Hoser v Sportsbet Pty Ltd
[2018] FCA 1557
•16 October 2018
FEDERAL COURT OF AUSTRALIA
Hoser v Sportsbet Pty Ltd [2018] FCA 1557
File number: NSD 1292 of 2018 Judge: ROBERTSON J Date of judgment: 16 October 2018 Catchwords: TRADE MARKS – whether the pleaded television commercial was a use by the respondent of “snake man” or “snakeman” as a trade mark
CONSUMER LAW – whether the pleaded television commercial represented to adult consumers in Australia that the man depicted in the advertisement was “the snakeman” – whether the television commercial represented to adult consumers in Australia that there was a connection or association between the applicant and the respondent
PRACTICE AND PROCEDURE – separate questions, pursuant to r 30.01 of the Federal Court Rules 2011 (Cth) – whether if the answers to the three substantive questions was no, the originating application (as amended) should be dismissed, in whole or in part
Legislation: Competition and Consumer Act 2010 (Cth) Sch 2 (‘Australian Consumer Law’) ss 18, 29
Trade Marks Act 1995 (Cth) ss 7, 17, 20, 120
Federal Court Rules 2011 (Cth) r 30.01
Cases cited: Australian Competition and Consumer Commission v Telstra Corp Ltd [2007] FCA 1904; 244 ALR 470
Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2013] HCA 54; 250 CLR 640
Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; 96 FCR 107
E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144
General Electric Co v General Electric Co Ltd [1972] 1 WLR 729; [1973] RPC 297
Idameneo (No 789) Ltd v Symbion Pharmacy Services Pty Ltd [2011] FCAFC 164; 94 IPR 442
Interlego AG v Croner Trading Pty Ltd [1992] FCA 992; 39 FCR 348
Telstra Corporation Ltd v Optus Communications Pty Ltd [1996] FCA 1035; 36 IPR 515
Date of hearing: 16 October 2018 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Trade Marks Category: Catchwords Number of paragraphs: 68 Counsel for the Applicant: Mr B Levet Solicitor for the Applicant: Legal Exchange Lawyers Counsel for the Respondent: Mr HPT Bevan Solicitor for the Respondent: Bird & Bird ORDERS
NSD 1292 of 2018 BETWEEN: RAYMOND HOSER
Applicant
AND: SPORTSBET PTY LTD ACN 088 326 612
Respondent
JUDGE:
ROBERTSON J
DATE OF ORDER:
16 OCTOBER 2018
THE COURT ORDERS THAT:
1.The separate questions be answered as follows:
(1)Whether the television commercial in paragraphs 10 and 11 of the amended statement of claim is a use by the respondent of “snake man” as a trade mark?
Answer: No.
(2)Whether the television commercial in paragraphs 10 and 11 of the amended statement of claim represents to adult consumers in Australia that the man depicted in the advertisement is “the snakeman”?
Answer: No.
(3)Whether the television commercial in paragraphs 10 and 11 of the amended statement of claim represents to adult consumers in Australia that there is a connection or association between the applicant and the respondent?
Answer: No.
(4)If the answer to questions (1), (2) and (3) is no, whether the originating application (as amended) should be dismissed, in whole or in part?
Answer: Yes, in whole.
2.The originating application, as amended, is dismissed.
3.The applicant pay the respondent’s costs, as agreed or assessed.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
ROBERTSON J:
Introduction
By his amended originating application filed on 4 September 2018, the applicant claims the following relief, (using the original numbering):
1.Injunctive relief pursuant to section 126(1)(a) of the Trade Marks Act 1995 (Cth) (‘Trade Marks Act’) and section 232(1)(a) of the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act 2010 (Cth)) (‘ACL’) restraining the Respondent and its servants and agents from broadcasting the Respondent’s advertisements on television and online which contain the words ‘snakeman’ or ‘snake man’ in aural form.
2.Injunctive relief pursuant to section 126(1)(a) of the Trade Marks Act and section 232(1)(a) of the ACL restraining the Respondent and their (sic) servants and agents from using or threatening to use the marks ‘snake man’ or ‘snakeman’ or any marks substantially identical with or deceptively similar to these marks, in any form (visual or aural) in the Respondent’s advertisements, broadcast on television or online.
4.An account of profits pursuant to section 126(1)(b) of the Trade Marks Act made by the Respondent through use of their advertisements containing the mark ‘snakeman’ or ‘snake man’ in breach of section 120(1) of the Trade Marks Act or alternatively, for breach of section 120(2) of the Trade Marks Act or alternatively, for breach of 120(3) of the Trade Marks Act.
