FanFirm Pty Ltd v Fanatics, Inc
[2017] ATMO 27
•5 April 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by FanFirm Pty Ltd to registration of trade mark application 1288632 (35) - FOOTBALL FANATICS - filed in the name of Fanatics, Inc.
Delegate: Iain Campbell Thompson Representation: Opponent: Carmen Champion of Counsel, instructed by FB Rice
Applicant: Ed Heerey of Counsel, instructed by Ashurst AustraliaDecision: 2017 ATMO 27
Trade Marks Act 1995
Section 52 opposition: grounds under sections 44, 58A, 60 and 42 not established.Background
In these proceedings under the Trade Marks Act 1995 (‘the Act’) Fanatics, Inc (‘the Applicant’) is the applicant for registration of the trade mark which appears below:
Application No: 1288632
Priority Date: 10 September 2008 (77/566945 United States)Services:Class 35: Business marketing consulting services; customer service in the field of retail store services and on-line retail store services; on-line retail store services featuring sports related and sports team branded clothing and merchandise; order fulfillment services; product merchandising; retail store services featuring sports related and sports team branded clothing and merchandise
(‘the Specification’)
Trade Mark: FOOTBALL FANATICS
(‘the Trade Mark’)Endorsements: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied[1].
[1] The endorsement reflects the citation of registrations 1232983 and 1232984 and the application of the provisions of subsection 44(4) by the examiner in view of evidence filed by the Applicant addressing those provisions.
The Trade Mark was examined as is mandated by section 31 of the Act and subsequently advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 1 November 2012.
On 30 January 2013 FanFirm Pty Limited (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice, filed in relation to an application made prior to the commencement of the IP Laws Amendment (Raising the Bar) Act 2012 on 15 April 2013, nominated the following grounds of opposition:
1. The applicant is not the owner of the Trade Mark within the meaning of s.27(1)(a).
2. The Trade Mark is not a sign which is capable of distinguishing the applicant’s goods, and/or services - s.41.
3. Use of the Trade Mark would be contrary to law - s.42(b).
4. The Trade Mark is inherently likely to deceive or cause confusion - s.43.
5. The registration of the Trade Mark is prevented by the operation of s.44(1) due to the existence of prior [registrations] identified as follows:
930446, 1232983 1232984
and there is no proper basis for registration of the Trade Mark under the provisions of s.44(3) or s.44(4).
6. The applicant is not the owner of the Trade Mark - s.58.
7. Registration of the Trade Mark is prevented by the operation of s.58A.
8. The applicant does not intend to use or authorise use of the Trade Mark - s.59.
9. Use of the Trade Mark would be likely to deceive or cause confusion because of the reputation that another trade mark had in Australia, before the priority date of the application for registration of the Trade Mark in relation to either all or part of the goods and/or services specified – s 60.
10. The application for registration of the Trade Mark was made in bad faith -s.62A.
11. The registration of the Trade Mark is prevented because the application or other document filed in support of the application was amended contrary to the Trade Marks Act 1995 - s.62(a).
12. The registration of the Trade Mark is prevented because the Trade Mark was accepted for registration by the Registrar on the basis of evidence or representations that were false in material particulars - s.62{b)
Of the above grounds, at the hearing of the matter the Opponent relied on those under paragraph 42(b) and sections 44, 58A and 60 of the Act.
The parties have filed evidence in support and evidence in answer as is further discussed below. Both parties requested to be heard. The hearing was held in Canberra on 4 October 2016 before a delegate of the Registrar of Trade Marks; the Opponent was represented by Mrs Carmen Champion of Counsel, instructed by FB Rice and the Applicant was represented by Mr Ed Heerey of Counsel, instructed by Ashursts. The delegate who conducted the hearing, however, is unable to make a decision in this matter. The matter has thus been allocated to me, a delegate of the Registrar, for my decision. I have listened to the recording of the proceedings and considered both the written submissions of Counsel and the evidence filed by the parties in relation to these proceedings.
Onus & Relevant Date
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[2]
[2] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].
The relevant date at which the grounds under section 52 of the Act must be considered is the priority date of the opposed application[3] and I note that the priority date of the application is different from the filing date but that difference has no bearing on the outcome of these proceedings.
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
Evidence
The evidence in this matter consists of the following declarations:
In Support
Warren Livingstone, Managing Director of the Opponent, made on 11 January 2012, with Confidential Annexures WL-1 to WL-2[4].
In Answer
Jamie Davis, President of the Applicant, made on 1 May 2014, with Annexures JD-00 to JD-42; and
Joanna Lawrence, Special Counsel employed by Ashurst Australia, made on 2 May 2014, with Annexures JML-1 to JML-4.
