Fairmile Pty Limited v Skycoaster Inc

[1999] ATMO 32

TRADE MARKS ACT 1995

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

RE:Opposition by FAIRMILE PTY LIMITED to the registration of trade mark application 713965 in the name of SKYCOASTER, INC.

Background

On 30 July 1996, Sky Fun 1, Inc. filed the above numbered application for the word mark SKYCOASTER, in class 28 goods, for "sports and amusement equipment including goods for tethered swinging and jumping namely cables, hooks, rings, clamps, harnesses and shock absorbers sold separately, in combination, or as a unit; and amusement rides in the nature of static structures from which swinging and jumping and tethered swinging and jumping, can be conducted", and, in class 41 services, for "entertainment and amusement services including services in the nature of tethered swinging and jumping, providing static structures and locations from which swinging and jumping and tethered swinging and jumping, can be conducted; and rental of swinging and jumping and tethered swinging and jumping equipment".

Acceptance of the application for registration was advertised in the Official Journal of Trade Marks of 27 February 1997. The acceptance of the application was opposed. During the opposition process, the trade mark was assigned to Skycoaster, Inc. Unless otherwise indicated, where reference is made to "the applicant" in this decision, then that party is Skycoaster, Inc.

Fairmile Pty Limited (the opponent) filed a notice of opposition on 27 August 1997, following a three month extension of time in which to do so. Although the opponent requested two extensions of time, each of three months, to serve evidence in support of the opposition, no evidence was served. The applicant filed and served evidence in answer to the grounds raised in the notice of opposition by 8 September 1998 and, some months later, it requested to be heard in the matter. The hearing was held on 11 February 1999. The applicant was represented by Dr. Mark Horsburgh of Fisher Adams Kelly, Patent and Trade Mark Attorneys of Brisbane, who appeared by telephone. The opponent was not represented.

The Evidence

The grounds, under the Trade Marks Act 1995 (the Act), specified in the notice of opposition were wide ranging and dealt with s.39, s.41, s.42, s.60, s.44, s.58, s.59 and s.62.

No evidence was submitted to support these grounds. At first glance, it may seem somewhat confusing as to why the applicant would then want to file and serve evidence in answer, and request to be heard. I will deal with this matter in the Submissions section.

The evidence in answer consisted of a Statutory Declaration declared on 8 September 1998, with exhibits “MAH1” to “MAH7” inclusive, "WJK1" to "WJK13" inclusive and "LGS1", from Mark Alexander Horsburgh (the Horsburgh declaration).

The exhibits "WJK1" to "WJK13" were attachments to exhibit "MAH1", and "LGS1" was an attachment to exhibit "MAH2". The reason for submitting "WJK" and "LSG" exhibits in this manner is that the original documents form part of the evidence in support on two other trade marks, for which the present applicant was the opponent.

The exhibits consisted of:

MAH1 a copy of a Statutory Declaration dated 5 September 1997 from William Joel Kitchen, the Chief Executive Officer of Sky Fun 1, Inc., with attachments "WJK1" to "WJK13" inclusive. This declaration was originally submitted to support opposition to trade mark numbers 681129 and 681130.

MAH2 a copy of a Statutory Declaration dated 29 July 1997 from Leonard George Shaw, Director of Special Projects for Dreamworld Pty Limited, with attachment "LGS1". This declaration was originally submitted to support opposition to trade mark numbers 681129 and 681130 also.

MAH3 a copy of a letter dated 1 November 1994 from A.W. Holman, a Director of the opponent, to the Daikyo Group of Companies.

MAH4 a copy of a letter dated 30 March 1995 from A.W. Holman, to the Gold Coast City Council.

MAH5 a copy of a business name registration, showing registration from 5 December 1994, for the word "Flycoaster", on the Register for the State of Queensland, for the corporate body Fairmile Pty Limited.

MAH6 a photograph showing an example of the applicant's mark in use in the United States of America as part of the expression "Fly SKYCOASTER".

MAH7 an open letter, dated 21 August 1998, from Bill Jackson, Manager of Operations and Training for the applicant, confirming that since mid-1993, in use, the mark SKYCOASTER is preceded by the word "Fly".

No evidence in reply was served.