5.Alternatively, damages pursuant to section 126(1)(b) of the Trade Marks Act for breach of section 120(1) of the Trade Marks Act or alternatively, for breach of section 120(2) of the Trade Marks Act or alternatively, for breach of 120(3) of the Trade Marks Act.
6.Further or alternatively, damages pursuant to section 236(1) of the ACL for contravention of sections 18 and 29(1)(g) of the ACL.
7. Respondent to pay the Applicant’s costs.
8. Such further or other orders as the Court considers appropriate.
The statutory provisions
The relevant provisions of the Trade Marks Act 1995 (Cth) are as follows:
17 What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note: For sign see section 6.
20 Rights given by registration of trade mark
(1)If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:
(a) to use the trade mark; and
(b) to authorise other persons to use the trade mark;
in relation to the goods and/or services in respect of which the trade mark is registered.
Note 1: For registered owner see section 6.
Note 2: For use see section 7.
Note 3:In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
(2)The registered owner of a trade mark has also the right to obtain relief under this Act if the trade mark has been infringed.
Note: For what amounts to an infringement of a trade mark see Part 12.
(3)The rights are taken to have accrued to the registered owner as from the date of registration of the trade mark.
Note: For date of registration see section 6.
(4)If the trade mark is registered subject to conditions or limitations, the rights of the registered owner are restricted by those conditions or limitations.
Note: For limitations see section 6.
(5)If the trade mark is registered in the name of 2 or more persons as joint owners of the trade mark, the rights granted to those persons under this section are to be exercised by them as if they were the rights of a single person.
120 When is a registered trade mark infringed?
(1)A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
Note 1: For registered trade mark see section 6.
Note 2: For deceptively similar see section 10.
Note 3:In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
(2)A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
(a)goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or
(b) services that are closely related to registered goods; or
(c)services of the same description as that of services (registered services) in respect of which the trade mark is registered; or
(d) goods that are closely related to registered services.
However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.
Note 1: For registered trade mark see section 6.
Note 2: For deceptively similar see section 10.
Note 3:In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
(3) A person infringes a registered trade mark if:
(a) the trade mark is well known in Australia; and
(b)the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
(i)goods (unrelated goods) that are not of the same description as that of the goods in respect of which the trade mark is registered (registered goods) or are not closely related to services in respect of which the trade mark is registered (registered services); or
(ii)services (unrelated services) that are not of the same description as that of the registered services or are not closely related to registered goods; and
(c)because the trade mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and
(d)for that reason, the interests of the registered owner are likely to be adversely affected.
Note 1: For registered trade mark see section 6.
Note 2: For deceptively similar see section 10.
Note 3: For well known in Australia see subsection (4).
Note 4:In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
(4)In deciding, for the purposes of paragraph (3)(a), whether a trade mark is well known in Australia, one must take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason.
7 Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note: For prescribed court see section 190.
(2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.
(3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.
(4)In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second hand goods).
(5) In this Act:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.
Separate questions
Rule 30.01 of the Federal Court Rules 2011 (Cth) provides:
30.01 Application for separate trials
(1)A party may apply to the Court for an order that a question arising in the proceeding be heard separately from any other questions.
(2) The application must be made before a date is fixed for trial of the proceeding.
Note 1: The Court may order that a party state a case and the question for decision.
Note 2:The Court will give any directions that are necessary for the hearing of the separate question.
Before the Court are the following questions which, by orders made by consent, are to be answered separately under r 30.01:
(1)Whether the television commercial in paragraphs 10 and 11 of the amended statement of claim is a use by the respondent of “snake man” as a trade mark?
(2)Whether the television commercial in paragraphs 10 and 11 of the amended statement of claim represents to adult consumers in Australia that the man depicted in the advertisement is “the snakeman”?
(3)Whether the television commercial in paragraphs 10 and 11 of the amended statement of claim represents to adult consumers in Australia that there is a connection or association between the applicant and the respondent?
(4)If the answer to questions (1), (2) and (3) is no, whether the originating application (as amended) should be dismissed, in whole or in part?
The pleading
Paragraphs 10 and 11 of the amended statement of claim, filed on 4 September 2018, are in the following terms:
10.In or about May 2018 the Respondent began a new television advertising campaign to market its services, in which the Respondent’s advertisements were broadcast on free-to-air television channels 7, 9 and 10.
11.This advertising campaign by the Respondent includes an advertisement which uses the word ‘snakeman’ or ‘snake man’ as a trademark.
