dominant cognitive cues’ was making analogical reference to the ‘essential features’ of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical. …

   The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’ (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[13]

   [13] [2017] FCAFC 56, [51]-[52].

6. The trade marks which were compared in Pham Global are shown below:

1. The court found the elements ‘insight’ and the devices in each trade mark to be the essential elements.  In finding the two trade marks substantially identical the court paid less attention the words ‘Clinical Imaging’ and ‘radiology’ due to the descriptive nature of those words in connection with the relevant services.[14]

   [14] [2017] FCAFC 83, [56].

   34.       The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   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 [trade mark].[15]

   [15] Ibid [13].

2. The Trade Mark and the Workwear Mark are set out below:

   QLD MAROONS              MAROONS WORKWEAR

3. In the present case the essential element in each mark is the word ‘maroons’.  The word ‘workwear’ in the Workwear Mark is not distinctive in respect of the goods for which the Workwear Mark is registered and less attention should be paid to it for the purposes of the comparison.  Equally the QLD abbreviation should is of less relevance since in the context of the association between Maroons and Queensland it does not operate to significantly distinguish the word ‘maroons’ (which is itself not particularly distinctive). 

4. Given the shared essential element, I find that the Trade Mark and the Workwear Mark are, if not substantively identical, certainly deceptively similar. The second requirement having been satisfied I find that the requirements of s 44(1) have been satisfied. It is then necessary to consider whether the Registrar should accept the application on the basis of ss 44(3) or 44(4) of the Act.

   Subsection 44(4): prior continuous use

5. Section 44(4) of the Act gives an applicant the option of overcoming a finding under s 44(1) through the provision of evidence showing that it continuously used the Trade Mark for a period beginning before the priority date of the other trade mark in respect of the similar goods or closely related services.

6. In the present case the priority date for the registration of the Workwear Mark is 23 June 2005.

7. The EIA provides evidence to the effect that the Applicant has continuously used the Trade Mark for clothing and apparel since before 23 June 2005. In particular the evidence in the EIA is that the Trade Mark has been used for the Applicant’s Goods since 1980 and this is supported by evidence of catalogues featuring clothing bearing the Trade Mark from 2001 onwards. I find that the Applicant has continuously used the Trade Mark (with alterations or additions that do not substantially affect the identity of the Trade Mark) from a period beginning before the priority date for the registration of the Workwear Mark to the relevant date, in respect of the similar goods. I find that the provisions of subsection 44(4) of the Act may be applied to the Trade Mark.

8. I find that the Opponent has failed to establish the ground of opposition pursuant to s 44 of the Act.

   Section 58A

   42. Section 58A of the Act is reproduced below:

   (1)This section applies to a trade mark (section 44 trade mark) the application for  registration of which has been accepted because of:

   (a)subsection 44(4); or

   (b)a similar provision of the regulations made for the purposes of Part 17A.

   (2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark ) or the predecessor in title:

   (a)first used the similar trade mark in respect of:

   (i)              similar goods or closely related services; or

   (ii)             similar services or closely related goods;

   before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

   (b)has continuously used the similar trade mark in respect of those goods or services since that first use.

9. The ground of opposition pursuant to s 58A of the Act was particularised in the SGP as follows:

   Enterprise can establish prior and continues use before the priority date in the same category, which the applicant is well aware of.  We use the tm on merchandise in the same categories. We also have prior use in other categories that the applicant has registered the mark in.       

1. In the present case, there is no evidence before me of the Opponent using the Workwear Mark prior to 23 June 2005 (the priority date for the Workwear Mark) indeed very little evidence of its use at all prior to the relevant date. Nor has the Opponent in its SGP made reference to any other trade marks on which an opposition pursuant to s 58A could arise.

2. The s 58A ground of opposition is not established.

   Section 58

   46. Section 58 of the Act is reproduced below:[16]

   [16] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

   Section 58. Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

3. It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[17]

   [17] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

   · that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[18] and

   [18] Re Hicks’ Trade Mark (1897) 22 VLR 636.

