Global Media Group Services Limited v Mayfair Media Group Pty Ltd

[2024] ATMO 252

TRADE MARKS ACT 1995

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

Re:Opposition by Global Media Group Services Limited to registration of trade mark application number 2056105 (classes 35 & 41) – GN GLOBALNEWS HEADLINES (figurative) - in the name of Mayfair Media Group Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: King & Wood Mallesons

Applicant: Cooper Mills Lawyers Pty Ltd

Decision:

2024 ATMO 252

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44 considered – ground not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition by Global Media Group Services Limited (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the following trade mark in the name of Mayfair Media Group Pty Ltd:

Number:            2056105 (‘Application’)

Trade Mark:        (‘Trade Mark’)

Filing Date:         9 December 2019 (‘Relevant Date’)

Services:             Class 35: Advertising; Advertising services provided over the internet; Online advertising on a computer network; Pay per click advertising; News clipping services

Class 41:Online (electronic) publication of news; Publication of news; News and current affairs programmes; Electronic publication of information on a wide range of topics, including online and over a global computer network

(‘Applicant’s Services’)

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

1. Following the advertisement of acceptance of the Trade Mark for possible registration, the Opponent filed a Notice of Intention to Oppose the Application on 23 December 2021 followed by a Statement of Grounds and Particulars (‘SGP’) on 24 January 2022 (subsequently rectified).  The Applicant filed a Notice of Intention to Defend on 5 April 2022.

2. The parties then entered into a cooling off period. Once the cooling off period was discontinued, the parties had the opportunity to file evidence in accordance with the Regulations. However, neither party filed any evidence.

3. After the evidence stage concluded, the parties were able to request a hearing.  The Applicant requested an oral hearing and the Opponent asked to be heard by way of written submissions.  The Opponent’s written submissions were prepared by Bill Ladas and Molly Flynn of King & Wood Mallesons and filed on 8 November 2024.   The Applicant’s written submissions were prepared by Victor Ng of Cooper Mills Lawyers and filed on 15 November 2024.  I am a delegate of the Registrar of Trade Marks and I heard this matter on 22 November 2024 via videoconference.  Mr Ng appeared at the hearing on behalf of the Applicant and Ms Ashley Medica of King & Wood Mallesons observed the hearing on behalf of the Opponent.  I make my decision based on the aforementioned materials, written submissions of the Opponent and oral and written submissions of the Applicant.

Grounds, onus and relevant date

1. In its SGP, the Opponent particularised grounds of opposition under ss 42(b), 44, 60 and 62A.  However, the Opponent only pressed the ground under s 44.[2]

   [2] As the Opponent relies on an international trade mark registration which is protected in Australia as the basis for this ground of opposition, the technical ground of opposition is under reg 4.15A rather than s 44. However, the terms of s 44 and reg 4.15A are substantively identical for all relevant purposes and given that the parties have framed their submissions in terms of s 44, I have retained the reference to s 44 in this decision. References to s 44 in the present decision should be taken to read reg 4.15A.

2. The onus of proof in an opposition rests upon the Opponent.[3]   The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4] 

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The date at which the rights of the parties are to be determined is the Relevant Date, being both the filing date and priority date of the Application).[5]

Discussion

[5] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 595 (Kitto J).

Section 44

1. Section 44 relevantly 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.

2. In support of this ground of opposition, the Opponent relies on the following Australian registration (‘Opponent’s Registration’):

Number	Trade Mark	Priority Date	Specification[6]
2058576 (IR 1504570)	GLOBAL’S NEWS ROOM (‘Opponent’s Mark’)	22 Feb 2019	Class 38: including Telecommunications; various broadcasting, streaming and transmission services Class 41: including Entertainment; provision of betting facilities, online games, leisure and recreational facilities and competitions (‘Opponent’s Services’)

[6] Full specification of services is set out in Annexure A

1. To successfully oppose the Application pursuant to s 44, the Opponent must establish that:

• the Opponent’s Registration has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’);

• the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark (‘the second requirement’); and

• the Applicant’s Services are similar or closely related to the Opponent’s Services.

1. The Opponent’s Registration satisfies the first requirement in that it is in the name of a person other than the Applicant and has an earlier priority date.

2. It is convenient to next consider the second requirement namely whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark.  In this regard, I note that the Opponent has not argued that the marks are substantially identical.  Nevertheless for completeness, I note that on the side by side test outlined in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, (‘Shell’)[7] there are obvious differences in the elements comprising each of the respective marks and their presentation.  There is not a total impression of resemblance and hence the Trade Mark is not substantially identical with the Opponent’s Mark.

   [7] [1963] HCA 66, [12] (Windeyer J).

3. In terms of the issue of deceptive similarity, s 10 provides that that ‘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’.

4. The marks are no longer to be considered side by side but rather as the High Court explained in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd:

   The essential task is one of trade mark comparison; the resemblance between the two marks must be the cause of the likely deception or confusion. In evaluating the likelihood of confusion, the marks must be judged as a whole, taking into account both their look and their sound.[8]

   [8] (2023) 277 CLR 186, [26] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

5. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the opponent’s trade mark, to the impression they would get from the opposed trade mark.[9] The probability of deception must be finite and non-trivial.[10]  However, as the Full Federal Court noted in Australian Postal Corporation v Digital Post Australia (‘Australian Postal Corporation’):

   …the threshold for confusion is not high. Courts must compare the marks visually and aurally in the context of how the marks are used, and decide if there is a reasonable probability that the ordinary person to whom the marks are targeted, entertains a reasonable doubt as to the relationship between the marks.[11]

   [9] Shell (n 7)  (Windeyer J).

   [10] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020, [43] (French J).

   [11] [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).