Particulars
a.One of the Respondent’s advertisements depicts a man dressed and conducting himself as a snake charmer (Snake Charmer). This advertisement includes a voiceover which states ‘Oi, snakeman [or snake man]!’.
b.In this advertisement, after the voiceover finishes, the Snake Charmer is depicted as being bedazzled, and has lost the snake he was previously handling.
c.There are variations of this advertisement described above, however, for ease of reference the Respondent’s advertisement, including variations of the advertisement, which contain the words ‘snakeman’ or ‘snake man’, will hereafter be referred to as the ‘Advertisement’.
The timetable
On 29 August 2018, I made orders setting a timetable for the hearing of the separate questions. Under those orders the applicant was required to file and serve any affidavit evidence on which he intended to rely on the hearing of the separate questions by 19 September 2018. The respondent was required to file and serve any further affidavit evidence on which it intended to rely on the hearing of the separate questions on or before 26 September 2018. The applicant was required to file and serve any affidavit evidence in reply on or before 3 October 2018.
On 3 October 2018, I made further orders amending that timetable, relevantly as follows:
1. The time in order 5(c) made on 29 August 2018 (for the filing and service of the applicant’s affidavit evidence on the hearing of the separate questions) be extended to Monday, 8 October 2018.
2. The time in order 6(b) made on 29 August 2018 (for the filing and service of the respondent’s affidavit evidence on the hearing of the separate questions… be extended to Wednesday, 10 October 2018.
3. The time in order 7(b) made on 29 August 2018 (for the filing and service of the applicant’s affidavit evidence in reply on the hearing of the separate questions… be extended to Friday, 12 October 2018.
The evidence
By his first affidavit, dated 12 July 2018, the applicant deposes that he conducts business throughout Australia as a reptile expert and government licensed wildlife demonstrator, which includes work as a snake charmer in all forms, government licensed snake catcher, government licensed fauna surveyor and scientist and all other activities to do with wildlife and snakes in particular.
He is the owner of the Australian registered trademarks “snakeman” and “snake man” (respectively trademark numbers 1175589 and 1214301). He deposes that he has been known as the ‘snake man’ since the 1960s and he has newspaper clips identifying him as the ‘snake man’ at least as far back as 1983.
He deposes that he is known globally known as “snake man” and “Snakeman”, a leading reptile expert who is paid to attend scientific conferences and symposia world-wide, a best-selling author of wildlife books, author of over 300 major scientific papers, an International Code of Zoological Nomenclature (ICZN) Name Authority for over 1000 biological entities (mainly snakes).
He deposes that his main brand is “snakeman” or “snake man” and he operates globally and within Australia. He owns the internet domains “snakeman.com.au”, “snakeman.net.au”, “snakeman.co”, “snakeman.pro” and “snakecharmer.com.au” and has owned all of these for many years.
He makes regular television appearances as “the snakeman” and has appeared on all four major Australian television networks as “snake man” (including channels 2, 7, 9, 10) on many occasions for more than 30 years.
He also owns the registered word trademarks for the words “snake man” in Australia, the UK and USA, which, he says, affords a monopoly regarding the use of this word, and international reach and brand recognition under this name throughout the English-speaking world.
He deposes that Internet (“Google”) searches in Australia of the word “snakeman” produce his sites listed on the first page of the Google search results (top 10 results), and always appear in top positions on the results page.
He deposes that he became aware of the respondent’s advertising campaign depicting a snake charmer and including a voiceover stating “Oi, snakeman [or snake man]!” and that it was being broadcast on free-to-air channels 7, 9 and 10 in or about July 2018. He has viewed at least two different variations of the advertisement. He deposes that the respondent often runs the advertisements several times an hour on television on a single channel during prime time.
He deposes that in or about July 2018 he became aware that the respondent’s advertising campaign was also appearing online, through online streaming of televised sporting matches and the presence of the advertisements on websites such as
He deposes that the respondent’s use of the word “snake man” to identify a man in its advertisement is very likely to cause confusion and mislead the general public to think there is a connection between the respondent and himself and his business, which there is not.
The applicant deposes that many people know of him but not what he looks like and/or have not seen him for some time (if they have not seen his television appearances). The respondent’s advertisement could lead people to think he is the man depicted and/or otherwise associated with the financially destructive business of online gambling, instead of the wholesome and wildlife conservation business model, which is what he prides his business on.
The applicant deposes that he has worked extensively to build his reputation, and the association with the respondent (whether through an apparent license of his trademark or otherwise) is damaging to his business.
