Imax Corporation v Vago Imports Pty Ltd

[2002] ATMO 80

TRADE MARKS ACT 1995

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

Re:Opposition by IMAX CORPORATION to registration of trade mark application 838124(25) - IMAX SPORTS - filed in the name of VAGO IMPORTS PTY LTD.

DATE OF DECISION:

28 September 2002

DELEGATE:

Senior Examiner Rachel Dunn

REPRESENTATION:

Opponent

Ms Frances Drummond of Freehills, Carter, Smith, Beadle, Attorneys

DECISION:

Opposition successful - s58, s60 - application refused.

Background

Vago Imports Pty Ltd (the applicant) filed trade mark application number 838124 for the trade mark IMAX SPORTS for Footwear, clothing, headgear in Class 25 on       8 June 2000.  The trade mark application was accepted for registration at the first report, and its acceptance was advertised in the Official Journal of Trade Marks on   25 January 2001.

Within the prescribed period in which to do so, Imax Corporation (the opponent) filed a notice of opposition. The notice of opposition stated grounds in terms of sections 41, 42(b), 43, 44(1), 44(3), 44(4), 58 and 60 of the Trade Marks Act 1995 (the Act).

The opponent served and filed its evidence in support on 24 January 2002.  The applicant did not serve any evidence in answer, nor did it serve a notice to the effect that it did not intend to rely upon evidence in answer to the opposition.

Neither party has requested to be heard in the matter. Accordingly, it has come to me to decide the opposition on the basis of the material on file, as a delegate of the Registrar of Trade Marks. Although the evidence does not specifically state which grounds of opposition are supported, I understand it addresses matters pursuant to s44, s58 and s60 only. I find that the evidence has not established the grounds of opposition pursuant to s41, s42, and s43, and I hereby find that the opposition has been unsuccessful on these grounds.

Evidence

The evidence in support consists of a statutory declaration in the name of G. Mary Ruby, the Senior Vice President, Legal Affairs, Deputy General Counsel and Corporate Secretary of the opponent.  There are eighty-two exhibits annexed to this statutory declaration.

Ms Ruby outlines the history of the opponent and the development of the cinema technologies used by the opponent in Australia and throughout the world since 1970.  She declares that the opponent is primarily in the business of providing giant-screen large format two-dimensional and three-dimensional cinema productions and equipment.  They also provide motion simulator entertainment and merchandise associated with these services.  The opponent has received several awards in relation to the IMAX cinema systems and the films produced for showing on these systems.

There are over 200 permanent giant-screen cinema theatres using the IMAX trade mark.  As of June 2000 there were seven such cinema theatres operating in Australia.  Since the giant-screen format of the opponent premiered in 1970 it is estimated that over 600 million people have viewed a film in the IMAX format.  Worldwide revenue figures show consistent growth, and the expenditure upon advertising and marketing doubled between the years of 1998 to 2000 alone.

The opponent sells a variety of merchandise displaying the term IMAX, including clothing and headgear.  This merchandise was available in Australian IMAX theatres between 1996 and 2000.  Currently however, this merchandise is only available for purchase over the Internet.

The opponent owns several registered trade marks in Australia, a number consisting of, or incorporating, the term IMAX.  Trade mark numbers 262994, 269244, 442224, 442225 and 650153 are specifically referred to in the exhibits provided, and are registered for the details below: 

Trade Mark	Good or services	Priority Date
262994 IMAX	Class 9: Developed motion films; motion picture projectors; cameras; optical printers and film editing machines; motion picture screens; and parts of and fittings for the aforementioned products	23/10/1972
269244 OMNIMAX	Class 9: Developed motion picture films, motion picture projectors, cameras, optical printers included in this class and film editing machines, and motion picture screens	13/06/1973
442224 IMAX	Class 41: Displaying motion picture films and the operation of motion picture theatres for exhibition of films	14/03/1986
442225 OMNIMAX	Displaying motion picture films and the operation of motion picture theatres for exhibition of films	14/03/1986
650153	Class 9: Protective headwear, protective facewear and protective eyewear, including helmets, shields, guards and visors for protecting the head, nose, eyes, temples and/or cheeks; parts in Class 9 for any of the foregoing goods including headbands, sweatbands, padding, cushioning and elastic fastening straps	10/01/1995

Ms Ruby concludes the statutory declaration by stating that the opponent is not aware of any use of the subject trade mark by the applicant in relation to the claimed goods or any other goods or services.

Discussion

I will deal with the ground in relation to s58 first. Section 58 provides:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

For this ground of opposition to succeed, the opponent must be able to show that it has used an identical or substantially identical trade mark, in relation to the same kind of goods or services, since a time preceding the applicant's first use of its trade mark.[1] In Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd., 109 CLR 407, at page 414, Windeyer J said:

[1] Carnival Cruise Lines Inc. v Sitmar Cruises Limited 31 IPR 375, (1994), Re Hicks' Trade Mark (1897) 22 VLR 636; and Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison....