[4] Mr Livingstone incorporates by reference the declaration (with Annexures WL-1 to WL-12) he made on 11 January 2012 (‘the First Declaration’) in relation to the opposition to registration of trade marks 1232983 and 1233984 (these are detailed at [9] of this decision). I further note that the then Opponent to those proceedings (here the Applicant) withdrew its opposition to the registration of those trade marks.
The Opponent
The Opponent is the owner of the Australian trade mark registrations which appear below:
Registration No: 930446
Priority Date: 14 October 2002Services:Class 39: Travel services being services offered by travel agents in this class
Trade Mark:
Registration No: 1232983
Priority Date: 2 April 2008Goods/Services: Class 9: Motion picture films (recorded); for use in multi media (not limited to recordings for television; world wide web and DVD) [sic]
Class 16: Printed material used for advertising and promotional material (although not limited to); postcards, books, bumper stickers, calendars, posters, printed publications and printed matter and photographs; paper flags [sic]
Class 24: Banners; flags (not of paper), including textile flags; woven and non-woven textile fabrics; textile material; textiles made of linen, cotton, silk, satin, flannel, synthetic materials, velvet or wool; cloth
Class 25: Clothing, footwear and headgear, shirts, scarves, ties, socks, sportswearClass 32: Mineral and aerated waters and beer
Class 38: Providing telecommunication services including content and entertainment; television broadcasts and Internet communication; press or information agencies (news)
Class 39: Organisation of transport and travel facilities for tours; functions; sporting and entertainment events for people and productsTrade Mark: Fanatics
Registration No: 1232984
Priority Date: 2 April 2008Goods/Services: Class 9: Motion picture films (recorded); for use in multi media (not limited to recordings for television; world wide web and DVD) [sic]
Class 16: Printed material used for advertising and promotional material (although not limited to); postcards, books, bumper stickers, calendars, posters, printed publications and printed matter and photographs; paper flags [sic]
Class 24: Banners; flags (not of paper), including textile flags; woven and non-woven textile fabrics; textile materials; textiles made of linen, cotton, silk, satin, flannel, synthetic materials, velvet or wool; cloth
Class 25: Clothing, footwear and headgear, shirts, scarves, ties, socks, sportswearClass 32: Mineral and aerated waters and beer
Class 38: Providing telecommunication services including content and entertainment; television broadcasts and Internet communication; press or information agencies (news)
Class 39: Organisation of transport and travel facilities for tours; functions; sporting and entertainment events for people and productsTrade Mark:
The history of the Opponent and its predecessors is, in Mr Livingstone’s words:
[The Opponent] was incorporated in about September 2004. Since that time I have been the Managing Director of [the Opponent]. From 1997 until about September 2004 I conducted the activities referred to in this declaration as a sole trader under the business name “Sporting Edge”, in my capacity as trustee for the WO Livingstone Trust.
In about mid-2008, in my capacity as trustee for the Trust I entered into an Asset Sale Agreement with [the Opponent]. Under that agreement I transferred to [the Opponent] a number of assets relevant to the operations conducted by [the Opponent] which at that stage I still held in my capacity as trustee for the Trust. Among the assets transferred were all of my right, title and interest in and to registered and unregistered trade marks and trade names relating to the travel agency services provided by Fan Firm, including all common law rights In relation to them.
In 2008, TUI Travel PLC (the world’s leading international leisure travel group) acquired a substantial interest in [the Opponent]. TUI Travel PLC had revenues of £13.9 billion in the year ended 30 September 2009.
The Opponent’s trade marks, and the services in relation to which they are used, have the following history.
In 1997 Mr Livingstone attended the US Open Tennis Tournament in New York. He was very vocal in his support of Australian tennis player Mr Pat Rafter and as a result was asked to attend a post-match celebration of Mr Rafter’s win. He there met Messrs John Newcombe and Tony Roche (also Australian tennis players) and came up with the idea of a travelling cheer squad for Australian tennis players.
Mr Livingstone’s idea received support from Tennis Australia (including a marketing fee) and he came up with the name ‘The Fanatics’ for the first tour of the (then) 40 members of the cheer squad to Mildura in 1998.
By 1999, the cheer squad had grown to as much as 250 members for some sporting fixtures and attended at the:
· rugby union World Cup in the United Kingdom;
· Australian cricket tour of the West Indies;
· Davis Cup tie against Zimbabwe in Harare;
· Federation Cup tie against Austria in Klagenfurt, Austria;
· Davis Cup tie against the United States of America in Boston, United States of America;
· Davis Cup tie against Russia in Brisbane; and
· Davis Cup final against France in Nice, France.
I note that attendance at these fixtures was by block-booking areas within venues and that the members wore bright yellow and green tee-shirt so that members of the cheer squad formed a distinct visual entity; frequently this clothing had the word ‘Fanatics’ (often in close association with other material) printed upon them, which were accompanied occasionally by caps, hats or hooded tops.