6. In instances where the trade marks under comparison have a shared element, the distinctiveness of that common element is an important factor in considering the likelihood of deception or confusion.[12]

   [12] Re Frigiking Trade Mark [1973] RPC 739, 752 (Ch D).

7. The Opponent argues that the most distinctive and memorable part of the Opponent’s Mark is the first two words GLOBAL’S NEWS which are highly similar to GLOBAL NEWS, the most distinctive part of the Trade Mark.  Further, the Opponent says that the element ‘ROOM’ in the Opponent’s Mark is not a striking or distinctive word and ‘does not significantly change the overall meaning of the entirety of the mark’.  In terms of the Trade Mark, whilst the letters GN appear in large bold font, the Opponent argues that ‘their inclusion does not add meaning to the mark’ and hence consumers will focus on the compound word GLOBALNEWS.  Moreover, consumers will understand the element GN to be an abbreviation of GLOBALNEWS reinforcing that element.  It is the Opponent’s contention that consumers are unlikely to recall the element HEADLINES which appears in much smaller font and not in bold.  Even if consumers recall the element HEADLINES, the Opponent says this word also reinforces the meaning of the Trade Mark as GLOBALNEWS.  Given the visual and aurally similarities of the respective essential elements GLOBAL’S NEWS and GLOBAL NEWS, the Opponent claims that consumers with an imperfect recollection are likely to ‘entertain a reasonable doubt as to the relationship between the marks’.[13]

   [13] Australian Postal Corporation (n 11), [70].

8. The Opponent also notes in its written submissions that its recently filed application 2120821 GLOBAL’S NEWS ROOM in classes 9 and 35 (‘Opponent’s Later Application’) encountered an objection based on the Application.  The Applicant strongly objected to this submission which was not raised in evidence and because the objection was withdrawn.  The Opponent says the objection was only withdrawn because the Application was temporarily lapsed due to a failure to extend the acceptance deadline.  Whilst I cannot be certain, it does appear that the objection was withdrawn during the period the Application was lapsed rather than due to a reconsideration by the examiner of the objection.  In any event, whilst I consider that I may have regard to these circumstances under reg 21.15(4) and/or reg 21.19, I do not consider that the Opponent’s Later Application sheds any real light on the question of whether the Trade Mark is deceptively similar to the Opponent’s Mark.  The question of deceptive similarity is for me to determine and I am not bound to follow examination of the Opponent’s Later Application nor examination of the Application which did not encounter an objection based on the Opponent’s Mark.

9. The Applicant notes that neither the Opponent’s Mark nor the Trade Mark is particularly distinctive being comprised of common English words which make reference to the nature of the services claimed.  Hence the Applicant claims, the distinctiveness of the Trade Mark ‘lies in the inclusion of the ‘GN’ device and the presentation and arrangement of the various elements comprised in the composite mark.’  Whereas, says the Applicant, the distinctiveness of the Opponent’s Mark lies in the possessive word ‘GLOBAL’S’ with NEWS ROOM describing a news agency or bureau which services are covered by the registration.  Further, the Applicant contends that the Opponent is disregarding the element NEWS in order to conclude that the appropriate comparison is between GLOBAL’S NEWS and GLOBAL NEWS.

10. In my opinion, the Opponent’s Mark and Trade Mark are visually and aurally distinct despite the shared elements ‘GLOBAL’ and ‘NEWS’.  The visual impression of the marks is particularly important in the context of the services claimed.  The Applicant’s Services will be online or purchased in hard copy by perusing printed publications where the Trade Mark can be seen.  Similarly, the Opponent’s Services are not typically purchased through an oral request.  Moreover, I regard the two marks as conceptually distinct with the Opponent’s Mark creating the impression of a ‘news room’ owned or operated by Global’s’ whereas the Trade Mark suggests the provision of information about recent global events.  Given the descriptive nature of the shared words ‘global’ and ‘news’, I consider that consumers are likely to pay attention to the other elements in each of the marks.  Neither marks is particularly complex and even allowing for imperfect recall of the marks, I believe that consumers will recall the Opponent’ Mark as GLOBAL’S (or even GLOBAL) NEWS ROOM and will not remember the Trade Mark as being similar.  I am not satisfied that there is a real tangible danger of confusion and find that the Trade Mark is not deceptively similar to the Opponent’s Mark.

11. The s 44 ground of opposition is unsuccessful.

Decision

1. The Opponent has not established its ground of opposition under s 44 and trade mark application number 2056105 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.

2. Both parties sought an award of costs and I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

23 December 2024

ANNEXURE A – Opponent’s Services

Class 38:  Telecommunications; radio broadcasting services; digital radio broadcasting services; radio broadcasting over the Internet and other communication networks; streaming of radio programmes and audio material on the Internet; streaming of digital content, relating to entertainment, on the Internet; transmitting streamed sound, audio-visual recordings and multimedia content via mobile telephone devices, and wearable gadgets; transmitting audio-visual recordings and multimedia content via the Internet; Internet communication services; communications by computer terminals; transmission of news and current affairs information; news agency services; providing access to databases; rental of access time to global computer networks; mobile network communications; broadcasting of radio programmes and of music, sound recordings via communications networks; provision of discussion forums; consultancy, information and advisory services relating thereto.

Class 41:  Entertainment; radio entertainment services; organising, arranging and presenting of entertainment; provision of betting and gaming facilities and services; games provided online from a computer database or the Internet; games and competitions provided over a radio station, telephone service, text message service or digital streaming service; organisation of competitions, quizzes, events and games; production of radio programmes; information relating to entertainment provided on-line from a computer database or the Internet; provision of non-downloadable games on the Internet; provision of leisure and recreational facilities via the Internet; conducting multiple player games of chance; competitions provided by telephone; organisation of entertainment competitions; information and advisory services relating to the aforesaid services.