Gallup, Inc v Gallup International Association Gallup International Gmbh
[2023] ATMO 174
•31 October 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Gallup, Inc to extension of protection under regulation 17A.33 of the Trade Mark Regulations 1995 (Cth) of trade mark numbers 2076785 (International Registration Number 1405429) (classes 9, 16, 35, 41 and 42) – GALLUP – in the name of Gallup International Association - and 2076787 (International Registration Number 1406692) (classes 9, 16, 35, 41 and 42) – GALLUP INTERNATIONAL in the name of Gallup International GmbH
Delegate: | Timothy Brown |
Representation: | Opponent: Sam Hallahan of counsel instructed by Chrysiliou IP. Applicant: Miriam Stiel of Allens Patent and Trade Mark Attorneys |
Decision: | 2023 ATMO 174 Trade Marks Regulations 1995 (Cth) – opposition to extension of protection under regulation 17A.33 – sections 41, 43, 60 and 62A considered – s 60 established – extension of protection refused. |
Background
This decision concerns an opposition under regulation 17A.33 of the Trade Mark Regulations 1995 (Cth)[1] brought by Gallup, Inc (‘Opponent’) to the extension of protection of the following International Registrations Designating Australia (collectively ‘IRDAs’):
[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
Trade Mark Number: 2076785
International Registration Number: 1405429
Trade Mark: GALLUP
Owner: Gallup International Association (‘GIA’)
Filing Date: 4 March 2020
Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
Trade Mark Number: 2076787
International Registration Number: 1406692
Trade Mark: GALLUP INTERNATIONAL
Owner: Gallup International GmbH (‘GIG’)
Filing Date: 4 March 2020
Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
For the purposes of this decision, I will refer to GIA and GIG collectively as the ‘Holders’.
Both IRDAs were made in relation to the following goods and services:
Class 9: Downloadable electronic publications in the field of empirical social research, market research, market studies and opinion polling
Class 16: Printed publications and reports in the field of empirical social research, market research, market studies and opinion polling
Class 35: Market research; market studies; opinion polling; preparation of public opinion surveys; consultancy and information services relating to aforementioned services as far as included in this class
Class 41: Providing electronic publications, not downloadable in the field of empirical social research, market research, market studies and opinion polling; providing on-line electronic publications, not downloadable in the field of empirical social research, market research, market studies and opinion polling
Class 42: Scientific research in the field of empirical social research, market research, market studies and opinion polling; consultancy and information services relating to aforementioned services as far as included in this class.
(‘Holders’ Goods and Services’)
The decisions to accept the IRDAs was advertised on 19 November 2020, with respect to IRDA 2076785, and 26 October 2020, with respect to IRDA 2076787.
The Opponent filed notices of intention to oppose the extension of protections on 23 December 2020 in relation to IRDA 2076787 and 14 January 2021 in relation to IRDA 2076785. The Opponent subsequently filed Statements of Grounds and Particulars on 14 January 2021 and 4 February 2021, respectively. The Holders filed notices of intention to defend on 14 May 2021 in relation to IRDA 2076785, and 13 May 2021 in relation to IRDA 2076787.
Evidence in Support was filed by the Opponent and the Holders filed Evidence in Answer. In turn, the Opponent filed Evidence in Reply. Following the end of the periods for evidence an oral hearing was requested.
As a delegate of the Registrar of Trade Marks, I heard this matter on 2 August 2023. Sam Hallahan of counsel appeared on behalf of the Opponent and Miriam Stiel of Allens Patent and Trade Mark Attorneys appeared on the Holders’ behalf.
Grounds of Opposition, Onus and Relevant Date
Regulation 17A.34 provides that an extension of protection may be opposed on any of the grounds on which an International Registration Designating Australia may be rejected and on the grounds set out in sections 58 to 61 and 62A of the Act.
The nominated grounds of opposition are sections 41, 43, 60 and 62A of the Act. The Opponent bears the onus of establishing one or more of the grounds of opposition.[2] The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is the priority date of the IRDAs, being 4 March 2020 (‘Relevant Date’).
Evidence
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).
[3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Opponent
The Opponent filed the following evidence:
Evidence in Support (‘EIS’)
Declaration of Kenneth L. Andersen, Vice President – Law and Senior Counsel for the Opponent, made on 12 October 2021 (‘Andersen Declaration’) with Annexures KA-1 to KA-20.
