Home Box Office, Inc v Susan Stigwood Pty Ltd

[2008] ATMO 31

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 1024898(45) - SIX IN THE CITY - filed in the name of Susan Stigwood Pty Ltd.

Delegate:	Terry Williams
Representation:	Opponent: Written submissions by Chrysiliou Law, patent attorneys. Applicant: Written submissions by Kalyans Lawyers, solicitors.
Decision:	2008 ATMO 31 S 52 opposition: sections 42, 43, 60 not established, registration proceeding

Background

1. Susan Stigwood Pty Ltd has applied to register the trade mark SIX IN THE CITY in respect of services as follows, in class 45:

   Personal and social services meeting the needs of individuals, services of providing dining experiences and/or organising dinners, personal introduction agencies, services to expand social life of individuals, services that promotes (sic) ways of meeting people, services that assist individuals to organise life; and socialising services

2. The application has been examined at the Trade Marks Office and advertised as accepted for possible registration.  Registration, however, is opposed by Home Box Office, Inc (“the opponent”).  The opponent is part of the Time Warner group of entities and distributes the SEX AND THE CITY television series.  This was first launched in the USA in 1998 and on the Channel 9 Network in Australia in 1999.

3. The parties have used the process under Part 5 of the Trade Mark Regulations to file and serve evidence supporting their respective positions.  Ultimately, the opponent requested a hearing, which I was assigned to conduct under delegation from the Registrar of Trade Marks.  At the hearing, the opponent relied on written submissions by Andros Chrysiliou, solicitor and trade mark attorney of the firm Chrysiliou Law.  The applicant also filed written submissions, by Kalyans, solicitors.  What follows are reasons for my decision.

   Grounds of opposition

   Section 41

4. For the opponent, Mr Chrysiliou argued that the applicant’s trade mark, SIX IN THE CITY, was “not capable of distinguishing” in terms of s 41(2) of the Trade Marks Act 1995 (“the Act”).

5. From the applicant’s evidence, the service sought to be provided under the scope of the application involves facilitating the meeting of six compatible people for a dinner engagement.  Mr Chrysiliou made much of the applicant’s “admission” that six people would, under the auspices of the applicant, meet in the city, and that other agencies use business names such as DINNER FOR SIX[1].  Somewhat surprisingly, the applicant’s lawyers have noted in their written submissions that “It is absolutely clear that the application “Six in the City” describes the applicant’s services”.  I can only conclude that either the applicant’s lawyers know little of the general presumption that descriptiveness is antagonistic to the finding that a trade mark is capable of distinguishing, or that they are using “descriptive” in some vague sense, far removed from, perhaps, the term “directly descriptive”, a common enough term under the now-repealed Trade Marks Act 1955.

   [1] DINNER FOR SIX is a registered trade mark (1057216) in respect of:  “Dating services; introduction agency services; introduction services including arranging for individuals to meet likeminded people in informal environments, including over dinner”

6. Despite this, it remains common ground that the key to the test under s 41 is the issue considered by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (the Michigan case) adopted in turn by Branson J in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 and summarised as follows in the Trade Marks Office Manual of Practice and Procedure:

   The test for adaptation to distinguish set out in the Michigan case, that is, "the likelihood that other persons trading in goods of the relevant kind, and being actuated only by proper motives ... will think of the word and want to use it in connection with similar goods” is entirely appropriate for use under the Trade Marks Act 1995.

7. I am satisfied that the expression “six in the city” provides very little information about the applicant’s services.  When compared with expressions like “six at the gallery” or “six go mud-wrestling” the applicant’s trade mark says very little about the nature of the customers, the place at which, or procedure whereby, they would meet, the purpose of the meeting, or any part the applicant might play in that process.  The words “in the city” no doubt have some meaning.  They negate skiing, for instance, or bushwalking.  The opponent’s submissions put it otherwise:

   If you think of socialising services and think of SIX IN THE CITY, it immediately tells you that there are six people socialising in the city. This is especially so if in the personal introductions services field there is an established concept of getting together six people in the city.

8. There is, however, no evidence to support Mr Chrysiliou’s assertion that arranging dinners for six people is an “established concept”.  The only information provided by the words SIX IN THE CITY is that something or other can be counted at being six in number.  Six individuals? Six theatre tickets, each with a mystery blind date partner?  Six club memberships?  Who can say? 

