International PADI, Inc v Go Dive Australia Pty Ltd

[2005] ATMO 45

TRADE MARKS ACT 1995

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

Re:Opposition by International PADI, Inc to registration of trade mark application 970214(41) - GO DIVE & device - filed in the name of Go Dive Australia Pty Ltd.

Delegate:	Mary Skivington
Representation:	Opponent: Helen Kearney of Pipers Mills Oakley, Patent and Trade Mark Attorneys. Applicant: Unrepresented and did not appear and did not file written submissions.
Decision:	Ground of opposition under section 43 established – registration refused. Costs awarded against the unsuccessful applicant.

Background

1. Go Dive Australia Pty Ltd, (‘the applicant’), filed trade mark application number 970214 to register the trade mark shown below on 15 September 2003.

2. Acceptance of the trade mark for possible registration was advertised in the Australian Official Journal of Trade Marks on 12 February 2004 for the following services in class 41:

Snorkelling and scuba diving activities and services.

1. International PADI, Inc, (‘the opponent’), applied for and was allowed a three months extension of time within which to file notice of opposition to registration of the trade mark and at the end of that time, on 12 August 2004, the notice of opposition was filed. The notice cited grounds of opposition under the provisions of sections 41, 42, 43, 44, 58, 60 and 62 of the Trade Marks Act 1995, (‘the Act’). In due course the opponent filed and served evidence in support of the opposition. The applicant did not serve evidence in answer and in fact has not played an active role in these proceedings.

2. As a delegate of the Registrar of Trade Marks I heard the matter in Canberra on 30 June 2005. The opponent was represented by Helen Kearney of Pipers Mills Oakley, Patent and Trade Mark Attorneys. The applicant was unrepresented and did not appear or file written submissions.

   The evidence

3. The evidence in support comprises a statutory declaration with exhibits CN-1 to CN-18 made by Claus Nimb, Vice President of Sales, Marketing and Distribution of PADI Asia Pacific, an authorized user of the trade marks of PADI International, Inc, on 16 November 2004.

4. Mr Nimb declares that the opponent is the world’s largest recreational diving membership organization. He declares that the opponent develops, produces and distributes to its membership educational materials, training aids and promotional materials for use in the conduct of the opponent’s diving courses and other aquatic activities. He reports that the training manual for the opponent’s Open Water Diving program is entitled GO DIVE. The manual was developed and first used in 1998 and has been used continuously in Australia since 1999. Exhibit CN-1 is an undated advertisement sent to the membership advertising five products, all carrying the PADI trade mark, one of which is a training manual entitled GO DIVE. This is clearly the title of the manual and does not constitute trade mark use of the words GO DIVE. Exhibits CN-2 to CN-7 likewise fail to show trade mark use of GO DIVE. However, Exhibit CN-8 is an advertisement dated 25 March 2003, for software for planning and logging dives to be used with a handheld computer and which carries the GO DIVE trade mark. Exhibit CN-9 comprises invoices for advertising the software, three of which pre-date the priority date of the application. Exhibit CN-10 shows an advertisement for the software which Mr Nimb declares was published in The Undersea journal in the fourth quarter of 2003. The remaining exhibits post date the application’s priority date and are therefore of no assistance to the opponent.

5. Exhibits CN-15 to CN-18 are declarations from four employees of Padi Asia Pacific, namely Richard Evans, Paul Morrall, Daniel Dwyer and David James Oliver.

6. Mr Evans who is employed as the Coordinator of Quality and Risk Management declares that PADI develops, produces and distributes to the membership a full range of educational materials, training aids and promotional materials. He declares that one such training manual is entitled GO DIVE. He declares that GO DIVE is widely known as a description of the PADI Open Water Diver Manual.

7. Mr Morrall declares he is the Director of Sales and Field Services with PADI Asia Pacific which represents 43 countries in the Asia Pacific Rim. He declares that since 1999 the ‘PADI Go Dive Manual has been marketed to the PADI membership as the training manual for the PADI Open Water Diver courses’. He reports that the GO DIVE ‘dive log and associated software’ has subsequently been marketed to the members in Australia and Asia. Mr Morrall declares that the ‘GO DIVE name is widely known in all of Asia as a description of the PADI Open Water Diver Manual and associated PADI materials.’