He deposes that the advertisements lead viewers to assume that he has in fact licensed the respondent to use the moniker, even though he has not. Of course, he deposes, the association of his wholesome business with the business of online gaming is not good for his reputation and business. He deposes that it will no doubt drive a large portion of his customers or prospective customers to use the services of his competitors instead.
He deposes that use of the word “snakeman” by the respondent also dilutes his trademark, as it weakens the association with his identity and his business.
He deposes that his customers are from every sector of society as he deals with all kinds of clients for all sorts of reasons and activities, for example snake charmer acts in stage shows, TV work, nude photoshoots, kids parties, snake catching, fauna surveys, charity work, tv news bulletins, comedy programs, radio broadcasts, mall displays, dog snake avoidance, 21st birthdays, weddings, funerals, Barmitzvahs etc.
Therefore, the applicant deposes, that the respondent’s alleged trademark infringing advertisement is broadcast so frequently, and on channels 7, 9 and 10 during prime time television, means there is a great likelihood that his trademarks are being diluted and his current customers and prospective customers are being misled and deceived by the respondent’s advertisement.
In his second affidavit, dated 8 October 2018, the applicant deposes that he conducts his business from premises at 488 Park Road, Park Orchards, in the State of Victoria. At any one time, he would have lawfully kept on those premises approximately 150 snakes. His business includes the provision of snake catching courses, which are taught at his business premises. His business also conducts snake shows and reptile shows, usually conducted off premises. Most of these are conducted at schools and public events. At any one time, he has approximately 10 part-time employees who undertake many of the off-site snake shows and reptile shows. During the course of his business, the applicant deposes, he is involved in the milking of snakes for the supply of snake venom to scientific and medical laboratories on an “as required” basis. He deposes that his business also includes branded merchandise which is sold from his business premises, “on-line” through his website, and at snake shows and reptile shows. The branded merchandise includes shirts, puzzles, CDs, DVDs and books. All are branded with either the “Snakeman” or “Snake Man”, or both.
The applicant deposes that the relevant books he has written include the following:
ŸHoser, R.T. 1989. Australian Reptiles and Frogs. Pierson and Co., Mosman, NSW 2088, Australia: 238 pp.
ŸHoser, R.T. 1991, Endangered Animals of Australia. Pierson Publishing, Mosman, NSW 2088, Australia; 240 pp.
ŸHoser, R. T. 1993. Smuggled: The Underground Trade in Australia’s Wildlife. Apollo Publishing, Moss Vale, NSW, Australia; 160 pp.
The applicant deposes that a person named John Cann operates a snake and reptile show at La Perouse in NSW sometimes known under the name “Snake Man of La Perouse”. The applicant deposes that Mr Cann operates with the applicant’s permission. The applicant is happy for Mr Cann to use that name because he is a professional snake handler and the applicant is aware that he would not do anything which would hurt the applicant’s brand.
The respondent relies on two affidavits.
The first, dated 10 October 2018, is deposed by Ms Kathy Linda Schokman, the respondent’s Head of Brand and Advertising.
Ms Schokman deposes that a hallmark of the respondent’s advertising is the use of humour or comedic relief to capture the attention of and engage consumers. From February 2018, the respondent ran a series of advertisements which adopted the following format:
(a)the advertisement opens with a scene featuring an individual engaging in an activity that typically requires a high level of concentration;
(b)the individual’s activity is interrupted by a man’s voice calling out to the individual, sometimes prefaced with “Oi”, using a humorous or colloquial name based on the activity the individual is engaged in;
(c)as the individual looks away from their activity, the image of the individual fades in the background while an image of a hand holding a smartphone is superimposed, displaying a Sportsbet special offer or promotion;
(d)the voiceover describes the special offer or promotion; and
(e)in the last few seconds of the advertisement which fades back to the individual, they are shown to have been distracted by the special offer or promotion and, as a result, they generally fail or an unplanned incident occurs in relation to the “high concentration” activity they were engaged in.
As part of this series of advertisements, in May 2018, the respondent caused an advertising campaign to be broadcast on free-to-air television channels 7, 9 and 10. One of the advertisements had the words “Oi, snake man” (Sportsbet Advertisement). The Sportsbet Advertisement is 15 seconds in length. It adopts the format described at [28], as follows:
(a)The advertisement opens with visuals of a traditional snake charmer of South Asian appearance. The traditional snake charmer is sitting on a rug on sand in an outdoor setting. He is wearing traditional clothes including a turban and his sandals are next to him. He is concentrating on playing a traditional flute-like instrument known as a “pungi” and charming a snake from a basket.