Submissions

At the hearing, Dr. Horsburgh submitted that the applicant had chosen to file evidence and be heard in the matter because the opponent had a prior filing date for its FLY COASTER trade mark, and that there may be a case to answer in relation to this. He added that, because of the coincidence of the goods and services provided, and the likelihood of deception or confusion between the applicant's mark SKYCOASTER and the opponent's mark FLY COASTER, the applicant desired to unequivocally prove first use of its trade mark. Dr. Horsburgh submitted that the goods involved could be described as an amusement ride of a tethered swinging nature, which had been invented by the founder of the applicant company. He added that the invention was currently the subject of a patent application in the United States. To support the applicant's use of the trade mark, the attorney directed my attention to the following details:

• the worldwide listing of sites of the applicant's amusement rides, under the SKYCOASTER mark, as shown in exhibit "WJK2";

• the list of applications in 36 countries, as shown in exhibit "WJK11";

• marketing of the goods through conventions of the International Association of Amusement Parks and Attractions (IAAPA) as early as November 1993, with Australian delegates in attendance, as listed in "MAH1";

• the use of the applicant's trade mark in the opponent's correspondence from Bill Holman, Director of the opponent, to Daikyo Group of Companies, which correspondence was submitted by the present opponent in relation to opposition proceedings concerning trade marks numbered 681129 and 681130, exhibited at "MAH3";

• reference to use of the applicant's goods in the United States, in a letter dated 30 March from the opponent to the Gold Coast City Council, exhibited at "MAH4";

• a copy of a letter dated 29 September 1995, from Coen Nieuwenstein of Vekoma International Pty Limited, to Dreamworld Productions Pty Limited in Queensland, containing an offer to sell the SKYCOASTER goods as the Australian distributor, exhibited at "LGS1".

Dr. Horsburgh also submitted that the applicant uses its mark as part of the expression "Fly SKYCOASTER" and that the opponent was attempting to gain some advantage by contracting the expression to FLY COASTER. He added that, on this basis, the opponent should not be allowed to rely on the earlier filing date of FLY COASTER.

Discussion

The opponent submitted no evidence in support of its notice of opposition. The applicant only addressed one major issue raised in the notice, that under s.44 of the Act, and so, apart from three minor comments on other issues, I intend to confine my discussion to that section.

(a) Section 44 - Identical etc. trade marks

The relevant legislation concerning this ground of opposition reads as follows:

44.(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 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.

(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 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.

The first test to be considered under s.44 involves a comparison of the applicant's trade mark SKYCOASTER and the opponent's trade mark FLY COASTER to determine whether they are either substantially identical or deceptively similar.

Turning to the accepted test for marks to be considered substantially identical, in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd., 109 CLR 407, at page 414, 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...

The applicant's SKYCOASTER mark and the opponent's FLY COASTER mark both consist of ten letters, the final eight of which are identical. Only the first two letters of each mark, SK- and FL-, differ. In addition, there is some similarity of ideas engendered by the two marks due to the close connection between the words SKY and FLY. The act of flying normally takes place in the "sky", as is shown in the Oxford English Dictionary which provides one definition of "fly", as "to move through the air with wings".

Notwithstanding the above similarities, the differences between the two marks are sufficiently pronounced that, when placed side by side, I believe that consumers would readily discern the dissimilarities. Thus, I find that the marks are not substantially identical.

The test for deceptive similarity between two trade marks has been well documented in the two cases cited below. In summary, the test for deceptive similarity is centred upon the impression based on an imperfect recollection of one mark when the two marks to be compared are not seen side by side. The first of these citations is in the case of Rysta Limited's Application (1943) 60 RPC 87 where Luxmoore LJ held at 108 that:

It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants.

The other reference, involving the test for deceptively similar trade marks, was that outlined in the judgement of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F. S. Walton & Co. Ltd. (1937) 58 CLR 641 at 658 as follows.

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, their 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.