The opponent does not have a prior registration for the plain word IMAX in Class 25.  However, the evidence shows that the opponent has used the plain word trade mark of IMAX since 1996, in respect of clothing and headgear, obviously the same kind of goods as the applicant's specification.  In Microcom Pty Ltd v Microcom Systems Inc (1998) 41 IPR 163 when comparing the trade marks MICROCOM and MICROCOM NETWORKING PROTOCOL Hearing Officer Forno said:

I do not think that the additional words NETWORKING PROTOCOL are sufficient to differentiate the applicant's and opponent's marks.  Those two words are utterly descriptive for some of the goods covered and add nothing to the mark.  This is, I think, analogous to the situation where, say, the trade mark RINSO was being compared with another mark RINSO WASHING POWDER.  Clearly, these marks are substantially the same.

The applicant's trade mark differs from the opponent's only by the addition of the utterly descriptive word SPORTS.

From a consideration of the words of Windeyer J. and Hearing Officer Forno above, I find that IMAX and IMAX SPORTS are substantially identical, and the opponent's IMAX trade mark has been used in respect of the same kind of thing as the goods covered by the applicant's trade mark.  This use precedes that of the applicant.  The opponent is therefore, the first user of the trade mark in Australia and is the rightful owner.

The opposition is successful on the ground under s58.

Section 44, as far as it is relevant to this opposition, provides:

Identical etc. trade marks

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:  For limitations see section 6.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:  An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:  For predecessor in title see section 6.
Note 3:  For priority date see section 12.

Under s44 the comparison is between the applicant's trade mark and the opponent's prior registrations, as detailed previously in the table form.

Section 10 of the Act defines deceptively similar as a trade mark that so nearly resembles that other trade mark that it is likely to deceive or cause confusion.  Case law tells us that the probability of deception and confusion must be finite and non-trivial.  There must be a real tangible danger of its occurring.[2] When considering the likelihood of deception and confusion the trade marks in question are not looked at side by side, rather it is a comparison of the impression that would be made by each trade mark and recalled by consumers that is important.[3] In this case the question to be asked is "whether or not the ordinary consumer knowing of the opponent's IMAX trade marks and encountering IMAX SPORTS on similar goods would be deceived or confused?"

[2] Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411 at 425

[3] Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407

In Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641, Dixon and McTiernan JJ set out useful guidelines for deciding deceptive similarity at page 658:

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

Although the trade marks OMNIMAX (subject of opponent's trade marks 269244 and 442225) and IMAX SPORTS have the term IMAX in common; they look and sound quite different.  OMNIMAX, in my belief stresses the OMNI prefix, meaning "all " or "everything" and having the letter 'i' sounding as an 'e'.  IMAX SPORTS has the stress on the 'i', and this gives the term the pronunciation of 'eye max'.  The ordinary customer encountering these trade marks would not carry away the mistaken impression that IMAX SPORTS was OMNIMAX, nor expect the same trade source behind both trade marks.  I conclude that IMAX SPORTS is not deceptively similar to OMNIMAX.

The opponent's i-MAX device trade mark (number 650153) is different from the plain word IMAX.  The device includes a picture of an eye in place of the dot on the letter 'i', emphasizing the pronunciation of 'eye max'.  Additionally, there is a segmented line leading from the letter 'i' and underscoring the whole term, and the trade mark as a whole is slightly italicized.  The overall impression is of an 'eye' related device mark, whilst the overall impression of IMAX SPORTS is of a sporting range of IMAX goods.  However both marks share, particularly in an aural sense, the very distinctive word IMAX.  Therefore, I turn to a consideration of whether or not the goods covered by the respective trade marks are similar, such that the ordinary person is likely to be deceived or confused by use of the respective trade marks in relation to those goods.

When considering the similarity of goods, their nature, their uses and the trade channels through which they are bought and sold need to be taken into account.[4]  The nature of both sets of goods is that of articles for wear or carrying on the person, thus the goods are alike in this respect.  The goods of registration 650153 are designed specifically to protect and preserve the wearer against more dangerous elements and situations, and are used only in particular circumstances.  They are certainly not normal articles of everyday wear for the average person, as are the goods covered by the subject application.  The respective uses are different.  The trade channels for the sale of the opponent's goods are stores that specialize in protective equipment and protective wear.  Although these stores may include some more generalized clothing, such as sportswear or active wear, the average consumer looking to purchase protective wear would not venture into the kind of department store or fashion outlet that retails general clothing, headgear and footwear.  The respective trade channels are different.  I conclude that the goods covered by registration 650153 are not similar to those covered by the subject application.  This conclusion is consistent with the decision in Paul O'Brien v Tag-Heuer SA (1988) ATMO 16. In that case Hearing Officer Forno concluded that the goods of bicycle safety and sporting helmets including motor vehicle helmets were not goods of the same description as sporting clothing including sports wear. As such, s44 does not apply to the applicant's IMAX SPORTS trade mark in the face of the opponent's i-MAX and device trade mark.

