FremantleMedia Ltd & 19 TV Ltd v Zhidi Liu

[2010] ATMO 57

TRADE MARKS ACT 1995

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

Re:Opposition by FremantleMedia Limited and 19 TV Limited to registration of trade mark application 1193217(18, 20, 21, 28, 35, 44) - IDOL PETS I DO LOVE PETS - filed in the name of Zhidi Liu.

Delegate:	Alison Windsor
Representation:	Opponent:  Susan Chrysanthou of counsel instructed by Hodgkinson McInnes Patents Applicant:  Did not appear
Decision:	2010 ATMO 57 S52 opposition:  ground established under section 60 – likelihood of deception or confusion if opposed trade mark is used – application refused – costs awarded against applicant.

Background

1. Zhidi Liu of Auckland, New Zealand (“the applicant”) filed an application to register a trade mark, current details of which appear below:

Number	1193217
Filed on:	15 August 2007
Goods and services:	Class 18:  Leashes (leads) for animals; collars for animals; clothing for pets Class 20:  Beds for domestic pets; beds for household pets; carriers for transporting domestic pets (other than cages); feeding mats for domestic pets; hutches for pets; kennels for household pets; materials for use as beds for domestic pets; nesting boxes for household pets; pet cushions Class 21:  Brushes for grooming pet animals; cages for household pets; containers for pet food; covers for cages for household pets; food bowls for pets; food containers for pet animals; litter boxes (trays) for pets; litter scoops for use with pet animals; litter trays (for pets); plastic containers for dispensing drink to pets; plastic containers for dispensing food to pets; restraining cages for household pets; wire cages for household pets Class 28:  Toys for domestic pets; toys for pet animals Class 35:  Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); management of a retail enterprise for others; retail services Class 44:  Adoption agency all relating to pets; advisory services relating to the care of pet animals; care of pets; grooming of pets; pet grooming; pet therapy services
Trade Mark:

1. The application was examined as required by section 31 of the Trade Marks Act 1995 (“the Act”) and as no grounds for rejection were identified, it was advertised in the Australian Official Journal of Trade Marks on 13 December 2007 as accepted for possible registration.

2. On 31 January 2008, two parties jointly filed a Notice of Opposition (“the Notice”) to the registration.  The parties are Fremantlemedia Limited and 19 TV Limited, both of London in the United Kingdom.  As the parties are acting jointly, I shall refer to them as “the opponent”. 

3. The opponent completed service and filing of its evidence in support on 27 November 2008.  The applicant was advised of the deadline for providing its evidence in answer, but did not respond.  In fact, despite numerous documents being served upon the recorded address for service, nothing further was heard from the applicant.

4. The opponent requested a hearing, and I was delegated by the Registrar of Trade Marks to hear the matter in Sydney on 10 May 2010.  Susan Chrysanthou of counsel appeared for the opponent.  The applicant did not appear nor provide any submissions of any kind.

   Notice of opposition

5. The Notice is wide ranging, nominating most of the grounds of opposition available under the Act. In its written submissions provided for the hearing, the opponent stated that it was relying on a number of grounds including those under sections 41, 42, 43, 44, 58, 59, 60 and 62A. The opponent did not make any submissions in respect of section 41, and for completeness I decide that this ground and the grounds relating to sections 58A, 62(a) and 62(b) have not been established.

   Onus

6. The onus is on the opponent to establish a ground of opposition in order to succeed.[1]  The standard of proof is on the balance of probabilities.[2]

   [1]Lomas v Winton Shire Council [2003] AIPC 91-839; [2002] FCAFC 413

   [2] Following Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

7. The opponent’s evidence supports the ground of opposition under the provisions of section 60 of the Act, and that is the ground under which I will decide this matter.

   Evidence

8. The evidence consists of the statutory declaration of Steven Rosser, who is the Director of Legal and Business Affairs of the FremantleMedia Australia Pty Ltd (formerly known as Grundy Television Pty Ltd).  FremantleMedia Australia is described as “a related company to FremantleMedia Limited”.[3]  It is the authorized user of a number of registrations for trade marks incorporating the words “Australian Idol”, many of which appear in the following logo form:

   [3] [3] References to the opponent can be taken as references to the Australian authorised user and vice versa unless otherwise specified.

9. Mr Rosser says the opponent is the producer of the “Australian Idol” television series which is promoted by the AUSTRALIAN IDOL trade mark and features a singing competition.  It was first aired in Australia in July 2003 and a competition has run every year since then. 

10. The “Australian Idol” contest was preceded by the British version of the contest known as “Pop Idol”.  It used the following logo, and was first aired on television in 2001 in the United Kingdom:

11. Following the success of the “Pop Idol” competition in the United Kingdom, a talent show contest utilizing a similar format was rolled out throughout the world.  In most of the countries where the talent show was produced, a link with the original show was maintained by the use of trade marks (some being in logo form) incorporating the word IDOL or IDOLS.  The talent shows were promoted by use of the blue and white get up similar to that which is shown in the “Australian Idol” trade marks mentioned previously.