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[19]

   [19] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

4. The ground based on s 58 of the Act was particularised in the SGP as follows:

   Enterprise Above & Beyond Pty Ltd has "Prior Commercial use" of the applicants intended word mark dated before the priority date. We are a commercial business and currently use the intended mark in trade in the same market place as the Applicant before the priority date. We Supply wholesale/retail goods to sports stores, Gift Stores via several websites.

   We use the mark ongoing and in different categories. We also carry stock of items with the intended mark in the same goods and services classes.

5. While I am not satisfied from the evidence before me, including the lack of clear dated evidence, taking the Opponent’s evidence at its highest, the Opponent could have sold apparel with the words ‘QLD/Queensland Maroons’ in 2003.  I accept from the Applicant’s detailed evidence that it or its various licensees first applied the Trade Mark to apparel and miscellaneous supporter merchandise since before 2003 (the evidence being since at least 1980 as deposed and since 2001 in exhibits attached to the Giurissevich Declaration).  I do not find that the Opponent has established that it has used the Trade Mark or a mark substantially identical to the Trade Mark before the Applicant has used the Trade Mark.

   50. In the interests of completeness, in the event that I am wrong that the Applicant’s application of the words ‘QLD/Queensland Maroons’ to merchandise promoting the Queensland Maroons rugby league team is use as a trade mark pursuant to s 17 of the Act, then I would also find that the Opponent’s application of ‘QLD/Queensland Maroons’ to its merchandise promoting the Queensland Maroons rugby league team is not use as a trade mark. In that circumstance I would find that the Opponent did not use the Trade Mark before the Applicant applied to register the Trade Mark.

   51. I find that the Opponent has failed to establish the ground of opposition under s 58.

   Section 42

   52. Section 42 of the Act is reproduced below:

   42 Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a) the trade mark contains or consists of scandalous matter; or

   (b) its use would be contrary to law.

   53. The ground of opposition pursuant to s 42 of the Act was particularised in the SGP as follows:

   Substantially identical/deceptive similar to registration number, registration number 1061691 Maroons Workwear TM 1061690. Registration no 1623852, Maroonland (Word). We have been using the mark along with other organisations in connection with different goods and classes. With the registration of these marks above in class 25, we have acquired a good reputation in Australia, in view of this if the applicant’s registration if completed it would be contrary to Australian Consumer Law SS 18, 29, that prohibits misleading or deceptive conduct. We distribute merchandise with this mark.

   54. It appears from the particulars that this ground is limited to the s 42(b) ground of opposition as there is no allegation (nor would I otherwise find) that the Trade Mark consists of or contains scandalous matter. With respect to the s 42(b) ground of opposition the onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[20]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[21]

   [20] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   [21] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004]59 IPR 343, 353.

   55. For the Registrar to be satisfied that the use of the Trade Mark would be in breach of ss 18 and/or 29 of the Australian Consumer Law (‘ACL’)[22] (as particularised in the SGP), the Opponent would need to show, at the very minimum, that a reputation existed in the Opponent’s Trade Marks as at the relevant date.  The EIS and EIA do not provide any details about when the Opponent started using either of the Opponent’s Trade Marks and there is little evidence of any use of the Opponent’s Trade Marks (as opposed to broader reference to the State Of Origin or the Queensland Maroons Rugby League Team) before the relevant date.  There is no information about the extent of the Opponent’s sales of products bearing any of the Opponent’s Trade Marks, nor any significant detail about advertising featuring the Opponent’s Trade Marks (as opposed to advertising of the Opponent’s business, which sells a range of apparel and merchandise, most of which does not bear the Opponent’s Trade Marks) prior to the relevant date.

   [22] Set out in Schedule 2 of the Competition and Consumer Act 2010 (Cth).

   56.       Given the Applicant commenced use of the Trade Mark prior to the Opponent commencing use of the Opponent’s Trade Marks, is it not reasonable to conclude that the Applicant’s use was motivated by any intention to cause confusion with the Opponent and the Opponent’s Trade Marks.

