Home Box Office, Inc v Isaias Florenca
[2010] ATMO 99
•7 October 2010
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Home Box Office, Inc to registration of trade mark application nos. 1217033 ABSOFCUKINGLUTELY (25) and 1218949 SEX IN THE CITY (25) - filed in the name of Isaias Florenca.
Delegate: Heath Wilson Representation: Opponent: Michelle Gorton of Chrysiliou IP, Patent and Trade Mark Attorneys.
Applicant: No appearance.Decision: 2010 ATMO 99
Section 52 opposition – grounds pressed under section 42(b), 43, 59, 60 and 62A of the Trade Marks Act 1995. Sections 60, 59 and 62A established and both trade mark applications refused registration – costs awarded against the applicant.Background
Isaias Florenca (‘the applicant’) applied to register the trade mark ‘absofuckinglutely’ (no. 1217033) on 8 January 2008 for ‘Tee-shirts’ in Class 25. The applicant additionally applied to register ‘Sex in the City’ (no. 1218949) as a trade mark on 11 January 2008 for the following goods:
Class: 25 Beach clothing; belts (clothing); boys' clothing; children's clothing; clothing; clothing for babies; clothing for sports; clothing for surfing; clothing for swimming; dance clothing; denims (clothing); drawers (clothing); girl's clothing; headbands (clothing); infants' clothing; jackets (clothing); jerseys (clothing); jump suits (clothing); ladies clothing; men's clothing; tennis clothing; women's clothing; T-shirts
Trade mark application 1217033 was filed through TM Headstart, IP Australia’s assisted filing service where an objection under section 42(a) of the Trade Marks Act 1995 (‘the Act’) was raised by the examiner, on the basis that the trade mark contained or consisted of scandalous matter. As a result, the applicant amended its trade mark to ‘Absofcukinglutely’ prior to the payment of the Part 2 fee. The applicant additionally amended the claimed goods in that trade mark from “Tee-shirts” to “Clothing headgear, footwear.” Both of the applicant’s trade marks were then advertised as accepted in the Australian Official Journal of Trade Marks on 8 May 2008.
On 2 July 2008 the applicant sent an email to Chrysiliou IP, the attorneys representing the opponent, with the heading “Sex and the City TM Infringement” including the following statements[1]:
It has come to my attention that your company has applied for the trademark of “Sex and the City” in Australia for class 25, on behalf of HBO. As you may be aware I applied for the TM “Sex in the City” in January 2008 (TM No. 1218949) for class 25 which has been accepted…I am in the process of listing for sale my Sex in the City TM which generates approx 60 million hits per day (has been as high as 90 million) and the marketing potential from this exposure is a valuable part of my sale value…I wish to inform you that I have been advised to lodge an opposition with IP Australia with regards to your application for it will dramatically affect my sale value…Should HBO have an interest in the purchase of my trademark please send information to my email address…
[1] Exhibit MGG-14 of the Gorton Declaration.
Both of the above trade mark applications were subsequently opposed by Home Box Office, Inc (‘the opponent’) on 7 August 2008 with the notices of opposition citing a number of available grounds under the Act. The opponent then produced evidence comprising the statutory declarations of Sandra Scott (Vice President of the opponent) dated 6 August with attached exhibits SC-1 to SC-15 (‘the Scott declaration’), and Michelle Gorton dated 7 August 2009 with exhibits MGG-1 to MGG-14 (‘the Gorton declaration’). The applicant did not submit any evidence in answer to the opposition.
The opponent elected to be heard on the matter and advised that the grounds of opposition to be pressed for both trade marks would be sections 42(b), 43, 59, 60 and 62A of the Act. On 16 August 2010, I heard this matter in Canberra as a delegate of the Registrar of Trade Marks. Michelle Gorton of Chrysiliou IP appeared on behalf of the opponent, and the applicant did not appear or provide written submissions.
Onus and Reasons
In opposition proceedings before the Registrar of Trade Marks, the opponent bears the onus of establishing one of the grounds of opposition stated in the notice of opposition on the balance of probabilities.[2] I will proceed on that basis when determining the grounds of opposition below, and will address the strongest and most relevant grounds as a matter of priority:
[2] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26]
Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia
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.