(b)Approximately four seconds into the advertisement, a male voiceover interrupts the snake charmer by addressing him using the words “Oi, snake man”, causing the traditional snake charmer to stop playing the instrument and look up.
(c)The image of the traditional snake charmer fades as the image of a hand holding a smartphone is superimposed, displaying a Sportsbet special offer or promotion.
(d)The voiceover discusses the special offer or promotion, which forms the substantive part of the advertisement (lasting around eight seconds). The SPORTSBET trade mark is shown on screen and is mentioned by the voiceover in promoting the respondent’s betting service.
(e)In the last three seconds of the advertisement, the frame fades back to the traditional snake charmer, who looks down at the basket and comically appears bewildered to see that the snake is nowhere to be seen.
Ms Schokman states her opinion that the dominant message conveyed by the Sportsbet Advertisement to consumers is the special offer on the respondent’s betting services. She deposes that the SPORTSBET trade mark is prominently used in the Sportsbet Advertisement in a similar manner to other of the respondent’s advertisements to promote that brand in connection with betting services.
Ms Schokman deposes that the Sportsbet Advertisement is set in what is designed to appear to be an outdoor setting in a South Asian country like India. The snake charmer that is depicted is a caricature of a traditional Indian snake charmer. She states her opinion that there is no reference to the applicant in that advertisement. In her opinion, there is no resemblance between the snake charmer depicted in the Sportsbet Advertisement and the image of the person in annexure KLS-12 to her affidavit, if that shows the applicant. She deposes that the advertisement was broadly aimed at adults but the target audience of the advertisement was males aged 25 to 54.
The second affidavit relied on by the respondent was dated 10 October 2018 and affirmed by Shariqa Anjum Mestroni, a solicitor employed by the solicitors for the respondent. That affidavit goes to a number of Google searches made by the deponent, obtained by typing in the search words “Snake man”, none of which entries refer to the applicant but, in the main, to “Snake Man of La Perouse”, “John Cann, the last Snake Man of La Perouse …” and to “Snake Man of La Perouse” and with a subheading “Legendary snake show every Sunday dating back to the 1800’s”.
The submissions
The respondent submits, first, that the first two screens of the advertisement (that is, the first four seconds) do not include the SPORTSBET trade mark. Put another way, the SPORTSBET trade mark appears on the screen for 11 of the advertisement’s 15 second duration, and the voiceover says “Sportsbet” twice (at the mid-point and the end).
Secondly, the respondent submits, the only time the words “snake man” are used are with the larrikin voiceover’s arresting introductory exclamation (at about the four second mark). Those words are spoken. They do not appear on the screen. Moreover, they last less than one half of one second. The advertisement then progresses, both visually and aurally, to the commercial substance of the advertisement.
Thirdly, the respondent submits, the majority of the commercial (nine seconds) is concerned with the exposition of the particular Sportsbet offer the subject of the advertisement.
Fourthly, the respondent submits, the two halves of the advertisement contain, respectively, two subscripts that are always on screen. The first provides important information for those who may be experiencing difficulties with gambling. The figure “18+” appears in relief against a circle, followed by the words “Is gambling a problem for you? Call Gamblers Help 1800 858 858 or your local state gambling helpline. www gamblinghelpinline.org.au. Gamble Responsibly”. The second outlines some terms and conditions referable to the particular Sportsbet promotion.
Fifthly, the respondent submits, the overall format or narrative structure of the advertisement can be described as follows: (i) the advertisement opens with a scene featuring an individual engaging in an activity that requires a high level of concentration; (ii) the individual’s activity is interrupted by being called upon by the male voiceover by reference to a humorous or colloquial name based on what he is doing; (iii) as he looks up from his activity, the image fades in the background while an image of a hand holding a smartphone is superimposed displaying a Sportsbet special offer or promotion; (iv) the Sportsbet special offer or promotion is described by the male voiceover; (v) in the last few seconds of the advertisement which fades back to the individual, he is shown to have been distracted by the special offer or promotion and, consequently, failed at the high-concentration activity he was previously engaged in.