My understanding of the operations of the Opponent (or its predecessor) is that it has been since its inception, and in essence, a specialist travel agency with merchandise provided to its travelers (the cheer squad) as a part of that service although some of this merchandise might have been sold separately. Just how much and exactly what merchandise might have been sold separately is not obvious from the declarations of Mr Livingston but I gather that the merchandise provided to travelers includes tee-shirts, caps, hand-held flags and the like. The travel agency services are specifically marketed to 18 to 30 year olds. Mr Livingstone states of the inception of the travel services:
[In] 1997 I started providing travel agency services in Australia under the trade mark THE FANATIC PACKAGE (with the trade mark FANATICS being adopted for those services very shortly afterwards). This involved me putting together and selling tour packages to the various sporting events (in Australia and around the world) at which the Fanatics cheer squad would attend. I and, subsequently since in or about September 2004, [the Opponent] (previously known as Fanatics Sports and Party Tours P/L) have done this in Australia continuously since then. The tour packages normally include transport, accommodation and admission tickets to the relevant tournament or event. The tour packages can be either for a single event or for multiple events (such as all of the Test matches in an Ashes cricket series). Given that it can often be difficult to obtain accommodation for a substantial number of people in a city which is hosting a major sporting event, sometimes a special purpose camp ground is created to accommodate the members of the Fanatics cheer squad. For example, a special purpose camp grounds was used for the 2010 finals of the FIFA World Cup featuring world famous musical acts Fat Boy Slim and Powderfinger.
Since 2002, the Opponent has provided travel agency services to events other than sporting events. These also have been offered under the FANATICS trade mark and include:
· ANZAC Day commemoration at Gallipoli, Turkey and the Western Front, France;
· St Patrick’s Day festival in Dublin, Ireland;
· Oktoberfest in Munich, Germany;
· La Tomatina festival in Bunol, Spain;
· Running of the Bulls festival in Pamplona, Spain;
· “Skifest”, which is a ski tour conducted by Fan Firm in the French Alps each Christmas and New Year; and
· party season on the Spanish island of Ibiza and parties in Amsterdam, The Netherlands.
Over the years the Opponent has developed substantially. Mr Livingstone states that at the time of making the First Declaration the Opponent had 104,000 registered members who each received a newsletter from the Opponent. In 2009, 2010, and 2011, under the trade mark FANATIC cheer squad members attended the following sporting events:
· Ashes cricket series in England and Australia;
· 2010 FIFA World Cup in South Africa;
· 2011 Rugby World Cup in New Zealand;
· Bledisloe Cup rugby series in Australia, New Zealand, Hong Kong and Japan;
· Spring Tour rugby series in the United Kingdom;
· Qualifying matches for the 2010 FIFA World Cup;
· French Open tennis tournament in Paris, France;
· Wimbledon tennis tournament in London, England;
· US Open tennis tournament in New York, United States of America; and
· Twenty/20 cricket matches in Australia.
I stress again that there is no corroboration of the separate sales of the Opponent’s merchandise although there is a suggestion in the exhibits that it was at least once supplied to a retailer.
The Applicant
The Applicant was founded in 1995 when it opened a retail store under the Trade Mark in Jacksonville, Florida, and, since 1997, has sold a range of merchandise under the Trade Mark via the Internet from the website footballfanatics.com. The merchandise is marketed to aficionados of the National Football League (NFL), Major League Baseball (MLB), the National Basketball Association (NBA), the National Hockey League (NHL), the National Association for Stock Car Auto Racing (NASCAR), Professional Golfers’ Association (PGA), National Collegiate Athletic Association (NCAA), Mixed Martial Arts (MMA) and the Ultimate Fighting Championship (UFC). This merchandise includes, states Mr Davis:
Clothing (such as men’s, women’s and children’s jackets, tee-shirts, pants, shorts, sweat shirts), footwear, headgear (including caps, hats, visors and beanies), accessories (such as watches, jewellery, key chains, ties, belts, gloves, scarves, bags and sunglasses) and memorabilia (such as posters, cups, pillows, home wears, rugs, mascots, stationery, commemorative coins, flags and mugs).
Mr Davis states:
In addition to being a leading international retailer of hundreds of thousands of items of officially licensed sports merchandise, my Company also designs and operates the ecommerce sites for all of the major North American sports leagues, many major North American sports media brands (including NBC Sports, CBS Sports, FOX Sports), Team USA, major NCAA athletic sports conferences (including the ACC, SEC, Big 10, Big 12, PAC-12), and hundreds of college and professional sports teams. These partners are listed on my Company’s corporate website at and a copy of this list is attached hereto and marked ANNEXURE JD-8.