9. I cannot see any significant likelihood that the use of this expression would occur to any other person supplying similar services and acting with proper motives.  The opponent has not satisfied me that a ground of opposition exists under s 41.

   Section 43 

10. This provision reads:

    An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

11. Mr Chrysiliou argued first that the trade mark SIX IN THE CITY might be potentially misleading if applied in relation to services rendered in organizing engagements for only two people, or for any number other than six.  However, s 43 looks at connotations that, inherently, would deceive or confuse.  That potential, to deceive or confuse, must be inherent in the trade mark, Pfizer Products Inc v Karam (2006) 70 IPR 599. There is nothing inherent in the applicant’s trade mark that would make it misdescriptive. The most that can be said is that it is (arguably) capable of being misused by the registered owner. That suggestion, I think, is extreme, since there is no basis at all to suggest that the applicant is using the trade mark in this way, or would be likely to do so. The present trade mark is unlike, for instance, LEMONADE, proposed for use in respect of soda water or vodka. On such goods, the mere act of use would render the trade mark misdescriptive. Allegations of potential misleading use, when turning on questions of potential, rather than inherent, likelihood, are appropriately dealt with under other provisions, such as s 42 and 60, to which I will come in due course.

12. Mr Chrysiliou also argued, under this heading, that s 43 had another and quite different relevance.  He argued that the applicant’s trade mark closely resembled SEX AND THE CITY, the well-known name of the opponent’s television series.  This, he argued, was sufficient to give the trade mark the necessary misleading connotation, viz, some form of connection or affiliation with the opponent.

13. The opponent’s business is in, among other things, a television series entitled SEX AND THE CITY.  Over the course of the years 1999 to 2005, that series dealt with the “relationships of a group of girlfriends and their various dates”.  I gather from the evidence that the women in question are portrayed as heterosexual and not celibate.  There were 94 episodes, and it is reasonable to accept that substantially all of them were screened in Australia, presumably in blocks, over the years in question.  The series was apparently popular, with an audience of (so it is said) six million in Sydney alone and more in Melbourne.  Such an audience is impressive although there is nothing in the evidence to suggest the opponent’s program was as ubiquitous as, say, The Simpsons[2].  The applicant’s lawyers have, quite properly, not contested the existence or extent of the reputation of the opponent’s business under the words SEX AND THE CITY.  To make a long story short, I accept that the words SEX AND THE CITY, as used by the opponent, were quite well known in Australia at the priority date, at which the rights of the parties are to be determined[3].

    [2] Somewhat ironically, the cartoon character Marge Simpson, from that series, has apparently referred to the existence of the opponent’s own series.  The opponent’s material indicates she has described SEX AND THE CITY as “the show about four women acting like gay guys”. 

    [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

14. If I were to accept, for the purpose of argument, that there is sufficient resemblance between the applicant’s trade mark and the name of the opponent’s television series, such that the former may at least sometimes be mistaken for the latter, the opponent has still not established the s 43 ground.  I will deal with that issue in more detail in relation to the s 60 ground of opposition but, for the moment, I simply accept without comment Mr Chrysiliou’s succinct argument, under the present heading, that the likelihood is “obvious”. 

15. Mr Chrysiliou argued, under another heading, that the matter may be resolved as follows:

    … bearing in mind the established reputation … (and) that in effect the applicant has taken the basic dating entertainment idea or theme which underlies the SEX AND THE CITY entertainment, what has happened is that the applicant has virtually reproduced the framework of the opponent’s trade mark in exactly the same number of words and using virtually identical lettering.  There can be no doubt that the use of the applicant’s trade mark would be likely to deceive or cause confusion in such circumstances.

16. He was rightly critical of the evidence brought on by the applicant, to the effect that its clients have not been confused.  Obviously, once a client relationship is established it would be unlikely that any confusion would persist.  It is, as Mr Chrysiliou argued, people who are not clients who need to be considered. 