   57. According the grounds particularised by the Opponent, the Opponent must establish that use of the Trade Mark by the Applicant would be in breach of either ss 18 to 29 of the ACL. Given the absence of any evidence of reputation in the Opponent’s Trade Marks as at the relevant date, I am not satisfied that the Opponent has met this burden. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

   Section 43

   58. Section 43 of the Act is reproduced below:

   43 Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

   59. To establish a ground of opposition under s 43 of the Act, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question... [23]

   [23] [2006] FCA 1663; (2006) 70 IPR 599, [53].

6. In Winton Shire Council v Lomas Spender J said:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [24]

   [24] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].

7. The ground of opposition pursuant to s 43 of the Act was particularised in the SGP as follows:

   The use of the work TM would clearly convey a connection with EAB, its likely to deceive or confuse consumers. The mark has been used in connection with other IP namely logos thus there has been minimal confusion in the market place thus fare. Under sect 41 (4) the trademark in its own right by itself doesn't distinguish the applicants goods from other traders.

   62. The Opponent has not provided any submissions to clarify the particulars in the SGP. However, when reading the SGP as a whole, it appears that the statement in the SGP ‘convey a connection with many EAB’ is a reference to the Opponent and in particular the reputation the Opponent claims in its various marks. As can be seen in the case law referred to above, the considerations set out in the SGP are not the appropriate considerations in this matter. In order for s 43 to operate to prevent the registration of the Trade Mark, the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of the reputation the Opponent may be able to demonstrate in its own marks or confusion between the Trade Mark and the trade marks owned by the Opponent or third parties.

   63. With respect to the final sentence in the SGP, I have dealt with the Opponent’s ground of opposition under s 41 earlier in this decision.

8. As a consequence, I am not satisfied that if the Trade Mark is used in relation to the Applicant’s Goods, there is an apparent connotation within it which is likely to result in deception or confusion. I find that the ground of opposition under section 43 has not been established.

   Section 62A

9. Section 62A of the Act is reproduced below:

   62A Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

10. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

11. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[25]:

    [25] [2004] EWCA Civ 1028; [2005] FSR 10.

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[26]

    [26] [2012] FCA 81, [147].

12. Her Honour continued later in the same decision:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[27]

    [27] Ibid [165]-[166].

    69.       The Opponent has particularised this ground of opposition in the SGP as follows:

    The applicant is aware that other parties use the applied trademark as its needed in general trade. The applicant and its related parties is willing to lie and be dishonest and brake the law to achieve a favorable outcome for themselves.

    70.       It is clear from the Opponent’s evidence that there are a number of broader disputes between the Opponent and the Applicant relating to their past relationship and both sides seeking to register various trade marks connected with the State of Origin series and with respect to the offering or products for sale on eBay.  I do not need make a finding with respect to the Opponent’s various claims, rather this ground simply relates to whether the application to register this particular Trade Mark was made in bad faith. 

    71. It is not clear what the Opponent is referring to in its statements that the Applicant is willing to lie and brake (sic) the law. The particulars in the SGP do not reflect the non-exhaustive examples of applications made in bad faith. With respect to the claim that the Trade Mark is needed in general trade I have already addressed this issue needing to use the Trade Mark under the section 41 ground of opposition. As I have found, the Applicant produced substantial evidence of use sufficient to overcome that ground.

    72.       The evidence establishes that the Applicant/ARLC has applied the term QLD Maroons to apparel and various other merchandising products since at least 1980 and it is, at least colloquially, the name of a rugby league team operated by the Applicant/ARLC.  As such I find it difficult to conclude that the Applicant’s decision to apply to register a trade mark that it has continuously used for that period and is closely associated with is conduct that is unscrupulous, underhanded or unconscientious.

13. In the absence of any evidence that the Applicant sought or seeks to gain some benefit from any association with the Opponent or any related parties, I am not satisfied that the application was made in bad faith. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.

    Decision

    74. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade Mark application no. 1673633 may proceed to registration not less than one month from the date of this decision with the following endorsements ‘Evidence and/or other circumstances provided under subsection 41(4)’ and ‘Provisions of subsection s44(4) and/or Reg 4.15A(5) applied’. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

14. The Applicant 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 against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

    Nicholas Smith

    Hearing Officer

    Oppositions and Hearings

    11 September 2018