As to question 1, the respondent submits that the use of the words “Oi, snake man!” in the respondent’s commercial is not a use of those words as a trade mark. Those words are merely introductory, the respondent submits, used in the advertisement’s pithy narrative structure as an exclamatory tool to disrupt both the character and the viewing audience to get their attention for the announcement that follows. In that sense, the respondent submits the words are descriptive of the character in the advertisement’s conceit, not distinctive of the origin of the services. The words are spoken at a time when there is no other brand or sign on screen, and before the subsequent sustained appearance of the SPORTSBET brand. The dominant message conveyed by the advertisement to consumers, the respondent submits, is the special offer on the respondent’s betting services. The SPORTSBET mark is prominently used, both visually and aurally; and, further, is similar to the other advertisements that comprise the suite of Sportsbet television commercials in this campaign. Put another way, the respondent submits, only “sign” being used is SPORTSBET in order to distinguish the respondent’s betting services from those of its competitors. It follows that the answer to question (1) is “No”.
The applicant submits the words “Oi Snake Man” do not have to be used as a trade mark, it is the use of a trade mark that is postulated by s 7(4) of the Trade Marks Act (original emphasis). Further, the applicant submits, it is not relevant that the words are “merely introductory” or that it was “pithy” as submitted by the respondent. The applicant submits that one might ask rhetorically if the respondent were to have a similar “pithy” introduction depicting a garishly clad person with a voiceover of “Oi Gucci Man” whether that would not amount to a use of the Gucci trade mark or whether a depiction of a fat person eating a burger with a voiceover of “Oi Macca’s Man” would not involve an infringement of the McDonald’s trade mark. The matter is to be determined objectively. The applicant submits that the contention by the respondent that the only sign being used is “Sportsbet” is misconceived. There is an aural representation of the trade mark “Snake Man”. This is a trade mark which the applicant uses to distinguish goods and services supplied by him from those of his competitors. Section 20(2) of the Trade Marks Act provides that the registered owner of a trade mark has the right to obtain relief under the Act if the trade mark has been infringed. The applicant submits his registered trade marks “Snakeman” and “Snake Man” have been so infringed and he seeks relief accordingly. The applicant submits that customers of the applicant might reasonably infer a connection between the advertisement and the applicant.
The respondent submits that issues about Gucci and McDonald’s do not arise.
Turning to questions 2 and 3, the respondent relied on the analysis of Gordon J in Australian Competition and Consumer Commission v Telstra Corp Ltd [2007] FCA 1904; 244 ALR 470, as follows, referring to the first step of the analysis, that is, whether the advertisement conveyed the pleaded representation:
[14] The relevant legal principles have been well traversed by Australian courts. A two-step analysis is required. First, it is necessary to ask whether each or any of the pleaded representations is conveyed by the particular events complained of: Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45; 169 ALR 677; 46 IPR 481; [2000] HCA 12 at [105] (Nike); National Exchange Pty Ltd v Australian Securities and Investments Commission (2004) 49 ACSR 369; 61 IPR 420; [2004] ATPR 42-000; [2004] FCAFC 90 at [18] per Dowsett J (with whom Jacobson and Bennett JJ agreed); Astrazeneca Pty Ltd v GlaxoSmithKline Australia Pty Ltd [2006] ATPR 42-10; [2006] FCAFC 22 at [37] (Astrazeneca). That is, do the 12 events singularly or collectively convey either of the coverage representations and do the three events singularly or collectively convey the CDMA comparison representation.
[15] Second, it is necessary to ask whether the representations conveyed are false, misleading or deceptive or likely to mislead or deceive. This is a “quintessential question of fact”: Australian Competition and Consumer Commission v Telstra (2004) 208 ALR 459; [2004] FCA 987 at [49].
The respondent submits, with reference to Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2013] HCA 54; 250 CLR 640 at [47], the dominant thrust or message of the advertisement is the particular promotion or special offer from the respondent in relation to its betting services. In this way, the only connection, association or affiliation that would be understood by a reasonable consumer is that between the respondent and its own betting services. The respondent is an established, well-known online betting agency which has made significant investments in the marketing and promotion of its own betting services.
The proposition for which the applicant contends – that consumers would think that the snake charmer depicted is him or there is a connection between the respondent and him – is fanciful in the respondent’s submission. To the contrary, consumers would immediately recognise the fictional scene for what it is, namely, a humorous backdrop to the promotion of the respondent’s services. This is so, irrespective of the extent of the applicant’s reputation (if any) in respect of his own particular fields of endeavour. The respondent submits the pleaded representations are not conveyed by its advertisement. It follows that the answer to each of questions (2) and (3) is “No”.
The respondent submits each of questions (1), (2) and (3) should be answered “No”. It follows that the applicant’s claims against the respondent fail in limine, and question (4) should be answered “Yes”.
In accordance with r 30.02(b) of the Federal Court Rules, the respondent submits, the originating application (as amended) should be dismissed with costs.