Evidence in Reply (‘EIR’)
Declaration of Kenneth L. Andersen made on 29 May 2022 (‘Second Andersen Declaration’) with Annexures KA-21 to KA-30.
Declaration of Reynier Van Der Westhuizen, Trade Mark Attorney of Chrysiliou IP Pty Ltd, made on 30 May 2022 with Annexures RV-1 to RV-2.
The Opponent is an American analytics and advisory company founded by Doctor George Gallup (‘Dr Gallup’) in 1935. Dr Gallup was ‘an American pioneer of survey sampling techniques which became famous as the Gallup Poll, a successful statistical method of survey sampling for measuring public opinion’.
Mr Andersen declares that the trade marks GALLUP (‘Opponent’s Trade Mark’) and GALLUP POLL have been used by the Opponent in Australia since 1941. In support, the Andersen Declaration contains screenshots from the website which contains an article outlining the history of opinion polls and a copy of a pamphlet with a public opinion poll conducted by the organisation Australian Public Opinion Polls,[4] an affiliate of the Opponent.
[4] Andersen Declaration Annexure KA-3.
In 1941 Mr Roy Morgan began conducting opinion polling using the ‘Gallup Method’ through the Australian Public Opinion Polls. Mr Morgan had previously studied under Dr Gallup in the United States of America. Examples of opinion polls conducted by the Australian Public Opinion Polls using the Gallup Method are annexed to the Second Anderson Declaration.[5]
[5] Second Andersen Declaration Annexure KA-24.
Since about 2000, the Opponent has conducted business in Australia. The Opponent has traded in books, reports, market research services, public opinion polling, training and personal evaluation services. Annexed to the Andersen Declaration is a summary of the revenue earned in Australia derived from goods and services provided under the trade mark GALLUP from 2003 to 2020.[6] Also included in the Andersen Declaration are invoices issued by the Opponent to customers in Australia from 2000 to 2020,[7] and a list of the Opponent’s primary Australian customers.
[6] Andersen Declaration Confidential Annexure KA-9.
[7] Andersen Declaration Confidential Annexure KA-11.
The Opponent previously applied to register the trade marks GALLUP and THE GALLUP POLL in 1992.[8] The Opponent withdrew its applications following a ground for rejection being raised on the basis that GALLUP was ‘not distinctive’[9]. The Opponent again applied to register the trade mark GALLUP in 1999,[10] but was unsuccessful on the same basis.
[8] Ibid Annexure KA-4; see also: Trade Mark Application Numbers 541686 and 541688.
[9] Ibid.
[10] Ibid Annexure KA-5; see also: Trade Mark Application Number 785859.
According to the Second Andersen Declaration, Dr Gallup granted third parties such as Mr Morgan and his organisations, a non-exclusive license to use the GALLUP and GALLUP POLL trade marks. At no stage was the Opponent excluded from use of the trade marks GALLUP or GALLUP POLL in Australia.
Holders
The Holders filed the following evidence:
Declaration made by Michael Nitsche, Executive Vice-President at GIA, on 25 March 2022 (‘Nitsche Declaration’) with Exhibit MN-1.
GIA is a global association in the field of public opinion polling established in 1947 and based in Switzerland. GIG is an affiliated company of GIA, which registers and manages GIA’s intellectual property. GIA was founded by Dr Gallup and a group of other international experts in the field of public opinion polling.
According to the Nitsche Declaration, following the development of his methodology for opinion polling Dr Gallup sough international cooperation with other opinion polling experts. One such expert was Mr Morgan, whose involvement with the use of Gallup Polls in Australia was outlined in the Andersen Declaration. Mr Morgan was a member of GIA and was the first to conduct an opinion poll in Australia. From 1941 to 1971 Mr Morgan and his organisation, the Roy Morgan Gallup Poll, had a monopoly on public opinion polling published in the Australian media. Mr Morgan conducted these opinion polls under the name ‘The Australian Gallup Poll’. From 1970s, the opinion polls were then conducted under the name ‘The Morgan Gallup Poll’. Mr Nitsche contends that it was this use by Mr Morgan that associated the name ‘Gallup’ with opinion polls in Australia. Various examples of use of GALLUP by Mr Morgan are annexed to the Nitsche Declaration.
Mr Morgan and his organisation, the Roy Morgan Research Centre, were members of GIA. From 2010 to 2016, Colmar Brunton Research was the Australian member of GIA, but since 2018 the Roy Morgan Research Centre has returned to working in cooperation with GIA in Australia.
