FreemantleMedia and 19 TV Limited v Solowave Pty Limited

[2008] ATMO 87

TRADE MARKS ACT 1995

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

Re:Opposition by FremantleMedia and 19 TV Limited to registration of trade mark application 1150651(41) - DJ IDOL - filed in the name of Solowave Pty Limited.

Delegate:

Iain Thompson

Representation:

Opponent:  Sue Chysanthou of counsel instructed by Hodgkinson McInnes Patents

Applicant: Did not appear or put in written submissions

Decision:

2008 ATMO 87

s52 opposition - s44 services of same description, deceptively similar trade marks - opposition established - costs awarded to opponent

Background

1. In this matter Solowave Pty Limited of Darlinghurst, New South Wales, (‘the applicant’) has applied to register a trade mark, current details of which appear below:

Application No:        1150651

Priority Date:            6 December 2006

Services:  Club event

Trade Mark:              DJ Idol

(‘the opposed trade mark’)

1. The application went through the process of examination and was subsequently advertised as accepted for possible registration on 5 April 2007 in the Australian Official Journal of Trade Marks.

2. On 13 April 2007, FremantleMedia Limited (‘Fremantle’) and 19 TV Limited, both of London, United Kingdom, (‘the opponents’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.  The Notice cites most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’) including that under section 44 under which I will decide this matter.

3. The opponents have served and filed evidence in support of the opposition – this is a statutory declaration by Steven Rosser who is Director of Legal and Business Affairs of Fremantle.  Put briefly, (for reasons which will become obvious) the evidence shows that Fremantle owns and the opponents use a number of trade marks which include the word IDOL in Australia and elsewhere in the world which are, I gather from the evidence, well-known (both in Australia and internationally) for their use in relation to a televised talent competition and related goods marketed as a ‘spin-off’ from the television show.

4. Details of Fremantle’s relevant Australian trade mark registration (with the goods recitations omitted) are:

Reg No:934309

Priority Date:  14 Nov 2002

Services:Class: 38 Broadcasting; television broadcasting; radio broadcasting; satellite television broadcasting; cable television broadcasting; communications by telephone; interactive telephone services; communication services by means of radio waves, telephones, the Internet, the worldwide web, cable, satellite, microwaves and the electricity grid; telephony for voting purposes; telephony for entertainment purposes

Class: 41 Education and entertainment services all relating to television, cinema, radio and theatre; production and presentation of radio and television programmes, films and shows; education by or relating to television and radio; entertainment by or relating to television and radio; organization of competitions (education or entertainment); interactive telephone competitions; publishing; production of cinematographic films, shows, radio programmes and television programmes; provision of education and entertainment by means of radio, television, satellite, cable, telephone, the worldwide web, the Internet; organization of shows, rental of sound recordings and pre-recorded shows, films, radio and television performances; production of video tapes and video discs; radio entertainment; television entertainment; cinema entertainment; theatre entertainment; game shows; television entertainment services involving telephonic audience participation

Trade Mark:  

1. The applicant did not serve and file evidence in answer.

2. The hearing of the matter was before me as a delegate of the Registrar of Trade Marks in Sydney on 25 July 2008.  Sue Chrysanthou of counsel instructed by Hodgkinson McInnes Patents, represented the opponent.  The applicant did not appear or put in written submissions.

3. Ms Chrysanthou pursued grounds under sections 44, 42(b), 60, 43, 58 and 59 of the Act and, while I consider the opponent’s arguments to be strong in relation to sections 42(b) and 60, it is convenient for the sake of brevity to decide this matter under section 44 where the opposition obviously succeeds. And (for completeness) I note that the grounds in the Notice not pursued at the hearing are treated by me as abandoned.

Section 44

1. Subsection 44(2) of the Act provides:

   (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.

2. To establish its opposition in terms of subsection 44(2) the opponents must rely on a registered or pending trade mark which:

   ·     is substantially identical or deceptively similar, and

   ·     is in respect of the same or similar services, and

   ·     has an earlier priority date,

   when considered in relation to the opposed trade mark.

3. The trade mark registration on which the opponents rely has an earlier priority date (14 Nov 2002) than that of the opposed trade mark application (6 December 2006).

4. In Registrar of  Trade Marks v Woolworths [1999] FCA 1020, French J at paragraph 39 said:

   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.

5. It is therefore appropriate to consider whether the services of the parties are similar services before considering whether the trade marks are substantially identical or deceptively similar.

6. The expression ‘similar services’, above, is defined within subsection 14(2) of the Act:

   (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.