As well as using the Trade Mark (and the corresponding ‘.com’ domain name) in relation to its merchandise, the Applicant uses a number of formative trade marks and domain names based on the element ‘fanatics’. The Applicant supplies confidential details of both global and Australian traffic to these websites as well as amounts of annual sales from these websites that were shipped to Australia during the years 2000 to 2013. While Mrs Champion submitted that the claimed growth in these sales was, in effect, unrealistically optimistic, I consider that the growth reflects both the growing popularity of American sports in Australia and the broadcast of American sports on satellite television channel ESPN (the acronym for ‘Entertainment and Sports Programming Network’). Additionally, as Mr Davis observes in his declaration there is also:
… the advent of the internet and Internet video streaming. Fans of North American sports around the world, including in Australia, can also access information, commentary and watch games from the Internet including by way of subscription to products such as NFL GAME PASS, MLB TV and NBA GAME TIME. Fans around the world, including Australia, may also receive news, statistics, highlights and commentary on North American sports in almost real-time through various free and subscription websites including .cnn.com/, and as well as via social media.
There is, in addition to sales to ex-patriot Americans and Australian aficionados of American sports, the ‘novelty’ or ‘trend’ factor for those who wish to differentiate themselves by wearing the insignia of American sports organisations.
Mr Davis stresses in his declaration that the majority of sales of merchandise to Australians is through the footballfanatics.com website and under the Trade Mark.
Mr Davis states that his company’s records show that the first order for apparel or merchandise from Australia via the website was on 12 July 2000. The first corroborated sale within Mr Davis’s declaration was on 14 April 2005[5].
[5] Confidential Annexure JD-34.
I will further refer to the parties’ evidence in my discussions of the grounds under subsections 44(3) and 44(4) and section 60 of the Act.
Section 44
Section 44 of the Act relevantly provides:
44Identical etc. trade marks
[…]
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2:For similar services see subsection 14(2).
Note 3:For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(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.
The submissions
Mrs Champion’s submissions referred to the usual tests in relation to section 44 and (in relation to what constitutes ‘similar services’ and ‘closely related goods and services’) stressed the consideration of the competing trade marks used in a normal and fair manner for all of the goods and services covered by the Trade Mark and the Opponent’s registrations. In effect that it is the statutory rights that must be compared as opposed to the actual modes of use. Ms Champion further submitted that, in PB Foods Ltd v Malanda Dairyfoods Ltd[6] (‘Malanda’) the trade marks “CHILL” and “CHOC CHILL” were found to be substantially identical because “CHOC” was utterly descriptive. Here, Mrs Champion argued, the word “FOOTBALL” is not only descriptive of a particular cohort of fanatics but also indicative of the nature of the goods being offered for sale by the Applicant.
[6] [1999] FCA 1602; [1999] AIPC 40-117; (1999) 47 IPR 47.
Mr Heerey, for his part, submitted that the goods and services of the Opponent are not similar or closely related to the services of the Applicant – and, as I understand the submissions, that the Registrar should not get as far as a consideration of whether the trade marks under consideration are substantially identical or deceptively similar but that, if considerations progressed that far, that the trade marks are not substantially identical.
Consideration
In Registrar of Trade Marks v Woolworths[7] French J observed:
The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second:
“The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.”
[7] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 per French J at [39].
The consideration here is whether the goods and services of the Opponent are, respectively, ‘closely related’ or ‘similar’ to the services of the Applicant. I will first consider whether the services under consideration are ‘similar services’. The expression ‘similar services’ is defined at section 14 of the Act:
14Definition of […]similar services
[ … ]
(2)For the purposes of this Act, services are similar to other services:
(a)if they are the same as the other services; or
(b)if they are of the same description as that of the other services.
The concept has had judicial consideration in MID Sydney Pty Ltd v Australian Tourism Co Ltd[8] by Burchett, Sackville and Lehane JJ who said:
[8] [1998] FCA 1616; (1998) 90 FCR 236; (1998) 42 IPR 561; [1999] AIPC 39-051.
Are, then, services to be provided by Touraust services of the same description as that of services in respect of which MID’s mark is registered (s 120(2)(c))? That expression in the context of services seems to have received no reported judicial consideration. This is partly because the statutory protection for trade marks used in relation to goods has been extended to trade marks in relation to services only relatively recently: see F J Smith, “The Trade Marks Amendment Act 1978” (1979) 53 ALJ 118. It is also a consequence of the fact that s 120(2)(c) of the Act had no precise equivalent in the Trade Marks Act 1955 (Cth) (“TM Act 1955”), although the expression “services of the same description as [services in respect of which the trade mark is registered]” was used in the earlier legislation: see TM Act 1955, ss 33(2), 36(1A). The question whether two sets of goods are “of the same description” has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606 [‘Southern Cross’] the High Court said this:
There may be many matters to be considered apart from inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In Re Jellinek’s Application [(1946) 63 RPC 59]. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s case the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade ...’.