17. In that context he argued:

    When you consider the question of whether consumers looking at a dating service are likely to think (when confronted with the applicant’s trade mark and having a knowledge of the SEX AND THE CITY entertainment property and its concept), that some association (whether it be one of approval or licence or connection) exists, then surely such likelihood is a real one.  Consumers could easily believe that dating type services provided under SIX IN THE CITY are a clever combination of the dating concepts associated with the SEX AND THE CITY trade mark and SIX people on a dinner date together, and that the SIX IN THE CITY trade mark is so close to the SEX AND THE CITY trade mark that the owners of the SEX AND THE CITY trade mark are clearly also using SIX IN THE CITY, or that there must be permission from the owners of the SEX AND THE CITY trademark to allow the use of SIX IN THE CITY. 

18. Mr Chrysiliou, however, has not satisfied me that there is any basis on which reasonable people, even having mistaken SIX IN THE CITY for SEX AND THE CITY, would apprehend a connection with the opponent.  True it is that the public, or a reasonably large element of it, would be aware that the opponent’s television show deals with, as Mr Chrysiliou put it, “singles dating in the city”.  It might also be fair to expect that a significant part of the business in services such as those for which the applicant seeks registration is provided to people of the same age as the women portrayed in the television show.  There is no evidence to suggest that the audience for the opponent’s television show is particularly confined to any one demographic.  However, in order to set the opponent’s case at its highest, I am prepared to accept that the ages and social aspirations of the customers seeking services such as those specified in the application, on the one hand, and of the opponent’s main viewing audience, on the other, may well coincide to a significant degree.  I see, however, no basis on which any reasonable person would expect there to be any connection between the applicant and what is, or was, an American soap opera, albeit one with a theme of inter-personal relationships.  In saying this, I accept Mr Chrysiliou’s caution that I should allow for the perceptions of people of less than average intelligence.  Even so, his thesis, set out above, is speculative in the extreme.

19. There is no evidence at all of the ordinary franchising of such trade marks to personal services such as the applicant provides.  I note the success of the opposition to the trade marks SUMMER BAY and HOME AND AWAY[4], to which Mr Chrysiliou referred me.  However, in those cases the delegate was satisfied that there was existing character merchandising, and that, more critically, the applicant’s goods would be inferred to be such merchandise.

    [4]  Amalgamated Television Services v Pickard (1999) 48 IPR 133, and Amalgamated Television Services v Clissold (2000) 52 IPR 207 respectively.

20. In the first of those cases, the delegate said:

    Character merchandising, as I understand it, makes use of the existing or projected reputation of a media-based manifestation, often fictitious, by launching goods under trade marks which embody the name or appearance of that manifestation.  In doing so, the marketers have an existing reputation which automatically attaches in the minds of the public to the trade marks, used in relation to the goods.

21. In the present matter, I can see no basis for this “automatic attachment”.  The services provided by the applicant are not t-shirts, stationery, coffee cups or children’s toys, the sort of goods that are classically the subject of character merchandising – see SUMMER BAY, supra, at 137.  The applicant’s services are in themselves specialized, provided on an individual basis to customers who, presumably, are interested in real-life relationships.  There is no reason why potential customers for such services would expect the name of a fictional television program, set in New York and featuring, I presume, Americans, to be a logical or apt one to franchise for such services in Australia. 

22. Nor would the trade marks themselves be particularly likely to suggest a nexus between those services and the opponent – in contrast to, for instance, the successful opposition to registration of the trade mark BRAVEHEART THE MUSICAL[5].  In that case, the word Braveheart had no currency in the English language other than being a coined word, adopted and extensively used by the opponent.  Here, in contrast, even if I ignore the difference between the words SIX and SEX, the words THE CITY are in everyday use by others, in precisely the way the applicant and the opponent both use it.  There is simply not the depth of misleading impression that was so convincing in Hogan v Pacific Dunlop Ltd[6], to which Mr Chrysiliou referred.

    [5] Durkan v Twentieth Century Fox Film Corporation (2000) 47 IPR 651

    [6] (1988) 12 IPR 225

    Remaining grounds – sections 60 and 42

23. These were based on the existence of a significant reputation in the opponent’s television program SEX AND THE CITY, a resemblance between those words and the applicant’s trade mark, and an allegation of a significant risk of deception or confusion (in the case of s.60) or of misleading or deceptive conduct (in the case of s.42, under which the opponent asserts breach of s.52 of the Trade Practices Act 1974).  There is thus a degree of overlap with one aspect of the opponent’s s 43 case.

