International Awards Group LLC v Asian Advertising Festival (Spikes) Asia Pte Limited

[2014] ATMO 35

TRADE MARKS ACT 1995

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

Re:Opposition by International Awards Group LLC to registration of trade mark application 1378781 (35, 41) - AME - in the name of Asian Advertising Festival (Spikes) Asia Pte Limited

Delegate:	Debrett Lyons
Representation:	Opponent:  Rohan Singh of DLA Pipers, Solicitors Applicant: Laura Thomas of Counsel, instructed by Catherine Chant of Thomson Geer,  Solicitors
Decision:	2014 ATMO 35 S.52 opposition – s.58 established; applicant not the owner of the trade mark. Costs: awarded against the applicant

Background

1. On 19 August 2010, Haymarket Media Group Limited (‘HMG’) filed an application to register a trade mark, AME (‘the trade mark’), under the Trade Marks Act 1995 (‘the Act’).  The application has a priority date of 23 February 2010 by reason of an international filing convention.

   2.In accordance with section 31 of the Act the application was examined and on 23 December 2010 it was advertised in the Australian Official Journal of Trade Marks as accepted for possible registration in class 35 and 41 for the services set out below (‘the services’):

   Class: 35 Promoting of shows, concerts, lectures, conferences, displays, exhibitions, awards ceremonies, events and seminars; none of the foregoing being in the field of product manufacturing

   Class: 41 Publication services; provision of publishing information on-line from a computer database or the Internet; arranging and conducting seminars, exhibitions and conferences; arranging and conducting seminars, exhibitions and conferences for entertainment purposes; hosting, providing, organising, planning, arranging, conducting and holding of shows, concerts, lectures, conferences, displays, exhibitions, awards ceremonies, events and seminars; provision of education, training, entertainment, sporting and cultural activities; none of the foregoing being in the field of product manufacturing

2. Asian Advertising Festival (Spikes) Asia Pte Limited (‘the applicant’), later took an assignment of the trade mark.

3. On 21 April 2011, International Awards group LLC (‘the opponent’) filed notice of opposition to the registration of the trade mark.  Subsequently, evidence was served and received and comprises:

   ·     evidence in support of the opposition, being a declaration of James M Smyth made 18 April 2012 with exhibits JMS01 to JMS16 (‘Smyth 1’);

   ·     evidence in answer to the opposition, being a declaration of David Robert Nicholas Newton made 14 January 2013 with exhibits DN-1 to DN-44 (‘Newton’); and

   ·     evidence in reply from the opponent, being a further declaration of James M Smyth made 22 July 2013 with exhibits JMS17 to JMS21 (‘Smyth 2’).

4. The parties were informed of their right to be heard and, taking that opportunity, a hearing was convened and took place in Sydney on 13 February 2014.  Acting as a delegate of the Registrar of Trade Marks, I heard submissions; the opponent represented the Rohan Singh, solicitor, of DLA Pipers and the applicant by Laura Thomas of Counsel, instructed by Catherine Chant, solicitor, of Thomson Geer, who was also in attendance.  In accordance with my directions, both sides had provided me with outline submissions prior to the hearing and those written submissions have also been taken into account in reaching my decision.

   Grounds of Opposition, Onus & Relevant Date

5. The notice of opposition lists a number of grounds of opposition available under the Act but Mr Singh made it clear that the opponent only pressed those grounds dependent on the following provisions:

   Section 42(b)        - trade mark use contrary to law;
   Section 58   - applicant not owner of trade mark;

   Section 60 - trade mark similar to another trade mark that has acquired a reputation in Australia; and

   Section 62A         - application made in bad faith.

6. The opponent bears the onus of establishing at least one of those grounds on the balance of probabilities[1] and the relevant date at which the ground(s) must be considered is the priority date.[2]

   [1] See Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 (11 April 2014), per Murphy J. at [35]-[36]:

   35.       There is a division of judicial opinion as to the relevant standard of proof. It has been suggested in some cases that rather than the ordinary civil standard of balance of probabilities applying, there is a special standard that requires an opponent to registration of a trade mark to show that the trade mark is “clearly” not to be registered. The division has not yet been resolved at the appellate level: Food Channel at [31] to [32]; Sports Warehouse at [26] to [39] and the authorities cited therein.