Similarly (in a passage cited by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240) Lord Evershed MR said in Re J Lyons & Co Ltd’s Application [1959] RPC 120 at 128:
“In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases ... one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged ... ‘in a business sense’; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the Trade Marks legislation Parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods ... . The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited ... lend some support to the view that the phrase ‘goods of the same description’ ought not to be given too restrictive a construction - not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other.”
We accept that these principles, subject to any necessary modification, apply in relation to services.
Applying the above principles to the services in question here, they are provided to different classes of customers, for different purposes, and do not usually emanate from the same trade source. Accordingly, the services in question are not the same services or services of the same description.
The question as to whether the Applicant’s services are closely related to the goods in respect of which registration of the Trade Mark is sought is more complex. In Qantas Airways Limited v Edwards[9] Yates J stated:
[9] [2016] FCA 729 at [111].
In Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020 (Woolworths), French J (with whom Tamberlin J agreed) said (at [37]):
... The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. ...
His Honour also said in this connection that “closely related” was of wider import than “similar”.
Woolworths was a case arising under s 44(2) of the Act. Thus, the question was whether, in the case of a mark for services, there was conflict with a previously registered mark for “closely related goods”. His Honour gave (at [38]) the following illustrations where goods and services might be “closely related”:
Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. ...
His Honour also made reference to Caterpillar Loader Hire (Holdings)Pty Ltd v Caterpillar Tractor Co (1983) 77 FLR 139; [1983] FCA 143 (Caterpillar) in which Lockhart J said (at 150):
... It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.
Significantly, in Woolworths, French J (at [38]) also said that the range of relationships between goods and services which may support the designation “closely related” will be “limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting marks which attach to them”. This observation might suggest that his Honour had in mind that, in a case arising under s 44 of the Act, the determination of whether the goods and services are “closely related” will be informed by the determination of whether the competing marks are, in fact, deceptively similar.
However, at [38] his Honour continued by stating that “[t]he relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” (emphasis added). It was in this context that his Honour gave the examples quoted at [113] above and referred to the examples given by Lockhart J in Caterpillar. This part of his Honour’s reasoning suggests that the question of whether goods and services are “closely related” is a discrete question within the injunction against registration provided by s 44 of the Act.
This understanding is supported by the following passage in [39] of his Honour’s reasons:
... Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of s 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second: “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.” This approach is not greatly assisted by the language of s 10 which, like s 6(3) of the 1955 Act, defines deceptive similarity solely in terms of the degree of resemblance of the trade marks in question and whether that degree of resemblance is “likely” to deceive or cause confusion. But that definition must, in the context of s 44, be applied to the case of “closely related” goods and services.
His Honour concluded at [40]:
In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.
The practical judgment to which his Honour referred in the last passage is, quite clearly, the judgment involved in determining whether the two marks are deceptively similarity. The passage marks his Honour’s acceptance that the question of deceptive similarity between allegedly conflicting marks will be informed, in part, by the closeness of the relationship between the goods and services in respect of which the marks severally are, or are sought to be, registered. I do not accept that his Honour was there directing attention to the judgment involved in determining whether given goods and services are “closely related” as such.
I mention these matters because the appellant submitted that the question of whether, for the purposes of s 44(1) of the Act, the services of the prior registered mark are “closely related” to the goods in respect of which registered is sought is “intimately bound up with the question of whether the two marks are substantially identical or deceptively similar”. Whilst I accept that part of French J’s analysis in Woolworths at [37]-[40] might be read in that way, I do not think, on balance, that this is what his Honour was saying. Rather, I think that, particularly in [40] of his reasons, his Honour was addressing the calculus for determining, within the context of a s 44 objection, the question of deceptive similarity, not the question of whether goods or services are “closely related”. This was the point of his Honour saying that “it will not always be necessary to dissect that judgment”—that is, whether the resemblance between the marks renders them deceptively similar—”into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services”. As his Honour then explains, this is because the Registrar or the Court might be satisfied, in the given case, that, on comparison, the marks are so dissimilar that deception or confusion is unlikely to arise, regardless of the closeness of the relationship between the goods and services.
The matter can be tested in this way. Take the case of a mark registered for communication services. Can it be suggested seriously that an application for the very same mark in respect of, say, veterinarian supplies, has the consequence for s 44 of the Act that the communication services and veterinarian supplies are “closely related” because the marks are identical? Other examples abound.