Under the provisions of section 60, the opponent bears the onus of establishing that its use of the expressions ‘Sex and the City’ and ‘Absofuckinglutely’ as trade marks enjoyed a reputation existing on the 11th and 8th of January 2008 (respectively) such that the use of the opposed applications would be likely to deceive or cause confusion in Australia.
Section 60 of the Act previously required the trade marks of the applicant and the opponent to be deceptively similar or substantially identical. While this is no longer a prerequisite for a successful section 60 action, it remains an important consideration when determining the likelihood of confusion arising from an opponent’s established reputation in its trade mark. In this matter, it is clear that the trade marks are deceptively similar with only minor changes (such as a misspelling for no. 1217033 and the substitution of the word ‘and’ for ‘in’ for TM no. 1218948) existing between the trade marks. The minor difference between ‘Sex and the City’ and ‘Sex in the City’ is likely to be easily overlooked in the purchase of these goods. Relevantly, the Hearing Officer’s decision in Home Box Office, Inc v Susan Stigwood Pty Ltd[3], addressed the similar issue in this context of consumers mistakenly using the words “in” and “and” interchangeably and commented:
I accept that this is fairly likely. The ordinary elision of the word “and” to “n” would contribute to this but, whatever the reason, there is evidence of it happening. The evidence shows confusion on the internet, with boxed sets of DVD recordings of the opponent’s programs being offered for sale by what I accept is an inadvertent reference to the trade mark as being SEX IN THE CITY. There is a similar error in an article drawn from the Sydney Morning Herald website. The writer of the article, at the time the series was apparently entering its sixth season, used the correct name of the series in the heading, and four times in the body of the article. He then erroneously referred to it as “Sex in the City”.
[3] Home Box Office, Inc v Susan Stigwood Pty Ltd [2008] ATMO 31
I agree with the above comments in relation to the similarity of the trade marks and the resulting likelihood of confusion between them - despite the difference which substitutes the words “in” with “and”. However, the paramount (and decisive) issue for section 60 is the Australian reputation of the opponent’s trade marks that existed at the priority dates of the opposed trade mark applications.
Reputation of ‘Sex and the City’
The opponent’s trade mark ‘Sex and the City’ (no. 1107968) is the name of a well-known American television series which has been broadcast since 1998, and is based on a best-selling book and collection of columns written by Candace Bushnell for the New York Observer.
The series ran for six seasons and has spawned a successful feature length movie and, subsequently, a sequel at the time of writing. The television series and its actors have been the nominees and recipients of numerous Emmy and Golden Globe Awards in the United States. The series has an emphasis on social issues including relationships, dating, sex and (most relevantly for this opposition matter) fashion. This emphasis on fashion is reinforced by a dedicated section on the opponent’s website to the individual styles of the main characters in the television show.[4] In addition, a number of media articles from the United States submitted by the opponent relate to the impact that the show and the film has had on the fashion industry. Since 2000, the opponent has also sold clothing in the United States bearing the ‘Sex and the City’ trade mark along with other apparel, licensed the trade mark to Cosabella, an intimate apparel company which subsequently released a ‘Sex and the City’ line of lingerie.
[4] Scott declaration – paragraph 14, exhibit SC-7.
In Australia, ‘Sex and the City’ was first screened on 6 September 1999 on the Channel Nine Network. Since that time it has been repeatedly screened on various pay and free-to-air television channels and evidently accumulated an overwhelming audience base. The opponent has provided an estimate of an impressive number of viewers on the Arena, W, and Arena +2 Channels in 2008, but this may have occurred after the respective priority dates of the opposed applications. The opponent’s marketing strategies include advertisements, competitions, DVD sales, and promotion of the film with its associated merchandise. The estimates supplied by the opponent relating to the revenue generated by the film in 2008, and also from the series beginning from 1998, are both substantial. The DVDS of all seasons of the television program were released in Australia well before the priority date - however, the opponent has not provided specific DVD sales figures, or produced evidence of general advertising and promotional figures in Australia for the television program or for the film. These omissions could be fatal for some section 60 opposition matters, however, in McCormick & Company Inc v McCormick[5], Justice Kenny cited with approval the comments of the Hearing Officer in Hugo Boss AG v Jackson International Trading[6] who relevantly stated:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the `esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals' and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.
