Gregory John Thompson v Mirage Studios

[1994] ATMO 14

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by Mirage Studios to the registration of Trade Marks, applications number 542571 and 543311, in the name of Gregory John Thompson.

Background

Trade Mark Application No. 542571 was advertised as having been accepted for registration on 21st March, 1991, in respect of the following goods:

Sportswear, swimwear, casual wear including swimsuits, bathing caps, shirts, blouses, singlets, vests, pants, suits, trousers, trousersuits, slacks, shorts, skirts, dresses, tracksuits, coats, blazers, jackets, jumpers, cardigans, pullovers, underwear, pyjamas, night dresses, wet suits for water skiing and surfing, socks, footwear and all other goods in class 25.

The trade mark the subject of the application, which was lodged on 18th February, 1991, is:

Trade Mark application No. 543311 is an application, under the terms of s 39(1) of the Trade Marks Act, for a series of trade marks all the subject of one single registration. The application was advertised as accepted for registration, on 14th March, 1991, in respect of:

Transportable swimming pools included in this class; non-motorised surfboards and sailboards; kickboards; games and playthings; gymnastic and sporting articles, instruments and appliances included in this class; cricket, golf and tennis bags; flippers; surfing leg ropes; and all other goods in class 28.

The series of trade marks the subject of the application, which was lodged on 13th February, 1991 is as represented here:

Both applications Nos. 542571 and 543311 are in the name of Gregory John Thompson ("the applicant").

Registration of the applications has been opposed, under the provisions of sub-section 49(1), by Mirage Studios ("the opponent") on grounds which are generalised and which were not fully pursued at the hearing.  Essentially, it is claimed that the applicant is not the proprietor of the marks in question.

On completion of serving and lodging the evidence in support, answer and reply as prescribed by the regulations, the matter was set down for hearing in Sydney on 20th October, 1993.  The opponent was represented by Mr. Ken Niblett, solicitor, of Spruson & Ferguson, patent and trade mark attorneys, while Mr. Martin Pollock, solicitor, of Davies Collison Cave, also patent and trade mark attorneys, attended on behalf of the applicant.

Opponent's Evidence in Support
This consists of two statutory declarations and exhibits.  The first declarant, Mr. Jim Prindle, director of licensing of Mirage Studios, after briefly relating the history of the word COWABUNGA, asserts that it was "virtually unknown in Australia outside the surfing fraternity until the advent of the now world-famous Teenage Mutant Ninja Turtles merchandising concept".  He goes on to assert that his company is the proprietor of all the trade marks derived therefrom and of the copyright to the original stories and likeness of the turtle characters.  He further states that many Australian companies have been licensed to use the mark COWABUNGA and the copyright Teenage Mutant Ninja Turtles characters on specified goods, the first use by Australian licensees having commenced on 3rd May 1990, in respect of thongs.  Subsequently, beach towels bearing the word COWABUNGA were ordered by Target on 1st June, 1990.  From that month on, track pants, T-shirts, shorts and hooded T-shirts bearing the word COWABUNGA were progressively ordered by various retail outlets in Australia.   The second declarant, David Greenstein, solicitor of Spruson & Ferguson, has obtained, from the opponent's licensing agent, samples of the goods in relation to which COWABUNGA has been used and which have been mentioned in Mr. Prindle's declaration.  These samples are appended to his declaration.

Evidence in Answer
The evidence here comprises a leading statutory declaration of Gregory John Thompson, with exhibits, and 13 supporting declarations.  Mr. Thompson declares that he commenced business from the time his business name "Cowabunga" was registered, 24th November, 1982, and continued operating his business using the trade mark COWABUNGA.  The reason for adopting the word COWABUNGA was that it is an Australian surfing term used by surfers when riding down the face of a wave.  The registration of his business name had inadvertently lapsed in September 1989, but it was registered again on 21st October 1991.  Initially, Mr. Thompson's mark had been represented as two words, COWA BUNGA, but he "later" changed to a one-word rendition.  It is not clear when this change was made but I note that, on re-registering his lapsed Business Name in 1991, Mr Thompson registered the name as two words.  Let me note that Mr Thompson's declaration seems to regularly confuse the one-and two-word forms, COWA  BUNGA and COWABUNGA.  The (highly speculative) best that I can say of this is that Mr Thompson may be of the view that it is his mark irrespective of how it is rendered.  However, given that he has, in the text of his declaration, drawn the distinction between the original and later forms of the mark, I find it puzzling that he fails to indicate when the change occurred.