   36. It is unnecessary to descend into the differing views to explain my conclusion on this issue as that terrain is already well trodden. For the reasons stated in Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 237 ALR 787 (“Pfizer Products”) at [18] per Gyles J, Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60 (“Chocolaterie Guylian”) at [26] per Sundberg J, Sports Warehouse at [39] per Kenny J, and Allergan, Inc v Di Giacomo [2011] FCA 1540 at [11] to [12] per Stone J, I respectfully prefer the view that the Act does not impose a requirement on an opponent to a trade mark to show that it is “clearly” not to be registered. The onus is to be discharged to the ordinary civil standard.

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited [1947] 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

   Evidence

7. Synoptically, the evidence shows the following facts about which there was no disagreement.

8. The applicant is a Hong Kong registered company which promotes and hosts an annual marketing competition in one Asian city or another.  It acquired the rights to that competition and to the trade mark in 2010 from HMG.

9. From the inaugural 2003 event, until 2005, the competition was known as the ‘Asian Brand Marketing Effectiveness Awards’ or the ‘ABME Awards’.

10. In 2005 HMG changed the name to the ‘Asian Marketing Effectiveness Awards’ and that new name used for the 2006 awards and thereafter.  A logo-form edition of the new name was adopted during that transitional period.

11. In 2009, the applicant commenced use of a remodeled logo using the letters ‘AME’.

12. The opponent owns the rights in a global competition held annually in New York, which was originally called the ‘AME International Advertising Marketing Effectiveness’ awards and had its inaugural event in 1996.

13. The opponent has registered the Australian trade marks ‘AME’ and ‘AME AWARDS’, which have a priority date of 11 June 2010.  Registration 1366292 for the plain letter trade mark ‘AME’ is registered in class 41 for ‘[E]ntertainment in the nature of award competition and ceremonies promoting excellence in the fields of advertising and or marketing campaigns’.  It has a later priority date than the opposed application and was accepted based on prior continuous use.

    Submissions

14. The outline submissions from the parties indicate that the natural place to start is with section 58, which states:

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

15. In broad terms, in order to succeed under this ground the opponent must identify a trade mark that:

    ·     is identical or substantially identical to the applied-for trade mark (Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 120 ALR 495);

    ·     has been used in respect of goods or services being the ‘same kind of thing’ as those in relation to which the applied-for trade mark has been filed or used (Re:Hicks’s Trade Mark (1897) 3 ALR 75); and

    ·     has been used by a person other than the applicant and that other person has the earlier claim to ownership based on use before the priority date or first use date of the applied-for trade mark (Settef SpA v Riv-Oland Marble Co (Vic.) Pty Limited 10 IPR 402 at 413 and Re:Hicks’s Trade Mark, supra.).

16. Therefore, to establish its section 58 ground the opponent must show that it or some party other than the applicant first used the trade mark (or one ‘substantially identical’ thereto) in Australia in connection with the ‘same kind of thing’ as the applied-for services before 23 February 2010 or before the applicant’s first use of the trade mark for those services, whichever is the earlier.

17. The opponent’s core submission is that it has been using the trade mark AME in Australia and internationally in relation to relevant services continuously since 1996.  By contrast, the applicant has offered the relevant services since 2003, initially under different trade marks, only clearly moving to a trade mark including the letters AME in 2009. 

18. However, the applicant contends that the trade mark has been used in Australia since July 2006.  It also submits that the opponent’s evidence is problematic because it does not distinguish between the use of ‘AME’, ‘AME International,’ ‘AME Awards,’ and ‘AME Advertising Marketing Effectiveness’, nor does it make plain which of those terms  has been used in Australia.  

19. The applicant argues that the distinctive aspect its competition is its focus on Asia.  It is held annually in an Asian city. It contrasts the opponent’s global competition and the fact that its annual awards are held in New York.  The applicant argues that the test of whether services are of the same kind is narrower than the question of whether they are of the same description.  In particular, it submits that the case law shows that services are not of the same kind if there is a difference in the character or quality of the services.   Here, the applicant says, the difference in character or quality is the focus on the Asian region which is the defining characteristic of the services provided by the applicant.