[5] McCormick & Company Inc v McCormick (2000) 51 IPR 102 at [85],
[6] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 at 426.
Taking into account the above considerations, I am satisfied that the opponent has demonstrated a significant reputation via its evidence without providing specific sales and advertising figures in relation to the trade mark ‘Sex and the City’. Given this Australian reputation of the opponent’s trade mark at the priority date, combined with the emphasis on the similar goods (i.e. clothing and fashion), I am satisfied that the applicant’s use of its trade mark in relation to clothing would be likely to deceive or cause confusion in the marketplace. As a result, the average Australian consumer upon viewing the applicant’s trade mark applied to the goods would be likely to associate it with the opponent’s trade mark.
I find that the ground of opposition operating under section 60 has been established in relation to the opposed application ‘Sex in the City’.
Reputation of ‘Absofuckinglutley’
The extent of the Australian reputation in the opponent’s trade mark ‘Absofuckinglutley’ is less evident. This particular expression was used by one of the show’s characters ‘Mr. Big’ in the first (and final) episode of the series, in response to the question of whether he had ever been in love. Since that time, the expression has been mentioned in particular media and fashion articles from the United States. In addition, the expression has been used on clothing and accessories including t-shirts, glassware and a tote bag. Despite these instances, there is little evidence that the opponent’s trade mark is sufficiently well-known in Australia. Even allowing for the spillover reputation in Australia from the opponent’s well-known television series, I am not satisfied that the reputation is sufficient enough for consumers purchasing the applicant’s clothing bearing the trade mark ‘absofcukinglutely’ to be deceived or confused by its appearance on clothing, headgear or footwear. The opposition ground under section 60 in relation to the trade mark ‘absofcukinglutely’ has not been established.
Section 59: Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
Section 62A: Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
In the current matter, I am of the view that the section 59 ground can be discussed concurrently with section 62A. The reason for this is that the particular circumstance of alleged bad faith would also lead to an inference that the applicant lacked the intention to use the trade marks at the filing date. Despite this finding, an overlap in the application of these sections will not occur in all cases as a lack of intention to use a trade mark would not necessarily accompany a finding of bad faith under section 62A. These matters are decided on a case-by-case basis.
Both sections 59 and 62A are determined at the filing date. In previous decisions of the Registrar under section 59, it was decided that the intention to use a trade mark should be a continuing intention.[7] However, the Full Federal Court recently affirmed that the question of intention to use the trade mark is determined at the date of filing.[8] While this view was critically analysed in the obiter comments of Justice Dodds-Streeton in Suyen Corporation v Americana International Limited,[9] her Honour ultimately followed the precedent set by the Full Federal Court. Accordingly, I will proceed on the basis that the intention to use the trade mark is determined at the date of filing, but note that “use (or non use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application.”[10]
[7] Sapient Australia Pty Ltd v Aktiengesellschaft v SAP (2002) 55 IPR 638 at 646; JTI d.o.o v Japan Tobacco, Inc (2006) 69 IPR 430.
[8] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [at 74].
[9] Suyen Corporation v Americana International Limited [2010] FCA 638 (21 June 2010) [at 147].
[10] Food Channel (supra) at [74].
In the first instance, the fact that the applicant has not used the trade marks to date is not determinative (by itself) of a lack of intention to use, as it is not unusual for an applicant to delay use of a trade mark pending the outcome of an application for registration. Additionally, the applicant enjoys a prima facie presumption that he intends to use his trade marks which arises from the act of filing the applications for registration.[11] This presumption arising from filing may be rebutted by slight evidence from the opponent to the contrary[12] thereby shifting the onus and requiring a response or explanation from the applicant.
[11] Aston v Harlee Manufacturing Co (1960) 103 CLR 391.
[12] Estex Clothing Manufacturers Pty Ltd v. Ellis and Goldstein Ltd [1966] HCA 81; (1967) 116 CLR 254.