Some samples of clothing articles which, Mr. Thompson states, were sold by him in Australia between 1982 and present date, have been annexed as exhibits to his declaration.  He further asserts that in 1982 he had not obtained advice on lodging a trade mark application for the mark COWABUNGA, but as soon as he became aware of the registration procedure, he acted immediately to obtain registration.  He also explains that he became aware of another party using his mark COWABUNGA when he was told of its use in relation to a movie, "Teenage Mutant Ninja Turtles".  It was then that he sought legal protection of the mark by lodging the present applications and requesting expedited examination.

Although declaring that, from 1982 to present time, he had sold surfboards in Australia bearing the trade mark COWABUNGA, no exhibits relate to such goods.  Mr Thompson has declared that it was, and is, his intention to build up a surf-related business.  He cites examples such as RIP CURL, QUICK SILVER, HOT TUNA etc.

In the supporting declarations various persons attest as to their knowledge of articles of clothing featuring either the COWA  BUNGA or COWABUNGA mark during the period from 1982 to present day.  Only one declarant refers to COWABUNGA surfboards.

Evidence in Reply
Duncan Scott McNab, licensed private inquiry agent of Sydney, in a statutory declaration, provides results of his enquiries as to use of the mark COWABUNGA in relation to surfwear in Brisbane, Sydney and Perth.  He spoke to ten persons in the relevant industry, who had worked, for periods ranging from two to at least seven years, in stores dealing with surfwear.  None of these persons had any knowledge of the mark COWABUNGA being applied to surfwear.  Six of them, however, associated the word with "Teenage Mutant Ninja Turtles".

Decision
Proprietorship
Sub-section 40(1) of the Act provides that:

A person who claims to be the proprietor of a trade mark may make application to the Registrar for the registration of that trade mark in Part A or Part B of the Register.

On the question of acquiring proprietorship McGarvie J said, In Settef v Riv-Oland Marble 10 IPR 402 at page 413:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603: Moorgate Tobacco Co Ltd v Philip Morris Ltd (No2) (1984) 59 ALJR 77 at 83. A person who becomes proprietor of a trade mark in this way is entitled at common law to restrain a person who later commences to use the trade mark."

And further at pages 413-414 his Honour stated:

In considering who, within s 40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 at 625 and 627. Settef claims to be the first person to have used the trade mark in Australia and therefore to have been proprietor at common law in Australia."

A claim to proprietorship in the mark will therefore depend on whether a person can successfully demonstrate first use in Australia.  The use of the mark on which the person relies must be use for the purpose of indicating, or so as to indicate, a connection in the course of trade between the relevant goods and that person: section 6 of the Act, W D & H O Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182 at 191 and Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254 at 271.

Moreover, it will be open to the context to determine how a mark is seen and if, in each case, it is in use as a trade mark. (Shell Co v Esso Standard Oil 109 CLR 407, at p 422 and 425.)

Mr. Niblett conceded that the applicant had used the marks in respect of a restricted range of goods, which fall in the two classes of the subject applications, in a limited area.  However, he argued that the applicant was entitled to registrations of the marks in respect of only those goods on which, at the respective dates of the applications, the applicant could properly claim proprietorship by virtue of use.  In the alternative, he argued that it was possible that an application might succeed for a wider range of goods, but only those of the same description as the ones on which the applicant could show use at the relevant dates.  He argued that it must be considered whether members of the purchasing public, seeing the marks, would connect the marks with the applicant.  Concerning goods of the same description, Mr. Niblett referred to an unpublished decision, Golden Era Shirt Co Pty Ltd v Oleg Cassini, issued on 27th August, 1993, in which the hearing officer dealing with a s 23 matter found that "men's wear" would not all be goods of the same description as "men's shirts".  Consequently, the proprietor could not retain its registration in respect of many articles of clothing but only in respect of "men's shirts".