7. The services described as ‘club event’ which comprise the opposed specification would on the face of it include a wide range of services, such as competitions, stage shows, cabaret shows, band performances, comedy turns and so forth of the usual sorts of events found in, or staged within, clubs.

8. The opening phrases of Fremantle’s specification of services within Class 41 include the services, ‘entertainment services … relating to … theatre’ and ‘production and presentation of … shows’.

9. Thus, in essence, the specification on which the opponent relies and that of the opposed application contain the same services.  Those services which are not the same services are services of the same description in terms of the criteria applied in Mid Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616 where the Court said of the expression ‘services of the same description’:

   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 [1953] HCA 73; (1954) 91 CLR 592 at 606 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) 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.

10. I note that both theatres and clubs might be expected to have similar kinds of performers, booked through similar agents, in shows which are staged or produced by similar personnel (as regards, for example, directors, producers, or sound and lighting technicians).  If the personnel involved in the provision of either service belong to unions or professional associations, they will be the same unions and professional associations.  Additionally, the services are provided to similar customers – ie those wishing to be entertained by shows or performances.  Thus, if the services provided within clubs and theatres mentioned above are not the same services, they are services of the same description.

11. Concerning the similarity of the trade marks, Ms Chysanthou argued that the trade marks are substantially identical or, if not, are deceptively similar.

12. The expression ‘substantially identical’ was discussed by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 12 of his judgment:

    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 cf 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.

13. Ms Chysanthou argues, in essence, that the word IDOL is the essential feature of both trade marks and the other written matter, being alternatively the alphabetical letters ‘DJ’ or the word ‘AUSTRALIAN’, are purely descriptive.

14. Thus the issue of identity is said to fall into the same class of considerations as that in PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602 where Carr J found the trade marks CHILL and CHOC CHILL to be substantially identical, the word ‘CHOC’ being purely descriptive in relation to the goods which were ice-creams.

15. There are, however, two other considerations that I cannot overlook.  Firstly, (and possibly not fatally) the alphabetical letters ‘DJ’ and the word ‘AUSTRALIAN’, while being purely descriptive, refer to descriptions within different genera – the former being a class of person and the latter being a geographical reference.  It is not clear to me that these two different descriptions will be seen as having the same kind of reference to the character or quality of the services.  Secondly, there is the ‘get-up’ within the opponent’s trade mark which, while not being particularly adapted to distinguish in relation to the services, or contributing in a major way to the overall inherent adaptation to distinguish in the opponent’s trade mark,[1] cannot be overlooked.

    [1] Bayer  Pharma Pty Ltd v Farbenfabriken  Bayer Aktiengesellschaft [1960] HCA 35; (1965) 120 CLR 285; Benz Case (1913) 30 RPC 177; Ludowici Case [1938] HCA 67; (1938) 61 CLR 149 (at p293); Blount Inc v Registrar of Trade Marks [1998] FCA 440

16. In the end, I am not satisfied, because of these two factors, that the trade marks are substantially identical.

17. Deceptive similarity is to be assessed in a different way from that outlined above, concerning substantial identity.  In Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641, Dixon and McTeirnan, JJ said, concerning the comparison of trade marks:

    In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

18. Subsequently, in the same case, they said:

    It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.

19. Further, the context of the use of the trade marks is to be considered.  This contextual comparison was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J 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.

20. I agree here that the essential feature in the trade marks of the parties is the word ‘IDOL’.  It appears to me to be arbitrary in relation to the services of the registered trade mark – that is, the word is distinctive and memorable in relation to the relevant services and will be regarded by most people, in the context of the trade marks and the similar services of the parties, as referring to the services of the opponent.

21. The other printed matter within the trade marks, while not similarly descriptive, is purely descriptive matter and does not aid in distinguishing between the trade marks.  The alphabetical letters ‘DJ’ usually refer in the context of the use of the trade marks to a disc jockey and the word AUSTRALIAN refers to the country in which the services are offered or performed.