24. Mr Chrysiliou argued that, because of its extensive reputation, use of the applicant’s trade mark would be contrary to the Trade Practices Act, being likely to either mislead or deceive.  However, a similar finding would, in principle, be more readily open under s 60 of the Trade Marks Act.  The latter triggers at a lower threshold, the causing of mere confusion.  If I am not satisfied that even this test is met, it follows that I could not be satisfied that the use of the applicant’s trade mark would be contrary to law for the purposes of s 42.  The opposition therefore stands or falls by reference to s 60 alone.

25. Because the opposed application was filed before significant amendment to s.60 came into force on 23 October 2006, s.60 in its pre-amended form applies[7].  The unamended form of s 60 provides:

    60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

    Note 1:  For deceptively similar see section 10.

    Note 2:  For priority date see section 12.

    [7] Apple Computer Inc v Todaytech Group Ltd (2007 ATMO 40)

26. The element of reputation is not under serious challenge, as I have already noted.  I accept also that the words SEX AND THE CITY, being the name of an ongoing series of television programs, constitute a trade mark.  I pass over the questions of substantial identity or deceptive similarity at this point, but will return to this issue in detail at paragraphs 29 to 38 below.  Even so, none of the opponent’s remaining grounds of opposition would be established unless I am also satisfied that there will be a significant likelihood of deception or confusion arising from the applicant’s use of its trade mark, in any fair way, for any of the services for which registration is sought. 

27. I note that Mr Chrysiliou, in written submissions, relied on the decision in Esprit International v Union Knitting Mills Pty Ltd[8].  The deciding officer noted, with my own emphasis added:

    The criteria on the likelihood of deception or confusion were set out long ago by Evershed J in Re Smith Hayden & Co Ltd's Application (1946) 63 RPC 97. In comparing the tests in terms of ss 11 and 12 of the Trade Marks Act 1938 (UK), which corresponded to ss 28 and 33 of the Trade Marks Act 1955 (Cth), his Honour said (at 101) of s 11:

    a) Having regard to the reputation acquired by the name Hovis [Esprit in the present proceedings], is the court satisfied that the mark applied for, if used in a normal or fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion among a substantial number of persons?

    In this regard, it is noted that the test concerning s 28 of the repealed Act also applies to s 60, except for the requirement in relation to blameworthy conduct on the part of the applicant.

    [8] (1998) 44 IPR 404

28. I will not draw this matter out by detailing the legislative history that Mrs Zars, the Hearing Officer, traversed.  Mrs Zars was correct in saying that the tests have not changed.  For present purposes, it is sufficient that I note that the onus now lies on the opponent to satisfy me that the necessary likelihood of deception or confusion would arise.

29. For reasons which I have already set out, I remain far from satisfied that there is any significant risk of confusion.  The s.60 ground therefore has not been established and, as I have indicated, the s.42 ground must also necessarily fail.  It follows that the opposition fails outright.

    Deceptive similarity, for the purpose of s 60 only

30. I have decided the section 42, 43 and 60 grounds without any reference to the specific questions of substantial identity or deceptive similarity of the trade marks in the sense in which those terms are defined under the Act. I have found that, even if there is a mistake on that question, there will be no deception or confusion. However, there remains a technical question that is directly applicable only to s 60(a). For completeness, I set out my findings on the arguments put to me on this aspect.

1. Mr Chrysiliou referred me to Shell v Esso[9]  in support of the proposition that the trade marks were at least deceptively similar, if not substantially identical.  I do not accept that the competing trade marks are substantially identical.  All of Mr Chrysiliou’s arguments focus on the possibility of mistake, but the test for substantial identity is a side by side comparison.  The clear visual and conceptual difference between SIX and SEX must conclude that matter in favour of the applicant.

   [9] (1961) 109 CLR 407

2. Mr Chrysiliou stressed, in his submissions, the fact that the opponent’s series is sometimes mis-recalled as SEX IN THE CITY.  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”.  Mr Chrysiliou argued that it is but a small step from this to SIX IN THE CITY. 