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Ltd ( 1954) 91 CLR 592 at 606

I have already found above that the applicant's trade mark IMAX SPORTS is not only deceptively similar, but substantially identical to the plain word trade mark IMAX.  Therefore the goods and services of the IMAX trade marks 262994 and 442224 need to be compared to the subject application.  The applicant has claimed the broad specification of footwear, clothing and headgear.  The opponent has two plain word IMAX trade marks both of which are for, generally speaking, cinema and motion picture equipment and services.  The nature, use and trade channels of these goods and services are all different to those of footwear, clothing and headgear.  I conclude that trade mark registrations 262994 IMAX for goods in Class 9 and 442224 IMAX for services in Class 41 do not cover similar goods or closely related services to those of the subject application.

Therefore, I find that there are no registered or pending trade marks cited by the opponent that have an earlier priority date, are deceptively similar, and cover similar goods or closely related services to the goods of the subject trade mark.  The opposition pursuant to s44 must therefore fail in its entirety.

Section 60 provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

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.

There is no requirement within section 60 that the trade mark on which an opponent relies be registered or the subject of an application for registration.

I have already decided that the opponent's IMAX trade mark is substantially identical to the applicant's trade mark IMAX SPORTS.  This being the case I now need to decide whether or not at the time of filing the subject application (8 June 2000) the opponent's IMAX trade marks had acquired a reputation in Australia.  Furthermore, is this reputation so great that use of the applicant's trade mark IMAX SPORTS on the goods specified in its application would be likely to deceive or cause confusion in the face of such reputation?

Kenny J has judicially considered the provisions of s60 in McCormick & Co Inc v McCormick (2000) AIPC 91-637. Her Honour, in considering what kind of evidence was needed to establish the existence of a reputation, said it was

...commonplace to infer reputation from a high volumne of sales, together with substantial advertising expenditures and other promotion, without any direct evidence of consumer appreciation of the mark, as opposed to the product...

She also noted in regard to the case before her,

The evidence does not establish what proportion of sales was made under or by reference to any particular mark...apart from the evidence as to sales and advertising expenditure, there is little or no evidence about the effect of advertising upon consumers.  There were no market surveys in evidence, nor was there any evidence about the marketing of McCormick & Co's products...I accept that those were important omissions and, in another case, might have proved fatal.

They were not fatal in that case due to her Honour's willingness to infer reputation from the length of use, despite the absence of consumer surveys.

The first IMAX theatre opened in Australia in 1980, with other theatres following in 1987, 1996, 1998, 1999 and 2000.  There are currently 6 IMAX theatres in Australia, at Dreamworld Coomera, Townsville, Perth, Darling Harbour Sydney, Melbourne and Brisbane.  By the year 2000 there were over 200 IMAX theatres in 27 countries with approximately 600 million people having viewed an IMAX film.  In the year 2000 alone more than 75 million people visited an IMAX theatre.  The worldwide revenue and advertising for the trade mark IMAX has shown steady growth and impressive figures since 1989.  Attendance figures for IMAX theatres in Australia are also impressive, especially considering the relatively few locations of the giant-screen theatres.

The evidence shows long and public preparation and development in choosing sites for the giant-screen theatres, construction of suitable buildings and promotion of opening nights.  Special tourist promotions have been held and goodwill has been generated in the community through the free distribution of theatre tickets.  In 1987 the opponent made the establishment donation for a scholarship in memory of Ron Jones, the Brisbane engineer who designed the IMAX system.  The evidence also demonstrates use of IMAX on a range of t-shirts, polo-type shirts, sweatshirts, varsity-type leather jackets, twill jackets, windbreakers, denim jackets, and baseball-style caps.  These goods were available for sale in Australia before the priority date of the subject application.

In assessing this evidence I have had regard to the following passages from Hugo Boss AG v Jackson International Trading Co Kurt D Bruel GmbH & Co KG (1999) 47 IPR 423 at 436:

[I]t is true that 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...its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark....

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...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.

I accept that the opponent had established, before 8 June 2000, a significant reputation in Australia and overseas for the trade mark IMAX in relation to the provision of giant-screen large format cinema theatres and the films produced in the necessary format to be played upon these screens. I am further satisfied that, by virtue of the manner in which the plain word IMAX was used in relation to clothing and headgear which was sold as an associated feature of the opponent's core business, this reputation also extends to that associated merchandise. I think it is highly possible that because of this reputation the ordinary consumer who knows of the IMAX trade mark could make the incorrect assumption that IMAX SPORTS goods are a range of the opponent's merchandise. Given this, I find that the opposition is successful under s60.

Decision

Section 55 of the Act provides:

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.

I have found the opposition to be successful in respect of the s58 and s60 grounds of opposition. All other grounds of opposition have failed. It follows then that the opposition as a whole has been successful and subject to any appeal from this decision, I refuse to register the subject trade mark IMAX SPORTS.

Rachel Dunn

Senior Examiner

Trade Marks Hearings

23 September 2002