In considering the above, and the tests enunciated in Southern Cross, I note that it is a commonplace for traders to both manufacture and retail clothing which is sold under the one trade mark on both the shop and clothing. This coincidence of activities appears to take place in both ‘upmarket’ (for example, Hugo Boss®, R.M. Williams®) and ‘budget oriented’ (for example, Target®, Rivers®) segments of the clothing market. Other examples abound. The words of Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd are also to some degree apposite here (albeit that they were made in relation to section 23 of the Trade Marks Act 1955 and ‘goods of the same description’):
In my opinion, the application of a principle so broadly stated requires some concentration upon the object which s 23(2) exists to serve. That object seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.
The confluence of both the trading activities referred to in the preceding paragraph, above, combined with a deceptive similarity of trade marks would lead, I consider, to confusion at the very least. Viewed in this light, the ‘on-line retail store services featuring sports related and sports team branded clothing and merchandise; [and] retail store services featuring sports related and sports team branded clothing and merchandise’ services within the Specification are closely related services to the Opponent’s goods ‘clothing, footwear and headgear’.
I turn next to the question of the similarity of the trade marks under consideration with a focus on the Opponent’s registration 1232983 FANATICS on the basis that it is more similar to the Trade Mark than are the other two trade marks on which the Opponent relies. If the ground is established in relation to 1232983 FANATICS, consideration of the similarity of the Trade Mark to the other two trade marks on which the Opponent relies is unnecessary.
In discussing ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[10] Windeyer J said: [12]:
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 identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.
[10] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].
I do not agree with Mrs Champion that the principle in Malanda can be applied in the circumstances of this matter. The Trade Mark is comprised of the words ‘Football Fanatics’ and the element ‘Football’ is not descriptive of all of the services within the Specification and is not subject to a ‘claim to vary’, either express or implied: it thus cannot be discounted in the same manner as was the element ‘Choc’ when considering the trade mark CHOC CHILL in Malanda. Thus, whilst the essential feature of the Trade Mark is the word ‘Fanatics’, I do not consider it appropriate to discount the word ‘Football’ in this assessment.
The trade marks of the parties are not substantially identical.
The expression ‘deceptively similar’ is defined by section 10 of the Act:
10Definition 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.
In Shell[11] Windeyer J went on to state of ‘deceptive similarity’:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “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”.
[11] Ibid at [13].
All of the surrounding circumstances should be taken into account in the assessment. Parker J, in In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark[12] said:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods ... you must refuse the registration, or rather you must refuse the registration in that case.
[12] (1906) 23 RPC 774 at 777.
And, concerning the assessment of the likelihood of deception or confusion, in Woolworths[13] French J said:
[13] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
The word ‘Fanatics’ being the sole word in the Opponent’s registration 1232983 FANATICS, is the element by which that trade mark is going to be remembered and recalled by the public. The identical word occurs in the Trade Mark along with the word ‘Football’ which is generally going to be understood by the purchaser of the services offered under the Trade Mark to be descriptive of at least some of those services. Thus, even when some allowance is made for the fact that the word ‘fanatics’ (from which the word ‘fan’ is derived) will be understood by the public as alluding in a relatively close manner to the goods and services of the parties, the trade marks must be assessed as being deceptively similar.
Accordingly, the ground under subsection 44(2) is established.
The Applicant, however, submits that if the ground under subsection 44(2) is established, the provisions of either subsection 44(3) or subsection 44(4) may be applied in view of the concurrent use, or prior use, of the Trade Mark.
For the sake of brevity, I will consider only the provisions of subsection 44(3)(a) which, in my view of the evidence, most obviously apply to this matter as the corroborative evidence for both the Applicant’s claims under subsection 44(4) and the Opponent’s claims under section 58A is, with some justification in my consideration, strongly criticised by the respective parties.
In discussing honest concurrent use in terms of paragraph 44(3)(a) Kenny J stated in McCormick & Co Inc v McCormick[14] (‘McCormick’):
[14] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [30].
Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:
(1) the honesty of the concurrent use;
(2) the extent of the use in terms of time, geographic area and volume of sales;
(3) the degree of confusion likely to ensue between the marks in question;
(4) whether any instances of confusion have been proved; and
(5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.
See In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister [1997] ATMO 3; (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd’s Application [1957] RPC 369 at 379.
The honesty of the concurrent use is not in doubt. The Trade Mark was adopted by the Applicant for use in the USA prior to the adoption by the Opponent of its trade marks in Australia and consequently in obvious ignorance of them. The parties have concurrently traded in Australia since around the year 2000[15] before becoming aware of each other’s activities through the filing of their respective applications to register their trade marks in Australia. I observe that, while the present Applicant opposed the registration of the Opponent’s trade marks 1232983 and 1233984, it withdrew its opposition to the registration of those trade marks on the apparent basis that it was satisfied that there could be no confusion between the operations of it and the present Opponent. This also speaks, in my consideration, to the honesty of the Applicant’s concurrent use of the Trade Mark.
[15] Whilst the earliest corroborated use of the Trade Mark in Australia is in 2005, I accept that the Trade Mark has been, in all likelihood, used in Australia by the Applicant since 2000.