Mr Nistche declares that the Opponent was a member of GIA until 1992 and contends that the Opponent was never authorised by GIA to conduct public opinion polling under the name ‘Gallup’ in Australia. From 1941 to 2010 this right was exclusively with Roy Morgan and his research company. According to the Nitsche Declaration, in 1981 at the Toronto Conference of Gallup International, members of GIA adopted a resolution confirming that Dr Gallup and the Opponent ‘do not have to give their consent if a member of Gallup International uses the Gallup name in all countries where it has been used until then’. Mr Nitsche explains that since 1957, GIA has had clear rules regarding the use of the GALLUP trade mark. The usage rights are linked to membership with GIA and when a member leaves GIA, it also loses the right to use the GALLUP trade mark.
Discussion and Reasons
Section 60
Section 60 provides:
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.
To succeed on this ground of opposition, the Opponent must establish:
a reputation in another trade mark in Australia before the Relevant Date; and
that use of the IRDAs would be likely to deceive or cause confusion because of the reputation of the other trade mark.
Reputation
Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[11] Reputation is not a factor that is assumed and must be established by the Opponent as a matter of fact.[12]
[11] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[12] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
There are a variety of ways the reputation of a trade mark may be established, including by demonstrating that a significant number of people have been exposed to the trade mark,[13] or providing evidence of high volume of sales,[14] advertising expenditure or other forms of promotion of goods or services to which the trade mark applies.[15]
[13] Ibid [118].
[14] McCormick (n 11) [86].
[15] Ibid.
In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[16]
[16] [2019] FCA 923, [83] (O’Bryan J).
The reputation relied on by the Opponent must be amongst a significant or substantial number of persons.[17] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[18]
[17] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).
[18] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
The Opponent relies on its use, and that of its Australian subsidiary The Gallup Organization Pty Ltd, of the Opponent’s Trade Mark in Australia. In particular, the Opponent emphasises its activities in Australia since 2000.
Although the parties have competing submissions regarding the Opponent’s contention that it used the Opponent’s Trade Mark in Australia since 1941, I am satisfied for the reasons outlined below that the use of the Opponent’s Trade Mark since 2000 is sufficient to demonstrate an extensive reputation in Australia in connection with opinion polls, polling and survey services, market research and opinion poll publications. In arriving at this conclusion, I have had regard to the following:
Use of the Opponent’s Trade Mark in its published reports for its ‘StrengthFinder’ program. According to the Andersen Declaration, 349,031 people have participated in the program between 2000 and 8 July 2021.
The Opponent’s ‘Gallup Access’ online platform, which Mr Andersen declares has acquired 190,000 subscribers in Australia between 2016 and June 2021. The ‘Gallup Access’ platform provides employee surveys on subjects such as company culture, HR management and employee engagement.
Use of the Opponent’s Trade Mark on course material for the Opponent’s employee engagement and skill enhancement programs.[19] According to the Andersen Declaration more than 716,000 people in Australia have gone through these courses between February 2003 to June 2021.
The articles published on the Opponent’s website, wwww.gallup.com, referencing the Opponent’s Trade Mark in relation to opinion polls from 2007 to 2021.[20] The Andersen Declaration states that since 2018, 1,216,908 visitors to that website have had a geolocation of Australia.
[19] Andersen Declaration Annexure KA-17.
[20] Ibid Annexure KA-14.
The Andersen Declaration includes revenue generated in Australia under the Opponent’s Trade Mark from the period of 2003 to 2020,[21] a list of the Opponent’s Australian customers from 2000 to 2021,[22] as well as advertising expenditure from the year 2000 and internet adverting expenditure since August 2008.[23] Additionally, the Andersen Declaration states that since 2002 to 2021 the Opponent has ‘sold over 63,755 GALLUP books in Australia for over AU $1.9 million’.
[21] Ibid [16].
[22] Ibid Confidential Annexure KA-9.
[23] Ibid Annexure KA-12-KA-13.
By any metric, the revenue generated by the Opponent is very substantial. The Opponent’s evidence demonstrates that from 2000, the Opponent’s Trade Mark was extensively used, advertised and marketed in Australia by the Opponent and its Australian subsidiary. I am satisfied based on the evidence before me that the Opponent had, at the Relevant Dates, acquired a reputation in Australia in the Opponent’s Trade Mark with respect to opinion polls, polling and survey services, market research and publications that concern opinion polls.