12. Many of the countries who utilize the format prefix the word “idol” with the nationality or name of the country, as is the case in Australia.  When this is not appropriate, other versions such as “Music Idols” (Bulgaria) or “Super Idol” (Greece) have been used.  There are other variations as well.  However, most use the word “idol”.

13. Mr Rosser says that talent contests utilizing the format have been widely adopted throughout the world and that the “idol format” has appeared in over 38 countries.  The opponent has applied for and obtained registration in different countries for many “idol” trade marks: a list provided at Exhibit SR-6 to his declaration includes over 250 trade marks in a variety of countries.  Extracts and copies of the certificates of registration for some of these trade marks have been provided at Exhibit SR-18.

14. In Australia, Mr Rosser says, the contest is a popular piece of television viewing, with a high proportion of the viewing public watching each contest series.  The same applies, he says, in jurisdictions other than Australia.

15. Mr Rosser also provides examples of the range of merchandising, licensing and sponsorship of third party goods and activities with which the opponent is involved.  This material covers a broad range of goods and services.  He says that the “idol” trade marks have also been promoted on the internet at various official “Australian idol” websites from as early as 2004, as well as being widely featured on independent websites such as Wikipedia and some news sites.

16. At paragraph 46 of his declaration, Mr Rosser notes that the applicant has an address in New Zealand, and that a similar television production operates in New Zealand under the trade mark (owned by the opponent) NZ IDOL, presented in the same logo form get-up as other “Idol” trade marks.  He also notes that the applicant filed an identical “Idol Pets” trade mark in New Zealand on 10 August 2007, five days before filing for the same trade mark in Australia.

    Discussion

17. As mentioned earlier, I will decide this matter under section 60 of the Act. Section 60 provides the following:

    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

18. There is no longer any requirement that there be any specific level of similarity between the trade marks in question, and neither is there a requirement that the goods and/or services of either party have a nexus of similarity.  The matters which the opponent must establish are that there existed, at the application priority date, another trade mark which had acquired a reputation in Australia, and that the reputation was sufficient that the applicant’s use of its trade mark would be likely to deceive or cause confusion.

19. Mr Rosser’s evidence gives considerable detail about the reputation claimed for the AUSTRALIAN IDOL trade marks in Australia, and for other members of the opponent’s “stable” of “idol” trade marks world wide.  The opponent submitted that it has used the brand IDOL worldwide since 2001, and has used AUSTRALIAN IDOL in Australia continuously since 2003. 

20. In respect of the possibility of confusion, the opponent submitted that:

    On the date of the application, 15 August 2007, the opponents’ use of the brand IDOL had been ongoing for a number of years and the programme and its related merchandise, concerts and other public events were at the peak of their popularity.

    The use of the trade mark IDOL PETS I DO LOVE PETS! would be likely to deceive or cause confusion in the market place because it would cause people to wonder whether the applicant’s goods and services (to the extent that they apply the name IDOL PETS I DO LOVE PETS!) are associated with the opponents’ goods and services that apply the Idol brand. 

21. In McCormick & Co Inc v McCormick (2000) 51 IPR 102 Kenny J referred to what is meant by the word “reputation” in the following way:

    [81] What is intended by the word “reputation” in s 60? 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.

    Compare 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”.

    [82] Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?

22. I am satisfied that the opponent’s trade marks have a high profile within the broad Australian marketplace, and that it has developed a reputation within that marketplace sufficient to satisfy the provisions of section 60. The remaining question is whether the applicant’s use of its trade mark in respect of the range of goods and services it is claiming is likely to cause deception or confusion.

23. While there is no longer a requirement that the application be at least deceptively similar to the trade mark identified by the opponent, I consider that aspects of similarity between the trade marks feed into the likelihood of deception or confusion occurring.  In this case the applicant has chosen to use major elements of the opponent’s stable of trade marks in its own trade mark.  The words IDOL PETS are written in an almost identical font to that used in the opponent’s trade marks; they are enclosed in an identical oval device, and are presented in virtually the same blue and white colours.  On face value, the applicant’s trade mark appears to be related to those owned by the opponent as they all appear to use the same “livery”.

24. Given the degree of similarity between the get-up of the applicant’s trade mark and those of the opponent, I am satisfied that use of the applicant’s trade mark would be likely to cause deception or confusion. The opponent is therefore successful in establishing the ground of opposition under section 60 of the Act.

25. Having established one ground of opposition, the opponent is successful in this action.  There is no requirement for me to consider any of the other grounds which were pursued at the hearing, and I do not intend to do so.

    Decision

26. The opponent has established a ground of opposition.  I refuse to register trade mark application 1193217.

    Costs

27. The opponent has requested its costs, and is so entitled.  I award costs against the applicant according to the official scale.

    Alison Windsor
    Hearing Officer
    Trade Marks and Designs Hearings
    10 July 2010