The extent of the use of the Trade Mark in Australia has grown, from comparatively low amounts both in items sold and annual revenue, to amounts which are (as Mrs Champion expressed it) remarkable. The sales have been to all Australian States and Territories.
The likely degree of confusion was argued by Mrs Champion to be high. This is because, Mrs Champion submitted, that it is possible (within the scope of the Specification) for the Applicant to open a store within an Australian shopping mall, place the Trade Mark prominently upon it, and stock that store solely with Australian sports clothing coloured yellow and green similar to the merchandise provided by the Opponent to its customers. In my consideration this proposition, whilst a possibility, is not a genuine commercial likelihood or an undertaking that is likely to be embarked upon by the Applicant. In purely pragmatic terms is not clear why the Applicant, if it did open a retail store in Australia, would limit the scope of its operations in this way. Such speculations are not, in my view, based on commercial realism. Rather, I note that the parties have traded concurrently with no reports of confusion arising amongst their respective customers. An obvious reason for this lack of confusion lies in the nature of the goods and services of the parties and is hinted at by the trade marks themselves: Fans or devotees of sports (‘fanatics’) who either would buy goods emblazoned with the regalia of their sporting teams or embark on journeys to see their favourite sports star (or team) play in an international event tend to be very well informed about the team or star that they follow. Imbued with this fanaticism, these particular consumers are very well educated about the minutiae involved in the objects of their devotion. In terms of the analysis described in C A Henschke & Co v Rosemount Estates Pty Ltd[16], consumers of the goods and services of the parties are likely to be not only ‘involved’ but ‘highly involved’.
[16] [2000] FCA 1539; (2000) 52 IPR 42; [2000] AIPC 91-640; [2001] ATPR 41-793.
My estimate of the likelihood of confusion is therefore that it is very low.
Instances of confusion have not been reported by either party.
The relative inconvenience to the Opponent appears to be very low. In practical terms the Opponent is a specialist travel agency that block-books both accommodation for its customers and also seating at sports (and some other) events and also, as an adjunct to those services, provides merchandise to identify its customers at those sporting events. There is no evidence about the interference to these operations which might arise from the registration of the Trade Mark under the provisions of paragraph 44(3)(a). The inconvenience to the Applicant, should the Trade Mark not be registered is obviously very high: it could involve a substantial re-branding and education of its customer-base in Australia if the Trade Mark (which it has used without any reported confusion) should not be registered in Australia.
In view of the above considerations, I consider that it is appropriate that Registrar apply the provisions of paragraph 44(3)(a) to the Trade Mark (rather than those of subsection 44(4) under which it was accepted).
Section 60
Section 60 of the Act provides:
60Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note:For priority date see section 12.
It is necessary in order to establish this ground that the Opponent establish the existence of another trade mark which, at the priority date, had a reputation such that the use of the Trade Mark would confuse or deceive.
The Opponent uses its trade marks in two forms, one in the plain form FANATICS (‘the Word Trade Mark’) and the other which appears below:
(‘the Logo Trade Mark’)
My assessment of the exhibits to Mr Livingstone’s declaration is that the Opponent uses its Word Trade Mark and Logo Trade Mark interchangeably and with equal prominence both in relation to its travel agency services and the merchandise provided to its customers. Occasionally, neither of those trade marks are used upon the merchandise; a device resembling a graphical representation of a cube appears on tee-shirts on spectators attending events. (I also observe that, in an opposition environment where the onus is on an opponent to establish its opposition to registration, some of the material exhibited to Mr Livingstone’s declaration is of poor quality and just what appears on spectators’ tee-shirts is not discernable). Similarly, in evidence[17] which shows the various iterations of the Opponent’s website, the Word Trade Mark and Logo Trade Mark are used with equal frequency.
[17] Sourced from web.archive.org (otherwise known as Wayback Machine).
In McCormick[18] Kenny J answered the question ‘what is reputation’?
The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
[18] Op cit at [81].
Further qualification is to be made to the above to reflect the particular market for the Opponent’s services and associated merchandise. Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[19] said (albeit in relation to paragraph 28(a) of the superseded Trade Marks Act 1955) that the reputation required to be demonstrated was:
… one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.
[19] [2000] FCA 1587; (2000) 50 IPR 1.
Here, as I have intimated, the marketplace for the services and merchandise of the Opponent is primarily amongst sports aficionados but is also those who attend such events as the running of the bulls in Pamplona, the St Patrick’s Day Parade in Dublin, or the Anzac Day commemorations at Anzac Cove.
The assessment of the strength of reputation is usually by evidence of details of annual sales and amounts spent annually on advertising and promoting the travel agency services and associated merchandising in relation to which the trade marks of the Opponent are used. Kenny J went on in McCormick[20] to state:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
[20] Op cit at [86].