20. The applicant also submits that addition of a significant word to a short, single-word mark produces a substantially different mark.   Thus while use in Australia of the word ‘AME’ alone is use of the same mark, use of trade marks such as ‘AME Awards’ or ‘AME International,’ is not.

    Reasoning

21. In light of those submissions it makes sense firstly to examine exactly what use has been made in Australia of what signs and so I have considered the “first use” aspect of section 58 before turning to the other issues of substantial identity and use in relation to the same sort of thing.

    (i)First use

22. The priority date of the application is 23 February 2010.  The applicant claims use both of the trade mark and of the term ‘AME Awards’ before the priority date.  In particular, the applicant submits that use in Australia of the acronym ‘AME’ in connection with its competition can be seen from an article at from July 2006, entitled ‘Aussies gather momentum at AME.’   It is further submitted that use of the expression ‘AME Awards’ in reference to the competition can be seen from announcement of the ‘AME Awards Presentation Dinner’ appearing in the August 2008 edition of Media magazine which also made reference to the applicant’s website  As already mentioned, in 2009 the applicant adopted a logo consisting of the letters AME with a device element.

23. Putting to one side the question of whether use of ‘AME Awards’ qualifies under the Act as use of the trade mark, the earliest claimed date of first use of that term is in 2006. Since it is the opponent’s claim that it has used the trade mark ‘AME’ in Australia in relation to its services since 1996 I should start with an assessment of that claim.

24. The opponent’s claim to use in Australia includes the promotion of its awards events to participants, judges, and the advertising industry in general in Australia.  It is said that use of the trade mark by the opponent in Australia is evident from the inclusion of Australian based judges on the opponent’s judging panel that year and the fact that one of the 1996 awards winners was an Australian entrant.

25. Exhibit JMS05 to Smyth 1 is a copy of what Mr Smyth refers to as the ‘AME Programme Books’.  Those books list the judges and winners from the Asia-Pacific region from the years 1996 – 2002.  It is at first a little hard to decode that exhibit but what emerges is a series of awards for different industry sectors such as “Telecommunications Services and Equipment”, “Autos and Consumer Vehicles”, “Media Promotion”, “Foods/Confections and Snacks”, and so forth.  The entrants/finalists/winners from Australia include advertising agencies with accounts for Ericsson Australia Pty Ltd, Holden/Isuzu General Motors, the Special Broadcasting Service (SBS), Cadbury Topping/Schweppes Cottees, Microsoft Australia, Queensland University of Technology, Eli Lilly Australia, and many more well recognized businesses.

26. I note that whilst in 1996 there is no clear evidence of use of either AME or even AME Awards, there is reference to the award to successful entrants of the AME GOLD MEDALLION or the AME SILVER MEDALLION or the AME BRONZE MEDALLION.

27. The format of the programme books largely repeats itself through the years but even as early as 1997 the front face of the awards book prominently uses an AME logo consisting of three concentric circles which show a slightly interrupted image of a world globe, superimposed upon which are the large dominant letters ‘AME’.  That same 1997 programme book is the first point at which there is evidence of Australian judges on the awards panel.

28. I need not go deeper into the later evidence since it is plain to me that the absence of physical proof from 1996-1997 of promotion and actual use in Australia of the letters ‘AME’ (either with or without a relatively non-distinctive device element or in the form “AME Awards”) should not detract from the manifestly reasonable inference that the letters ‘AME’ were known and used as a trade mark by the opponent in this country if only because of the high level interest in the awards taken by the Australian advertising and marketing industry.

29. Any doubt about that conclusion is dispelled by the totality of the opponent’s evidence which proves use of the letters ‘AME’ as a trade mark in this country both before the priority date of the application and before the earliest use by the applicant. Moreover, I note elsewhere in the evidence use by the opponent of the term ‘AME Awards’ in a trade mark sense before the first use of the trade mark by the applicant in 2006.