The applicant submits, in relation to question 2, that the question of whether the television commercial represents to “adult consumers in Australia” that the man depicted is the “Snakeman” is the wrong question. It is not dispositive of the matter and therefore it is inappropriate or inconvenient to answer it. If one looked at a broader definition of the group, the applicant submits, he had the requisite reputation and adults would know him as such.
The applicant deposes in his affidavit dated 8 October 2018 that his business includes “the provision of snake catching courses”, “the conducting of snake shows and reptile shows”, the “milking of snakes for the supply of snake venom”, and the sale of merchandise branded with either the “Snakeman” or “Snake Man” trade marks. From this it can be inferred, the applicant submits, that the applicant’s market is a specialised one consisting of “those who are actual or potential consumers in that market for the goods or services”: Idameneo (No 789) Ltd v Symbion Pharmacy Services Pty Ltd [2011] FCAFC 164; 94 IPR 442 at [397]. The applicant submits that evidence from persons in a specialised market is necessary in determining the question of whether or not the use of the mark in one market is likely to deceive or confuse persons in the specialised market: General Electric Co v General Electric Co Ltd [1972] 1 WLR 729 at 737-738; [1973] RPC 297 at 321; Interlego AG v Croner Trading Pty Ltd [1992] FCA 992 at [140]; 39 FCR 348 at 388. There is no evidence, the applicant submits, before the Court as to whether persons in the relevant specialist market would be misled or confused (original emphasis).
The applicant submits that at the hearing of the substantive matter, should the matter proceed to that point, it is the applicant who would bear the onus of adducing such evidence. This, however, is not the hearing of the final matter. This is an interlocutory application brought by the respondent. It is the respondent who asks that the Court determine the second question. The respondent has not led any evidence on this point. There is no evidence before the Court on this point. The respondent having failed to discharge its onus, the applicant submits, the Court is not able to answer this question either in the affirmative or the negative.
As to question 3, the applicant repeats his submissions in relation to question 2.
As to question 4, the applicant submits that the question is predicated on all three of the preceding questions being answered “No”. In the event that one or any of the preceding questions is answered “Yes”, or alternatively if the Court is unable on the current state of the evidence to answer one or more of them one way or the other, or if it is inappropriate or inconvenient to answer one or more of them then this question should be answered “No”. There is a smaller group, the applicant submits, being those persons who are actual or potential consumers, rather than adult consumers generally.
In response to the applicant’s submission about a specialised market, the respondent submits that Idameneo concerned whether or not the representations were misleading or deceptive or likely to mislead or deceive, the second step in Gordon J’s analysis in Australian Competition and Consumer Commission v Telstra Corp Ltd which I have set out at [42] above.
Consideration
I accept the description of the respondent’s advertisement set out in [30] above.
Question 1
Question 1 asks whether the respondent’s use of the words “snake man” in its advertisement was use of those words “as a trade mark”. It is agreed that the applicant has a registered trademark over the word marks “snake man” and “Snakeman”, that those words are said by the voiceover in the respondent’s advertisement, and that trade mark use can extend to aural representation of a word mark.
As the High Court explained in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144 at [43], approving the statement of the Full Court of this Court in Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; 96 FCR 107, at [19]:
Use “as a ‘trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods … That is the concept embodied in the definition of “trade mark” in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.
In my view the reference to “snake man” in the advertisement is not a use of a trade mark as a badge of origin. The first step in determining whether there was use “as a trade mark” is to identify the goods or services to which the mark is said to be applied. In this case those constituted offers for online sports betting services. The next step is to consider whether the mark was used in such a way as to indicate a connection in the course of trade between those services and the respondent, so as to distinguish those services from goods or services dealt with or provided by any other person.
In my opinion, the use of the ordinary English words “Snakeman” or “snake man” in the respondent’s advertisement did not indicate a connection in the course of trade between the online betting services offered and the respondent and was not used to distinguish services dealt with in the course of trade by the respondent.
There are a number of reasons for this conclusion. First, the words themselves have no connection to either the respondent, a company which engages in online sports betting, or the particular services offered in the advertisements. Second, as submitted by the respondent, the words are spoken at a time when there is no other brand or sign on screen, and before the subsequent sustained appearance of the SPORTSBET brand. Third, the advertisement is clearly divided into a narrative section, which unfolds at the beginning and the end of the advertisement, and a promotional section, which occupies the middle. The effect of this structure is to use the narrative section to capture the viewer’s attention and provide amusement, and to use the promotional section to offer the relevant services and make the connection between those services and the respondent. It is appropriate to characterise this promotional section, as the respondent sought to do, as the “commercial substance” of the advertisement. The words “snake man” are confined to the narrative section and are absent from the promotional section.