22. I do not consider that this is an occasion where most people will see the opposed trade mark as making a cheeky reference to the opponent’s trade mark.  Registration of the trade mark, it must be remembered, is Australia-wide and the applicant could use the trade mark throughout Australia on a large scale, or license its use to others to do so.  Thus I do not regard this matter as falling within the ‘parody’ class of cases such as those I discussed in Southcorp Limited v Morris McKeeman [2006] ATMO 48:

    […] in Pacific Dunlop Ltd v Hogan (1989) 14 IPR 398; 87 ALR 14, Burchett J stated at IPR 430:

    The suggestion in the present case, as his Honour found the facts, was of an endorsement of the appellant’s shoes by Mr Hogan’s almost universally appreciated Crocodile Dundee personality, and through that of an association between Mr Hogan and the product so endorsed. The television audience would accordingly hold the shoes in higher regard. On the evidence, some evocation of Crocodile Dundee was admittedly both intended and achieved; I do not see any basis for disturbing Gummow J’s view of its true effect. That view owed much to the special nature and circumstances of Mr Hogan’s portrayal of a character really indistinguishable from his own public image. It is, too, consistent with the concession made by the advertisement’s author, as noted by his Honour (ALR at 410; IPR at 232), "that the intention of the advertisement was that viewers should get an impression of Crocodile Dundee in connection with Grosby shoes". I reject the appellant’s attempt to avoid, by miscalling its advertisement a parody, the consequences of representing Crocodile Dundee (actually addressed in the advertisement by his name Mick) as endorsing its shoes. The essence of Mr Hogan’s performance is parody , which can hardly itself be parodied, at least by what would be more accurately described as a parasitic copy -- parasitic because its vitality is drawn entirely from the audience’s memory of the original. As well might an attempt to imitate "HMS Pinafore" be called a parody of Gilbert and Sullivan!

    Thus, the parody, if it be such, must be of a nature that it is immediately and principally recognizable as both parody and distinct from the original and not imply some endorsement by the its owner, or a connection with the original or its owner such that the goods would be seen by the public as originating from the owner of the original. 

    In Coca-Cola Company v All-Fect Distributors Ltd (T/as Millers Distributing Company) (1998) 43 IPR 47 Merkel J observed:

    An analogous commercial use, which has also been held to fall short of representing a trade or commercial connection, can arise when an imitation product is created as a parody. In Nike Inc v "Just Did It'’ Enterprises 6 F 3d 1225 (7th Cir 1993 at 1227–8) the United States Court of Appeals for the Seventh Circuit said:

    Parodies date back as far as Greek antiquity ... "Parody or satire, as we understand it, is when one artist, for comic effect or social commentary, closely imitates the style of another artist and in so doing creates a new art work that makes ridiculous the style and expression of the original'’ ... But parodies have a legal hurdle to overcome. Federal law prohibits copies or imitations that confuse consumers. ... This protects trademarks as a form of intellectual property ... and guards against confusion, deception or mistake by the consuming public. ... Whether a customer is confused is the ultimate question. If the defendant employs a successful parody, the customer would not be confused, but amused ... Thus, we agree with the district court that parody is not an affirmative defence but an additional factor in the analysis. "[T]he keystone of parody is imitation. It is hard to imagine, for example, a successful parody of Time magazine that did not reproduce Time’s trade marked red border. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that is not the original and is instead a parody. To the extent that it does only the former but not the latter, it is not only a poor parody, but also vulnerable under trade mark law, since the customer will be confused'’ ... Thus the parody has to be a take-off, not a rip-off.

    Merkel J continued with the caution that:

    However, as was said by Lehane J in McIlhenny[2] (citing authority in the referred to cases) many cases are illustrative of circumstances:

    ... where in the public mind the association between a particular image and a particular source is so strong that the evocation of the image in the get-up or marketing of a wide range of disparate goods or services will lead people to conclude that there is a commercial connection of some kind between the goods or services and the originator (or "owner'’) of the image.

    The authorities demonstrate that in the final analysis each case will turn on its own facts.

    [2] McIlhenny Co v Blue Yonder Holdings Pty Ltd formerly trading as Tabasco Design & Anor [1997] FCA 962

1. If the trade mark DJ IDOL is intended to be a parody or cheeky reference to the AUSTRALIAN IDOL trade mark of the opponent, the parody does not succeed.  While there may be no confusion or deception within the actual (or proposed) use of the trade mark of the applicant, this is not the appropriate test – what I am to consider is the use of the trade mark which the applicant can make within the scope of the proposed registration throughout Australia: Application by Smith Hayden & Co Ltd (1946) 63 RPC 97 at 101.

2. Accordingly, I consider the trade marks of the parties are deceptively similar.

3. As the opponent has established that it has a trade mark which is deceptively similar to the opposed trade mark in respect of the same or similar services which has an earlier priority date than that of the opposed trade mark application, the ground under section 44 is established.

Decision

1. Section 55 of the Act provides:

   Decision

   55. 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.

2. I refuse to register application 1150651

Costs

1. Having been successful in their opposition, the opponents are entitled to their costs which I award against the applicant at the official scale set out in the regulations.

Iain Thompson

Hearing Officer

Trade Marks Hearings

28 October 2008