On the basis of the evidence before me, I would assess the Opponent’s Word Trade Mark and Logo trade mark as having a strong reputation in respect of travel agency services amongst Australian sports fans who attend such fixtures as international cricket, rugby and tennis matches, and golfing competitions. Whilst many Australians may have seen the ‘fanatics’ at these sporting events, it is not clear how many would recognise the various trade marks which appear on the green and gold tee-shirts worn by the ‘fanatics’ any more than they are discernible within many of the exhibits to Mr Livingstone’s declaration.
I thus consider that the evidence before the Registrar is sufficient to satisfy her that the Word Trade Mark and Logo Trade Mark have a reputation in relation to travel agency services and the provision of merchandise in relation thereto. There are no separate details of revenue or advertising expenditure provided by Mr Livingstone relating to the retail sale of that merchandise.
The next question to be addressed is whether because of the reputation referred to in the preceding paragraph the use of the Trade Mark by the Applicant would be likely to deceive or cause confusion.
The words ‘confuse’ and ‘deceive’ refer to two different mental states. In Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd[21] Richardson J, in the New Zealand Court of Appeal:
Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.
[21] [1979] RPC 410, at 423.
In Radio Corp Pty Ltd v Disney[22] Rich J said of the word ‘confusion’:
In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.
[22] [1937] HCA 38; (1937) 57 CLR 448 at 454 (the Mickey Mouse Case).
And the assessment of the likelihood of deception and confusion is (absent a requirement that the trade marks be deceptively similar) subject to the same considerations as those referred to in Woolworths, quoted at [44] above.
The Opponent’s trade marks have reputations in relation to travel agency services and a particularly vocal and visible block of people at sporting events. The evidence does not, in my view, establish that the Opponent’s trade marks have a reputation in relation to the sale of merchandise but that the goods involved are perceived as being provided as an adjunct to the Opponent’s travel agency services.
That said, I do not consider that there is a likelihood of deception or confusion. Even when allowing for the notional use of the Trade Mark in relation to all of the services for which registration is sought, the parties operate in marketplaces which are distinct from each other: the one provides a specialised travel agency service which provides merchandise associated with the events that its customers are to attend; the other sells the official regalia associated with sporting teams. And, whilst the parties both cater to sporting aficionados that is in different ways and these sporting fans are, as previously discussed, very discriminating cohorts of consumers.
These observations are, in my consideration, borne out by the lack of any report of confusion in the face of the concurrent use of the trade marks of the parties in Australia over a period of some 15 years before the priority date of the Trade Mark.
The Opponent has not established its opposition under section 60 of the Act.
Paragraph 42(b)
Section 42 of the Act relevantly provides:
42Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
[…]
(b)its use would be contrary to law.
Here the Opponent contends that the use of the Trade Mark would both constitute the tort of passing off and be contrary to sections 18 and 29 of the Australian Consumer Law (‘the ACL’).
The onus is on the Opponent to establish that use of the Applicant’s trade mark would be, rather than could be, contrary to law on the balance of probabilities.[23]
[23] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
In the present matter the Opponent has failed to establish a ground of opposition under section 60 of the Act. As the test for misleading or deceptive conduct under section 18 of the ACL is a more stringent test than that for deception or confusion under section 60[24], I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to section 18 of the ACL.
[24] See, eg: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
Where a trade mark does not run afoul of section 18 of the ACL, neither will it run afoul of section 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered - in connection with the superseded Trade Practices Act1974 (‘the TPA’) - that ‘the Court’s conclusion on sections 52 would necessarily carry with it a conclusion on sections 53(c) and (d)’ [25]. Section 53(d) of the TPA is the equivalent provision to section 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation[26] also addressed the relationship between section 52 of the TPA and passing off. His Honour considered that:
The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.
[25] [2003] FCA 104, [107].
[26] [1989] FCA 506, [40] (citations omitted).
The Opponent has not established its ground under paragraph 42(b) of the Act.
Decision
Section 55 of the Act provided at the relevant date:
55 Decision
Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
As no ground of opposition has been established, it is appropriate that the Registrar decides to register the Trade Mark. Registration should be subject to an amendment to the endorsement so that it reads:
The provisions of paragraph 44(3)(a) applied.
The trade mark application may then proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the Trade Mark should be in accordance with the Court’s order or direction.
Costs
Both parties requested their costs in the events that they were successful. The opposition has not been established on any of the grounds on which it was argued and the amendment of the endorsement mentioned at [82] of this decision leaves the application in (to all intents) the same condition as which it was accepted. In the light of this it is, in my consideration, appropriate that costs be awarded against the Opponent at the Official Scale at Schedule 8 to the Trade Marks Regulations 1995.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
5 April 2017
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