I also accept the respondent’s submission that the words were used as “an exclamatory tool to disrupt both the character and the viewing audience to get their attention for the announcement that follows” and in that sense are “merely introductory” and “used in the advertisement’s pithy narrative structure” and are “transitory”. It follows that I reject the applicant’s submission that these characterisations were not relevant to the question whether the use of the words distinguished the services offered in the course of trade by the respondent. I note the observations of Merkel J in Telstra Corporation Ltd v Optus Communications Ltd [1996] FCA 1035; 36 IPR 515 that, in the context of television advertisements: “it will be the first impressions conveyed to that viewer, rather than an analysis of the cleverly crafted constituent parts of the commercial, which will be determinative”. In the present case on seeing the first scene the viewer would not perceive at that stage that this was an advertisement for the respondent’s services. Only when the voiceover occurs is the consumer’s attention taken to the offering of the services.
Questions 2 and 3
These questions deal with whether the advertisement makes representations to adult consumers in Australia that the man depicted in the advertisement is “the Snakeman” or that there is a connection or association between the applicant and the respondent. This is the first step referred to by Gordon J in Australian Competition and Consumer Commission v Telstra Corp Ltd at [14]: see [42] above.
I reject the applicant’s submission that this question should not be answered in the absence of specialised evidence. This submission fails for two reasons.
The first reason is that it is not the likelihood of deception or confusion which is being determined. Rather, what is presently to be answered is whether the representations complained about were in fact made. The question of specialised markets does not arise, and as I have indicated I do not accept the applicant’s submission to the contrary. The question whether the representations complained about were in fact made is capable of being answered without any specialised evidence.
The second reason is that, even if specialised evidence is required contrary to my earlier conclusion, the applicant was directed to file any affidavit evidence on which he intended to rely at the hearing of the separate question by orders I made on 29 August 2018, as extended by orders I made on 3 October 2018. The applicant cannot rely on the absence of such evidence as a ground for opposing the interlocutory application when he had ample opportunity to file any such evidence himself. Further, it is not correct to say that the respondent had the onus to lead evidence on this point. Although the respondent brought the interlocutory application, the stating of the separate questions as contained in that interlocutory application was consented to by the applicant, and questions 2 and 3 both derive from representations pleaded in the applicant’s amended statement of claim. I do not accept the applicant’s submission that it is the respondent who asks that the Court determine question 2 and that therefore the respondent has the onus.
In my opinion, consumers would not think that the snake charmer depicted is the applicant or that there is a connection between the respondent and him. As I have said, the respondent’s advertisements utilise the word “snake man” combined with the visual image of the South Asian snake charmer for humorous and narrative effect as a background for the commercial substance which follows. The applicant’s business is in the nature of a leading Australian reptile expert and wildlife demonstrator. Neither representation has been made out. I accept the respondent’s submission that this question can be determined irrespective of the extent of the applicant’s reputation in his own particular field of endeavour.
If relevant to step 1 of Gordon J’s analysis in Australian Competition and Consumer Commission v Telstra Corp Ltd, I accept the respondent’s submission that the “dominant thrust” or message of the advertisement is the particular promotion by the respondent of its betting services.
Question 4
It follows from the above that the answer to each of questions 1, 2 and 3 is “no”. Therefore question 4, whether the application (as amended) should be dismissed, in whole or in part, arises for consideration.
The applicant’s statement of claim pleads actions for trade mark infringement under s 120 of the Trade Marks Act, which rely on the respondent having engaged in use of the applicant’s mark as a trade mark, and claims under ss 18 and 29 of the Competition and Consumer Act 2010 (Cth) Sch 2 (‘Australian Consumer Law’) on the basis of the representations which formed separate questions 2 and 3. In light of my answers to each of the questions, it follows that there is no continuing basis for the applicant’s claims, and the originating application (as amended) should be dismissed. I have already rejected the applicant’s submission that the smaller group analysis, or the specialised market analysis, is relevant.
Conclusion
The orders I propose are that the answer to separate questions 1, 2 and 3 is “no”, the answer to separate question 4 is “yes, in whole”, and the applicant’s originating application (as amended) is dismissed. The applicant is to pay the respondent’s costs, as agreed or assessed.
I certify that the preceding sixty-eight (68) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson. Associate:
Dated: 16 October 2018
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