ICC Business Corporation FZ LLC v Nidham Moustafa Ali Al Barazanchi

[2019] ATMO 65

TRADE MARKS ACT 1995

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

Re:Opposition by ICC Business Corporation FZ LLC to registration of trade mark application 1713363(25) - CRICKET (LOGO) - filed in the name of Nidham Moustafa Ali Al Barazanchi.

Delegate:	Jock McDonagh
Representation:	Opponent: David Franklin, Solicitor Applicant: No appearance at hearing nor written submissions filed
Decision:	2019 ATMO 65 Trade Marks Act 1995 (Cth) - Section 52 opposition: Section 52 opposition: s 43 ground established – registration refused.

Background

1. This is an opposition brought by ICC Business Corporation FZ LLC (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Nidham Moustafa Ali Al Barazanchi (‘Applicant’): 

Trade Mark:	(‘Trade Mark’)
Application Number:	1713363
Filing Date:	11.08.2015
Goods and Services:	Class 25: Jackets; jerseys; leggings (leg warmers) / leg warmers; shirts; sports shoes; socks; visors (headwear); suits; tights; underwear/underclothing

1. Following the advertisement on 2 February 2017 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 3 April 2017.  The Opponent then filed a Statements of Ground and Particulars (‘SGP’) on 3 May 2017, which was assessed by this office as adequate. The SGP raised grounds of opposition under ss 41, 42, 43, 44, 58, 59, 60, and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 6 July 2017. The parties then filed their evidence in line with the statutory procedure.

2. I heard the matter in Canberra on 1 February 2019 as a delegate of the Registrar of Trade Marks. David Franklin, Solicitor, appeared by telephone link for the Opponent. The Applicant is represented by Collison & Co, Patent and Trade Mark Attorneys; however, it did not appear at the hearing, nor did it file any submissions.

   Evidence

3. The following evidence was filed in the opposition:

Declarant	Status	Date	Exhibits
Evidence in Support
David Richardson (‘Richardson declaration’)	Chief Executive of International Cricket Council and General Manager of Opponent	25.09.17	A and B
David Franklin (‘Franklin declaration’)	Solicitor for Opponent	25.09.17	C and D
Evidence in Answer
Nidham Moustafa Ali Al Barazanchi (‘Barazanchi’ declaration)	Applicant	19.12.17	NMA1 and NMA2
Anthony Norris (‘Norris declaration’)	Trade Marks Attorney employed by Attorneys for Opponent	21.12.17	AJN1 and AJN2
Evidence in Reply
Lara Haidar (‘Haidar declaration’)	Solicitor employed by Dubai-based agent for Opponent	23.04.18	E to H

1. In the Richardson declaration, Mr Richardson outlines the Opponent’s role in the organisation and governance of the sport of cricket’s major international tournaments, most notably the Cricket World Cup.

2. The Richardson declaration details the history of international cricket as a sport, along with the importance of cricket clothing and protective wear to the sport. The clothing and equipment is subject to the laws of cricket.

3. The Richardson declaration asserts the worldwide and Australian reputation of the Opponent regarding the sport of cricket and the ‘cricket brand’. This is supported by examples of the use of the word ‘cricket’ in relation to use of trade marks related to the sport and various used in the print and electronic media.

4. In the Richardson declaration, Mr Richardson states that the Opponent’s lawyers had obtained evidence (including admissions by the Applicant) that in an investigation into the Applicant and his premises it was established the Applicant had no products available for sale, and the Applicant admitted that he was not trading under the Trade Mark, he had not manufactured any products branded with the Trade Mark, and that he was trying to find a party interested in buying the Trade Mark and was trying to leverage a commercial opportunity relating to the ownership of the Trade Mark.

5. The Barazanchi declaration exhibits a number of registrations of the Trade Mark in the Persian Gulf region, some African countries, EU, Russia Singapore, China and USA.

6. The Barazanchi declaration provided print-outs of an internet web-site that he states offers his goods for sale, including t-shirts in class 25.

7. The Norris declaration exhibited some 45 registered or pending trade marks in class 25 comprising the word ‘cricket’ up to and including the filing date. It included an analysis to the effect that the 45 marks were spread across some 23 different ownership entities.

8. The Haider declaration repudiates the Barazanchi declaration’s examples of use and intended use of the Trade Mark. I will not detail the repudiation in detail, but note that there is no evidence of any sales, goods on the web-site are shown to be ‘sold out’, and registrations tend to be in countries that lack much of a cricket fanbase.

9. The Haider declaration also states that the Opponent had not opposed the registration of the Trade Mark in countries where interest in cricket was not as significant as Australia.

   Grounds of Opposition, Onus and Standard of Proof

10. As indicated in the SGP, the Opponent nominated grounds of opposition under ss 41, 42, 43, 44, 58, 59, 60, and 62A. To oppose the application successfully the Opponent needs to establish at least one of those grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 43. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

11. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties is to be determined is 11 August 2015, being the filing date of the applications in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

    [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

    [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

    [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

    Discussion

12. Section 43 provides:

    43Trade mark likely to deceive or cause confusion

    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.

13. In McCorquodale v Masterson[4] (‘McCorquodale’), Kenny J stated:

    The word “connotation” is defined in The Oxford English Dictionary (Oxford, 2nd ed, 1989) as meaning:

    1. The signifying in addition; inclusion of something in the meaning of the word besides what it primary denotes; implication.

    ...

    b. That which is implied in a word in addition to its essential or primary meaning.