He noted that, according to the statements by Mr. McNab, the persons contacted by him were not aware of the applicant's marks but associated the name COWABUNGA with "Teenage Mutant Ninja Turtles".  He further pointed out that the opponent had licensed certain companies to manufacture and distribute goods under the mark COWABUNGA, and that some of these activities took place prior to lodgement of the present applications, for example, the opponent's use of the mark COWABUNGA on thongs.  It was his argument, therefore, that the applicant cannot claim proprietorship in respect of footwear in view of lack of evidence of the mark being used on such goods.  The situation had to be considered as at the date of the applications, he said. 

The applicant had lodged the applications after becoming aware of the opponent's activities, Mr Niblett asserted, because the Ninja Turtles concept had created considerable impact on the public and the applicant saw an opportunity of benefitting from the name.  The applicant appears, in his view, to wish to capitalise on the opponent's reputation if he claims he intends to use the mark in respect of footwear.  In the present circumstances where the applications postdate the actual use of the mark by the opponent, the situation is similar to Freighter (Australia) Pty Ltd v Freightliner Corporation, (1992) AIPC 90-862 where the hearing officer had made the observation that the applicant had used its mark in relation to trailers as at the date of the application, but that the opponent may succeed if it can show prior use in trading in any relevant goods.

If the opponent's first use of the mark COWABUNGA, through its licensees, occurred on 3rd May 1990, in respect of thongs, as asserted by Mr Prindle, followed by beach towels on 1st June 1990, and in June and July in respect of other articles of casual clothing, then such use was indeed before the lodgement of the subject applications .  However, as Mr Niblett argued, in order to be successful the opponent would need to establish use of the mark in Australia before that of the applicant.  Even then, the success would of course be limited to the goods on which the opponent had shown actual use.

Turning to the exhibits of the purported first use of the mark on thongs, however, I observe firstly that the strap of the thong is prominently labelled TURTLE POWER.  On the sole of the thong are a number of words and devices, some printed upside down relative to the others.  The most prominent element is the device of the four Teenage Mutant Ninja Turtles with the words TEENAGE MUTANT NINJA TURTLES.  The words, and the script in which they are rendered in this combination, are common to all the other clothing items exhibited by the opponent.  The combination as a whole is overprinted, upside down as it were, on top of various other words, obscuring two of the underprinted words and adding greatly to the impression that the words as so impinged on are mere background to the device of four armed Ninja Turtle characters.  It is in this background, as I see it, that there is a relatively prominent word, beginning with an indiscernible letter followed by "-ABUNGA!", which appears with other words, such as "Stink", "Turtle Power" and "Sewergas", and devices of individual Ninja Turtle characters.  A copy of the upper surface is printed on the page following.  There are no written orders, invoices or catalogues in support of the claim that COWABUNGA was in use as a trade mark. 

In the exhibits comprising a pair of shorts, a T-shirt with a hood and track pants, the word "COWABUNGA" is again represented as an exclamation, together with other words and devices.  In the remaining exhibits, two T-shirts, the word appears in a phrase, i.e. "IT'S COWABUNGA TIME" and "HEY DUDES CO(W?)ABUNGA PEEK-A-BOO".  In the latter phrase, part of the letter "W" is obstructed by a device of a turtle character.  In the exhibits of the articles of clothing there is a copyright symbol with a year and the words MIRAGE STUDIOS, U.S.A., but on none of the garments' neck or waistband labels, where a clothing trade mark might be expected, is there any indication of the word COWABUNGA.  On the contrary, the trade mark found there is the words TEENAGE MUTANT NINJA TURTLES, in a common layout and script, with or without the device of the four cartoon characters in question.

The beach towel would not be included in the scope of either of the applications because such goods fall in class 24, but the manner in which the word COWABUNGA is dealt with is consistent with my observations about the marks used on clothing.  The towel depicts the word "COWA-BUNGA!", together with a device of a large Ninja Turtle, armed and aggressive.  In the bottom right hand corner, emblazoned across the words OFFICIAL TURTLE FORCE, are the words TEENAGE MUTANT NINJA TURTLES, with the same layout and scripts used here as on the clothing labels, the whole being flanked by the devices of the heads of the four Turtle characters.  Again, there are no invoices.