The applicant has been put on notice that its intention to use the trade marks “Sex in the City” and “Absofcukinglutley” and the issue of bad faith would be raised[13] by the inclusion of its email to the opponent extracted in paragraph 3 of this decision. Given the contents of the email, I find that the onus has shifted to the applicant to affirm its intention to use its trade mark “Sex in the City.” The fact that the applicant offered to sell the trade mark ‘Sex in the City’ specifically to the opponent shortly after its acceptance creates an inference of bad faith on the part of the applicant. In relation to an intention existing at the filing date, this is an example of a later event which casts light on the true position at an earlier date.[14] As the applicant appeared to have the intention to sell the trade mark and has not produced any evidence of use I am able to infer that the applicant did not intend to use the trade mark at the time of filing the application.
[13] Specifically paragraphs 34-37, and the accompanying annexure MGG-14.
[14] See Conde Nast Publications Pty Ltd v Virginia Taylor (1998) 41 IPR 505 [at 509] per Burchett J.
The remaining issue is whether there is an additional implication from the applicant’s actions pointing to a lack of intention to use the trade mark “Absofcukinglutely” at the date of filing. The applicant’s email does not refer to this particular trade mark. Despite this fact, it is also necessary to consider all the circumstances of the filing of this trade mark application. IP Australia records indicate that the original filing was for “Absofuckinglutely” for tee-shirts. That expression is identical to the one used by the opponent in its well-known television series – the television series the title of which is substantially identical to another trade mark that the applicant applied to register at a later date.
“Absofuckinglutely” is an expression which has a particular meaning for fans of the opponent’s well-known television program. The original trade mark application was only for “tee-shirts” (sic) in class 25, goods to which the opponent has applied its trade mark to in the United States[15] and the opponent’s ‘absof---inglutely’ t-shirt was also referred to in Melbourne’s ‘The Age’ newspaper in 2004. The opponent’s evidence indicates that the goods to which the expression has been applied (outside of the television program itself) in the United States are mainly t-shirts. When viewed in conjunction with the actions surrounding its other trade mark application, I find that there is an inference which cannot be ignored, and has not been addressed or explained by the applicant.[16] On the balance of probabilities, I find that section 59 has been established in relation to the trade marks “Sex in the City” and “absofcukinglutely”.
[15] Annexure SC-14.
[16] See Jones v Dunkel (1959) 101 CLR 298 at 312.
In relation to the issue of an application made in bad faith under section 62A, the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) sets out certain non-exhaustive examples of actions that would constitute bad faith, most relevantly:
·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
The third example is the most applicable for the above set of facts (given that it is likely that “absofcukinglutely” is a deliberate misspelling of the opponent’s “absofuckinglutely”), and the opponent’s evidence has shifted the onus to the applicant to explain those actions. The applicant has not provided any answer or explanation for the offer to sell the trade mark to the opponent. The content of the applicant’s email obviously creates an inference of bad faith in relation to trade mark application 1218949: “Sex in the City.”
As stated earlier, the offer to sell did not extend to TM No. 1217033: “absofcukinglutely.” Given the unique circumstances referred to above, I am satisfied that it is more likely than not that the applicant was aware that it ought not to have applied for the trade mark ‘absofcukinglutely’ on 8 January 2008. The combination of the above elements is more than coincidence and leads to an irresistible inference requiring some form of response from the applicant. As none has been forthcoming, I find that that both applications were applied for in bad faith and, in the latter case, with the apparent purpose of selling it to the opponent for financial gain. On the balance of probabilities, the ground of opposition under section 62A has also been established for both trade mark applications.
A ground of opposition has been successfully established for each opposed trade mark application and it is unnecessary to address the remaining grounds nominated in the notice, or any further grounds pressed by the opponent.
Decision
Section 55: Decision
(1) 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.
The opponent has established grounds of opposition under the Act in relation to both trade mark applications. As a result, the applicant is unsuccessful in this matter and I refuse to register both trade mark applications ‘absofcukinglutely’ (no. 1217033) and ‘Sex in the City’ (no. 1218949).
Costs
As the opponent has been successful in these matters, I award full costs against the applicant for the first opposition as set out in Schedule 8 of the Trade Marks Regulations 1995, and costs for the second opposition to be taxed in accordance with the decision in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd (2001) 53 IPR 591.
Heath Wilson
Hearing Officer
Trade Marks Hearings
7 October 2010
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