    [4] [2004] FCA 1247

14. To establish a ground of opposition under section 43, there must be an inherent connotation within the trade mark which is likely to deceive or cause confusion. The comments of Gyles J in Pfizer Products Inc v Karam[5] outlined the history of section 43 of the Act, stating that:

    [5] Pfizer Products Inc v Karam (2006) 70 IPR 599 (at [52 -53]).

    Section 43 does not have a long pedigree. It was enacted pursuant to Australia’s obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). TRIPS and the 1992 Working Party Report led to a 1994 Bill containing the following cl 42(2):

    ‘An application for the registration of a trade mark in respect of particular goods or services must be rejected if the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion regarding:

    (a)the nature, quality, origin, intended purpose, or some other characteristic, of the goods or services; or

    
    (b) any connection or relationship that they may have with any particular person.’

    That Bill was enacted but never came into force. In the 1995 Bill (and Act) cl 42(2) of the 1994 Bill was replaced by what is now s 43 of the 1995 Act. The Explanatory Memorandum stated that cl 43 provides:

    ‘That an application for registration must be rejected if the trade mark ... because of some signification inherent to it, would be likely to deceive or cause confusion regarding a characteristic of the goods or services.’
    [Emphasis added]

    It seems that the final form of s 43 is a wider version of the earlier clause with a similar purpose.
    ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question…

15. In Primary Health Care Limited v Commonwealth of Australia [2016] FCA 313 at [17] Jagot J stated:

    Insofar as use of a trade mark would be likely to deceive or cause confusion is concerned (the s 43 issue, on which the respondents bear the onus):

    (1)     The section:

    looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion... (Woolworths at [79]).

    (2) “In order for s 43 to apply, the Court must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations” (McCorquodale v Masterson [2004] FCA 1247; (2004) 63 IPR 582 at [26]).

    (3) The purpose of s 43:

    is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks... (Pfizer Products at [53]).

    (4)     “Whether there is a likelihood of deception or confusion is to be answered ‘not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered’: Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 at 362” (Scotch Whisky Association v De Witt [2007] FCA 1649; (2007) 74 IPR 382 (Scotch Whisky Association) at [52]). Deceptive similarity must be considered against the “background of the usages in the particular trade” (Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 410).

    (5)     “The probability of deception or confusion must be finite and non-trivial. There must be a ‘real tangible danger of its occurring’ - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15; (1954) 91 CLR 529 (sic) at 594-5 per Kitto J” (Woolworths at [43]). As such, the mere possibility of confusion is insufficient (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 (Southern Cross Refrigerating) at 595). Further, that “exceptionally stupid or careless consumers might be confused does not suffice” (Scotch Whisky Association at [61]).

    (6) “In order for s 43 to apply, the connotation must be clear and there must be a real and tangible danger that the trade mark, in the context of the relevant services, would be likely to deceive or cause confusion. It would be sufficient if there is ‘real and tangible danger’ of consumers having ‘reasonable doubt’ or being ‘caused to wonder’ about this issue: cf Southern Cross Refrigerating...at 595, per Kitto J” (Accor Australia at [269]).

    (7)     All surrounding circumstances must be considered including the circumstances in which the marks will be used, the circumstances in which the services will be provided, and the character of the probable users of the services (Southern Cross Refrigerating at 595).

    (8)     The test is not confined to a particular method of use of the marks; the question is “what can the applicant do if he obtains registration?” (Southern Cross Refrigerating at 595).

16. I note from the evidence in the Norris declaration that there are numerous trade marks in class 25 using the word cricket. I also note that the majority of those are owned by various cricket governing bodies, both within Australia and also overseas.

17. The Trade Mark itself has a primary meaning of the sport of cricket, reinforced by the use of a cricket bat and ball as the letter ‘I’ in the word.

18. The operative test is the secondary meaning which arises from the reasonable expectations of the consumer after considering the meaning in the context of the goods provided. It does not follow that all trade marks containing descriptive matter would attract a section 43 objection. Only if there is a real and tangible danger that the consumer’s expectations may turn out to be false and result in confusion, would section 43 be triggered.

19. The connotation of the sign CRICKET upon which the Opponent relies is, in the context of clothing, footwear and headgear, that of the sport of cricket. The implication is that the goods are worn or used for cricket, or are endorsed or licensed by the Opponent or some other cricket organisation. The goods are used in relation to the sport of cricket play a very important role in the sport, and are also merchandised and sold to members of the public in relation to organised cricket activities or tournaments.

20. Therefore, members of the public seeing such goods bearing the Trade Mark would be confused or deceived into wondering or believing that there is some connection to the sport of cricket, or sponsorship or endorsement by the Opponent or another cricket governing body.

21. A second form of confusion and deception is as to the qualities, intended purposes or other characteristics of the goods in respect of which the Opposed Mark is to be used. The use of the Opposed Mark in relation to non-cricket clothing or clothing not endorsed by the Opponent or a cricket stakeholder would also give rise to confusion or deception.

22. I am satisfied that the connotation that the Applicant is somehow endorsed by, or approved by a cricket governing body is likely to deceive or cause confusion. Therefore, I am satisfied that the ground of opposition under section 43 of the Act has been established.

    Decision

    Section 55: Decision

    (1) Unless subsection (3) applies to the proceedings, 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.

23. Subsection (3) is not applicable in this case. The ground of opposition under section 43 of the Act has been established. I accordingly refuse to register trade mark application 1713363.

    Costs

24. The Opponent sought its costs.  As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant in accordance with Schedule 8 of the Regulations.

    Jock McDonagh
    Hearing Officer
    Oppositions and Hearings
    30 April 2019