For a consideration of the similarity of two trade marks, a variety of elements may be called into play. For instance, if the goods or services involved were extremely expensive, then it is to be expected that the average purchaser would give a good deal more attention to an accurate selection of the trade mark on those goods or services, and therefore locate the desired trade source, than if both sets of goods or services were at the opposite end of the market. Different considerations may prevail if the goods or services were to be purchased by a particular interest group, such as extremely partisan football supporters. It would be expected that their particular knowledge of Australian Rules, Rugby League, Rugby Union or soccer would guard against their selection of an incorrect banner or jumper containing, say, a magpie, that was used by another football code, despite the similarities.

In the present circumstances, however, close consideration of two of the tests outlined in Australian Woollen Mills (supra) provides a basis to decide the issue.

The first of these tests is found in the judgement of Dixon and McTiernan JJ. quoted above:

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.

The applicant's evidence in answer provides specific details of the applicant's goods. It shows that the largest of the applicant's SKYCOASTER rides rises to a height of some 80 metres and requires a horizontal length of approximately 150 metres to operate successfully. The other rides, although somewhat smaller, are still significantly larger than all rides that I have seen in amusement parks - with the possible exception of the largest roller coaster rides. The cost of one complete unit of the goods is approximately $US760 000. This translates to a purchase price in the vicinity of $A1 126 000.

I would expect that anyone involved in the purchase of any item costing in excess of $1m. would proceed with due caution and careful consideration. For goods of this type, I cannot imagine the purchaser failing to inspect the items in extreme detail over a reasonable period of time. Given such a situation, I believe that the differences between the marks SKYCOASTER and FLY COASTER are sufficient to ensure that a prospective purchaser of the goods involved would not be deceived or confused.

However, the application also has been made in respect of class 41 services. The fact that the goods themselves are costly may not cause "the ordinary purchaser" of an amusement park ride to give the same careful consideration to the trade mark involved, as would the purchaser of the goods themselves. The selection of the ride would be made in a much shorter time span than given to the purchase of the goods, without the benefit of seeing the two trade marks side by side and possibly with adrenalin levels not conducive to a sufficiently considered evaluation.

However, another test listed in the Australian Woollen Mills case (supra) may prove to be even more decisive for this group. This test is:

The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.

This test involves a consideration of the appearance and recollection of the marks to the average purchaser of a ride in the amusement park. As I have mentioned above, there is some similarity in the idea of both trade marks, due to the connection between the words SKY and FLY. The word or part word COASTER, which is the only other part of each mark, provides several definitions. The Oxford English Dictionary, 2^nd Edition, (hereafter OED), details eight major definitions for "coaster", two of which are subdivided into four sub-definitions each. In addition, definitions for the "sport of coasting" are relevant to the goods and services of interest.

Taken together, the definitions indicate that "coasting" may be linked to sailing in a boat or ship, sliding on a sled or toboggan, riding a bicycle or tricycle, driving a motor vehicle or, as mentioned in the definition for "coaster", riding an amusement park roller coaster. These uses in connection with various modes of travel, indicate that the word (or part word) has a generally understood meaning of some form of either relaxing or exciting movement (or transport) by means of either a vehicle or, at least by some form of apparatus.

Thus, in relation to fairgrounds or amusement parks, I believe that the "ordinary person" would view the word COASTER as a synonym for an amusement ride of some description. Members of the general public would, I believe, reach this conclusion not only because of the extremely well-known term "roller coaster", but also for the other uses outlined in the OED. In my opinion, the use of the word COASTER is descriptive in relation to goods used for amusement park rides and for the amusement park services provided by the use of them.

Thus, for the goods and services involving amusement parks, if the word (or part word) COASTER is considered a descriptive term, the comparison for deceptively similar trade marks is weighted more heavily toward a consideration of the "other parts" of the marks. Consequently, the risk of deception or confusion, in this case, is necessarily diminished.

Given this background, I believe that the trade marks SKYCOASTER and FLY COASTER, used on goods and services in relation to amusement parks, are not deceptively similar. That is not to say that an occasional case of deception or confusion would never occur. However, as Australian Woollen Mills (supra) outlines, it is "the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected". Under such an examination, I believe that the real risk of deception or confusion for these trade marks used on goods and services in relation to amusement parks is not high.

Although I have found that the applicant's and the opponent's marks are not deceptively similar in respect of the goods and services of interest, namely in relation to amusement parks, the matter does not necessarily end there.