From the manner in which the word "COWABUNGA" is represented on these goods, I gain a distinct impression that it is used as an exclamation or a phrase, an inherently subordinate element of a design featuring the popular Ninja Turtles concept.  It has not, unlike the word PHANTOM in the case of Hearst Corp v Pacific Dunlop Ltd 21 IPR 587, been used for the purpose of identifying the goods as originating from the opponent. In the absence of any evidence to the contrary, I can only conclude that the opponent has not used the word COWABUNGA in a trade mark sense.

Secondly, the use made by the opponent is inextricable from the use being made of the device of cartoon characters and/or the words TEENAGE MUTANT NINJA TURTLES.  Even if I am wrong in my conclusion, above - that the word COWABUNGA is not being used as a trade mark - then it is but part of a far larger and more complex mark.  Viewed in those terms, the differences between the mark of the opponent and that of the applicant are such as to rule out conflicting claims of proprietorship - see Shanahan's Australian Law of Trade Marks and Passing Off pp 157-158.

The applicant's claim as to first use of the mark COWABUNGA since 1982 is supported by exhibits "I", "J", "K" and "L", illustrating the mark on a dress shirt, shorts, T-shirt and a sarong, respectively, all, with the exception of the sarong, having a label attached to the garments and showing the mark COWABUNGA.  The sarong bears the separate words "COWA BUNGA" on the front of the garment. 

While it is not entirely clear when the mark in use changed from being COWA  BUNGA to COWABUNGA, it is equally dubious if the mark sought for registration in block letters is rendered as one word or two.  It seems to me, therefore, that the applicant can rely on use of either form of the mark to support the application.

Most of the declarants are familiar with the applicant's goods bearing the subject marks.  They state that they have bought goods from the applicant at various periods, the earliest being "COWABUNGA" shirts purchased in 1982 by Mr. Leon Gordon Thompson.  Mrs. Dianne Mary Davies has helped the applicant in the manufacturing of the garments, including T-shirts, dress shirts, kids' clothing and board shorts, over the period from 1983 to 1985, and has worked retailing these goods in New South Wales.  The only reference to goods in class 28 of application 543311 is made by Mr. Gregory John Price who purchased a custom made surfboard in 1983.  "The trade name used on this surfboard was COWABUNGA".  In 1985 he purchased another surfboard:  "this was also a COWABUNGA design".

Even though the applicant has not provided evidence in support of use of the marks in respect of all the goods specified in the present applications, that factor is not fatal to the proprietorship claim based on the applications, as the opponent has failed to show any claim that would predate the applications.  That being so, in the words of Dixon J. (as he then was) in Shell Co v Rohm and Haas, supra, at p. 628:

The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration."

During the course of examination of the applications, statements were received from the applicant to the effect that the applicant has been using the marks since 1982 and intended to continue using them on all the goods specified in the applications.  These statements accord with reg 8 of the Trade Mark Regulations.  In Aston v Harlee Manufacturing Co 103 CLR 391 Fullagar J said at p 401:

...the making of an application itself is, I think, to be regarded as prima facie evidence of intention to use.  I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention.

On the same page, his Honour stated that intention was not "to be regarded as meaning an intention to use immediately or within any limited time".  As was pointed out by Mr Pollock, in Deeko Australia Pty Ltd v Decor Corporation Pty Ltd, 11 IPR 531, it was found that the intention to expand the range of goods in respect of which the mark was to be used was sufficient to establish proprietorship. In light of these established principles, in my opinion, the opponent has not discharged the onus on it of displacing prima facie evidence of the applicant's intention to use the mark on all the goods claimed in the applications.

In view of my conclusions, then, I find that the opponent has failed to displace the applicant's claim to proprietorship in the marks under consideration.  The applicant, however, has discharged its onus in this regard.  I therefore dismiss the opposition.  The applicant is entitled to costs in accordance with the official scale.

T. Williams

Hearing Officer

16 February 1994