    (ii)Substantially identical trade marks

30. It is enough for me to find use by the opponent of the (identical) trade mark and I make that finding.  However, even if the opponent could only rely on its prior use of the trade mark ‘AME Awards’, I am in general agreement with its submission that ‘when comparing trade marks for the purposes of section 58, substantial identity will satisfy the ground, although additional material in a trade mark which is purely descriptive can be heavily discounted…. the word "awards" is descriptive given that the parties' services are the organising and staging of awards and awards events.’

31. The applicant resisted that submission and referred me to a decision in which Hearing Officer Skivington found that the trade marks BALI and BALI BLUE (both used for clothing) were not  substantially identical (Sara Lee Corporation v Bali Blue Pty Ltd, (2003) 59 IPR 619). I do not find that decision helpful since I agree with the Hearing Officer’s assessment that the mark BALI BLUE is distinctive only because of its alliterative nature and so the word BALI forms a major part of it, thus making the compared trade marks different for the purposes of section 58.

32. Instead, I consider the case of PB Foods Limited v Malanda Diary Foods Limited [1999] FCA 1602, which held that CHILL and CHOC CHILL were substantially identical, when both used was in relation to ice confections, to be more relevant and to support the opponent’s argument.

33. I would therefore also find that the trade mark and ‘AME Awards’ are substantially identical.

    (iii)The ‘same kind of thing’

34. To reiterate, the services are:

    Class: 35 Promoting of shows, concerts, lectures, conferences, displays, exhibitions, awards ceremonies, events and seminars; none of the foregoing being in the field of product manufacturing

    Class: 41 Publication services; provision of publishing information on-line from a computer database or the Internet; arranging and conducting seminars, exhibitions and conferences; arranging and conducting seminars, exhibitions and conferences for entertainment purposes; hosting, providing, organising, planning, arranging, conducting and holding of shows, concerts, lectures, conferences, displays, exhibitions, awards ceremonies, events and seminars; provision of education, training, entertainment, sporting and cultural activities; none of the foregoing being in the field of product manufacturing

35. The opponent’s services are the organization of award competitions and ceremonies promoting advertising and marketing excellence, which I consider to be the ‘same kind of thing’ (if not, the same) as the services.

36. Nevertheless I must address an argument put forward by the applicant, and one which I regard as the only substantial point of resistance to the section 58 ground of opposition, namely, that services are not of the same kind if there is a difference in the character or quality of the services, the asserted difference being the applicant’s focus on the Asian region.

37. In aid of that argument the applicant relied principally on the judgment of Gummow J in Carnival Cruise Lines Inc. v Sitmar Cruises Limited, (1994) 120 ALR 495.[3]  Once more that case does not assist the applicant. At [66]-[67], His Honour wrote:

    There remains the final objection on the proprietorship issue, namely that concerned with the lack of identity between the description of the services for which Sitmar seeks registration and those which have been provided by Carnival. It will be recalled that Sitmar excludes from the description ship cruises originating from North American ports.

    In Hicks supra the Full Court (22 VLR at 640) spoke of the earlier use of "the same word in application to the same kind of thing", in that case stoves. In the present case, the evidence does not suggest that there is any particular difference in the character or quality of the services provided by cruises which originate from North American ports and those originating from other ports, save for the geographical location from which the provision of the services commences. Had the case turned on this point I would not have held that the difference in the description of the services was such as to disqualify Carnival from any other success it would otherwise have had in its opposition based on its claim to proprietorship.

    [3] Reference was also made to Colorado Group v Strandbags (2007) 164 FCR 506 but it is unnecessary for me to set out the reasons why it was of no assistance to the applicant.

38. Put another way, I am to decide this matter not by reference to how the applicant may have used the trade mark but by a consideration of what the applicant may do within the scope of the registration if the trade mark is registered.  In the words of Mason J in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

39. I find that the opponent has established its section 58 ground of opposition.

    Decision

40. At the relevant date subsection 55(1) of the Act provided:

    55Decision

    (1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a)to refuse to register the trade mark; or

    (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:For limitations see section 6.

1. I refuse to register the trade mark.

   Costs

2. As it has been successful, the opponent is entitled to its costs to be assessed at the official scale and I award costs accordingly against the applicant.

   Debrett Lyons
   Hearing Officer
   Trade Marks Hearings
   30 May 2014