The specification for this application directly names the goods and services in relation to amusement parks. However, these items are only included within a larger claim. The broader claim may contain many items for which the word (or part word) COASTER has no descriptive meaning at all. In such circumstances, the marks SKYCOASTER and FLY COASTER, used for identical goods or identical services, could be seen to exhibit a greater possibility of producing deception or confusion than for merely the amusement park goods and services. While it is probable that a greater percentage of the population could be deceived or confused, I do not believe that this number would be a sufficiently significant figure to determine that a substantial number of people had been so deceived.

The words of Evershed J in Smith Hayden & Co.Ltd's Application (1946) 63 RPC 97 at 101 are pertinent to this evaluation where, commenting on s.12 of the 1938 U. K. Act (which corresponds to s.44), he said:

Assuming user by [the opponents] of their marks 'Hovis' and 'Ovi' in a normal and fair manner for any of the goods covered by the registrations of those marks (and including particularly goods also covered by the proposed registration of the mark 'Ovax') is the Court satisfied that there will be no reasonable likelihood of deception or confusion among a substantial number of persons if [the applicants] also use their mark 'Ovax' normally and fairly in respect of any goods covered by their proposed registration?

Although I believe that some individuals would be deceived or confused by the similarity between SKYCOASTER and FLY COASTER on goods or services for which COASTER has no descriptive meaning, I do not believe that the number would be substantial.

From the foregoing I have determined that the marks of the applicant and the opponent are not deceptively similar.

Although the respective goods and services of the applicant and opponent are identical, because I have found that their trade marks are neither substantially identical nor deceptively similar, I find that the opposition under s.44 is not successful.

Because I have found that the trade marks are not in conflict, I do not need to consider the provisions of s.44(4) concerning whether the present mark was used prior to the filing of the opponent's trade marks.

(b) Other Issues - s.58, s.60 and Passing Off

At the hearing, Dr. Horsburgh argued that the applicant had used the mark in Australia prior to the filing of the opponent's trade marks for registration and, additionally, had established a reputation in the mark SKYCOASTER. The submissions and evidence, relied on by the applicant, claimed that several items were relevant. The items involved a list of some 28 Australian companies in attendance at the IAAPA convention for amusement park owners in November 1993 in New Orleans, U.S.A.; letters written on 1 November 1994 and 30 March 1995 by Bill Holman (a Director of the opponent) using the words 'the "SKY COASTER" leisure attraction'; and a letter written on 29 September 1995 from Vekoma International B.V. (the Australian distributor for the applicant) to Dreamworld Productions Pty Limited, offering sale of the applicant's goods.

The three items listed here are all quite arguably relevant to establishing first use of a trade mark. However, as mentioned above, prior use in terms of s.44(4), was not required to overcome a ground for rejection because I have found that the opposition was not successful under s.44.

The material is irrelevant to the provision of any support to the applicant's case in terms of s.58, because only conflicts of identical or substantially identical marks need be considered for ownership of a trade mark.

In addition, the material is not useful in establishing the applicant's reputation in the mark under s.60, because it is not of any sufficient proportion to establish any recognisable community awareness.

Dr. Horsburgh also argued that the applicant has used the mark as part of the expression "Fly SKYCOASTER" and that the opponent had simply reduced these words to FLY COASTER. He argued that I should consider this action and prevent the opponent from relying on the earlier filing date. However, under the Act I cannot find any issue that covers this challenge in terms of opposition to this mark. If the applicant feels that it has a grievance under the passing off provisions of the Trade Practices Act, or can claim some other false representation, then the courts are a more appropriate forum to seek relief. I also note, however, that the evidence submitted indicates that the use of the mark, as part of the expression "Fly SKYCOASTER", has been in other jurisdictions, specifically in the U. S. A.

Conclusion

From the foregoing, I have found that the opposition fails on the only ground discussed fully by the applicant at the hearing. The opponent provided no evidence or submissions to support any of the other grounds listed in the notice of opposition. Therefore, as a delegate of the Registrar, and subject to an appeal from this decision, I dismiss this opposition. I award costs in this matter to the applicant Skycoaster, Inc. (formerly Sky Fun 1, Inc.).

Don Nancarrow
Acting Hearing Officer
12 April 1999.