Likelihood of Deception or Confusion
The existence of a reputation does not necessarily mean use of the Trade Mark would be likely to deceive or cause confusion. The concept of ‘deceive’ and ‘cause confusion’ was explained by Richardson J in the New Zealand decision of Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd[24]:
‘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.[25]
[24] [1979] 19 RPC 410.
[25] Ibid 423.
The test for deception or confusion turns on whether use of the IRDAs would result in a reasonable number of people being caused to wonder whether the Holders’ Goods and Services derive from the same trade source as the other trade mark.[26] The factors relevant to this determination include the strength of the reputation of the other trade mark, the similarity between the Holders’ Goods and Services and the goods or services associated with the reputation of the other trade mark, and the degree of similarity between the relevant trade marks.[27]
[26] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J).
[27] Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).
With respect to the similarity of the trade marks, there are clear similarities between the trade marks. The Opponent’s Trade Mark and IRDA 2076785 are each comprised solely of the word GALLUP while the addition of the word INTERNATIONAL in IRDA 2076787, being a generic word indicating the global aspects of a business, does little to differentiate the trade mark from the Opponent’s Trade Mark.
Turning to the similarity of the Holders’ Goods and Services and the goods and services for which the Opponent’s Trade Mark holds a reputation, I note that they are either the same or very similar. The Holders’ Goods and Services concern opinion polls, polling, surveys, market research, and related publications. These are the same goods and services for which the Opponent’s Trade Mark holds a reputation.
The Holders submit that any likelihood of confusion would be caused by the Opponent’s adoption of GALLUP after the use of the IRDAs in Australia by the Holders. In support of this contention, the Holders refer me to Clarity International Ltd v Clarity Software Pty Ltd,[28]in which the Hearing Officer stated:
While section 60 is not subject to section 44(4), I do not believe that I can ignore the existence of the applicant’s common law trade mark in Australia for a number of years before the opponent commenced business in Australia, and some six years before the opponent registered its trade marks.
I believe there is much merit in the applicant’s assertion that the cause of any deception at the priority date cannot be a result of any reputation of the opponent at that date, rather, as a matter of causation, it must be the product of the opponent's subsequent adoption of this mark in the fact of the applicant’s already established reputation.[29]
[28] [2006] ATMO 20 (Delegate McDonagh).
[29] Ibid [66]-[67].
I do not agree with the Holders’ submission. The ground of opposition under section 60 is not concerned with the question of prior use or honest concurrent use. In Active Skin Pty Ltd v Yey Pty Ltd,[30] Baird J after summarising the relevant authorities, concluded that there is no prior use exception to section 60. Similarly, in McCormick Kenny J held that section 60 is not concerned with honest concurrent use. [31] Although I acknowledge the Holders longstanding use of the IRDAs and the use by Mr Morgan in Australia prior to the use of the Opponent’s Trade Mark, the issue is ultimately whether the reputation of the Opponent’s Trade Mark is such that use of the IRDAs would be likely to result in deception or confusion.
[30] [2022] FedCFamC2G 865 (Justice Baird).
[31] McCormick (n 11) [93], [96]; See also: Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd [2019] FCA 719 [83]-[87] (Davies J).
For the reasons discussed above, I am satisfied that having regard to the extensive reputation of the Opponent’s Trade Mark as of the Relevant Date, there is a real and tangible risk that use of either of the IRDAs would result in confusion with the Opponent’s Trade Mark.
The section 60 ground of opposition has been established. Having found in favour of the Opponent under section 60 of the Act, there is no need to discuss the other grounds set out in the SGP. However, all of the grounds of opposition may be relied on in the event of an appeal from this decision.
Decision
Regulation 17A.34N(1) provides:
(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.
The Opponent has established the ground of opposition under section 60 of the Act. Accordingly, I refuse to extend protection to IRDAs 2076785 and 2076787.
Costs
Both parties sought costs. As the Opponent has been successful in the opposition, I award costs against the Holders in accordance with Schedule 8 of the Trade Marks Regulations1995 (Cth) in respect of trade mark number 2076785. For trade mark number 2076787, I award reduced costs against the Holders under s 221 of the Act in the manner as Hume Industries (Malayasia) Berhad v James Hardie & Coy Pty Ltd.[32]
[32] [2001] ATMO 78 (Delegate Williams).
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
31 October 2023
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