3. There is no doubt in my mind that the trade marks have a degree of similarity.  However, the relevant test is defined by s 10:

   For the purposes of this Act, 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. Mr Chrysiliou noted the decisions in Caterpillar Inc v Amco (Vic) Pty Ltd, (CAT and LANDCAT deceptively similar) and Telstra Corporation Ltd v Yellownet Corporation[10], (YELLOW PAGES and YELLOWNET deceptively similar).  However, in those cases the competing trade marks had an identical element.  Again, in both cases the deciding officer was convinced of the descriptive significance of the other element.  Thus, in each case the applicant’s mark was seen to give rise to a reasonable risk of what is sometimes called contextual confusion, whereby the consumer, noting the relevant and differing elements, none the less infers a common source.  Here, for reasons that I will come to shortly, the differences will be noted.  Once the differences are noted, I do not think that any consumer would have any basis for inferring a common origin.

   [10] 49 IPR 407 and 44 IPR 415 respectively.

5. This is not a case comparable to Johnson & Johnson v Kalnin 26 IPR 435 (BAND AID and BAND>>IT deceptively similar on appeal, setting aside the administrative decision to the contrary.) I appreciate, in saying this, the importance of Gummow J’s’s finding on the facts:

   The evidence does not admit any conclusions as to the precise mechanisms involved in cognitive processes.  But it does suggest that the process of perception and recognition of a word involves not so much the reading of the entire word or, in this case, the compound expressions band-aid or band>>it but the seeing and identification of certain features which are then matched to that which is contained in the memory, so that the word then is recognised.  It is that process which is liable in the present situation to lead persons into error.

6. There is nothing in the evidence or in submissions to suggest the purchase of adhesive dressings is analogous with the purchase of the services currently specified.  Nor is this a case where the initial element of the competing trade marks is the same.  The first words of the two trade marks bring to mind strongly divergent ideas.  It is quite possible that the casual observer, perhaps viewing an advertisement on the side of a passing bus, might mis-read the one trade mark as the other.  However, leaving aside the slight risk of confusion involving the well-known tendency of New Zealanders to pronounce “six” in a way that resembles “sex”, no realistic likelihood of actual mistake, or of confusion, exists. 

7. Neither party bought into evidence anything about the nature of potential customers of services such as those specified.  I am left to form my own views about how such people might approach the matter.  It seems to me that people with an interest in obtaining services such as the applicant provides are very likely to give the entire purchasing decision more attention than might go into, say, the selection of a bag of sweets in the course of buying petrol at a service station. 

8. I note Mr Chrysiliou’s caution that I should not disregard confusion that exists merely at the start of the purchasing decision but that does not persist up to the point of purchase.  He relied here on the judgment of Heerey J in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd[11]:  “a probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales” and “there may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived”. 

   [11] (1997) 38 IPR 495 at 501

9. However, I think that I can also give some weight to the fact that there is little apparent connection between the opponent’s business and the services now specified.  This would, I think, trigger a greater degree of scrutiny in the event that the applicant’s mark was mistakenly read as SEX AND THE CITY.  In other words, with all due respect to Mr Chrysiliou’s argument set out at para 17 above, I think that any potential customer seeking services such as the applicant provides and who knew of the trade mark used by the opponent would, on seeing what might fleetingly appear to be the name of an American soap opera being used in relation to personal services, immediately do a double-take, as it were.  Such a short-lived error, one that vanishes with the blink of better cognition, cannot be given great weight.  Beyond that point, a reasonable level of attention to the purchase becomes a given.  From there, as I have said, the scope for any sort of confusion or mistake about the two trade marks evaporates.  There is, no doubt, some similarity in their looks, such that mistake cannot be absolutely ruled out.  However, the likelihood of any sort of mistake or confusion of the trade marks is simply not sufficiently tangible or significant.

   Conclusion

10. No ground of opposition has been established.  The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur unless the appeal is discontinued or registration is otherwise ordered by the court.

11. I direct that the opponent pay the applicant’s costs.  The applicant’s lawyers sought an award of indemnity costs.  They were apparently unaware that, under s 221(1), no more than the amounts set out in the regulations can be awarded.  Taxing, should it be necessary, would proceed on that basis.

    Terry Williams
    Hearing Officer
    Trade Marks Hearings
    30 April 2008