8. Mr Dwyer declares that he is a Regional Manager with responsibility for Queensland where there are over one hundred PADI Dive Centres and more than two thousand individual professional PADI members. He reports that in 1999 he presented more than twenty member forums where the GO DIVE manual was introduced as the new manual to be used during the PADI Open Water Diver courses. He reports that the GO DIVE ‘dive log and associated software’ has subsequently been marketed to the members in his area.

9. Mr Oliver declares that he is a Regional Manager with responsibility for Victoria, Tasmania, South Australia and Western Australia. He declares that his area has more than eighty-five PADI Dive Centres and more than sixteen hundred individual professional PADI members. Mr Oliver declares that in 1999 he conducted twelve forums where he introduced the new GO DIVE manual to be used during the PADI Open Water Diver courses and that he has conducted forums every year since then at which he has marketed the GO DIVE manual. He reports that the GO DIVE name is widely known in his area as a description of the PADI Open Water Diver manual and associated PADI materials.

   Grounds of opposition

10. At the hearing Ms Kearney canvassed grounds of opposition under the provisions of sections 42, 43, 58 and 60 of the Act. The remaining grounds were not pressed so for the sake of completeness I now find that they have not been established.

11. At the outset I note that the opponent first used the trade mark GO DIVE in March 2003 when it was used in respect of software for planning and logging dives. The words GO DIVE were first used by the opponent in 1998 as the title of a training manual. Advertisements such as that seen in Exhibit CN-4 indicate that it was not being used as a trade mark. Here the advertisement says in part over a picture of books entitled Go Dive, Rescue Diver, Dive Master and Diving Adventure, Own your own copy of these PADI exclusives and study at home. Save time. Learn a lot

    Submissions and the law

    Section 58

12. Section 58 of the Act provides that registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

13. Gummow J, in Carnival Cruise Lines Inc. v Sitmar Cruises Limited 31 IPR 375, confirms that the opponent must show that it has used a trade mark that is at least substantially identical to the opposed trade mark, before the application date. He said in respect of substantial identicality,

    It requires a total impression of similarity to emerge from a comparison between the two marks.  In a real sense a claim to proprietorship of the one extends to the other.

14. Ms Kearney submitted that the applicant’s trade mark is substantially identical with the opponent’s trade mark and in support of her claim referred to the tests set down by Windeyer J in Shell Co of Australia v Esso Standard Oil, (1963) 109 CLR 407,

    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

15. She submitted that in a side by side comparison it was obvious that the essential feature of both marks is the words GO DIVE. She argued that the variation in the scripts is an immaterial difference as are the device elements in the subject trade mark.

16. I do not think the device elements can be dismissed so easily. The map of Australia is stylized and this combined with the stream of bubbles rising up through the state of Western Australia creates an arguably separately registrable element of the trade mark. The device elements move the mark as a whole some distance away from being found to be substantially identical with the plain word mark. As the trade marks are not substantially identical the section 58 ground of opposition fails.

    Section 60

17. In order to satisfy a ground of opposition under the provisions of section 60 of the Act, the opponent must establish that the applied for trade mark is substantially identical with or deceptively similar to another trade mark or trade marks that have acquired a reputation in Australia before the priority date of the applied for trade mark and, because of that reputation, use by the applicant of its trade mark, would be likely to deceive or cause confusion. Section 60 does not require the relevant goods or services to be the same or closely related nor does it require the trade mark/s on which the opponent relies to be registered or the subject of application/s for registration.

18. Ms Kearney submitted that the opponent had acquired the necessary reputation in its common law trade mark by the relevant date so that use by the applicant of its trade mark would be likely to deceive or cause confusion.

19. She argued that the trade marks are deceptively similar and referred to authorities such as Shell Co of Australia v Esso Standard Oil, (1961) 109 CLR 407, Berlei Hestia Industries Ltd v The Bali Company Inc, 129 CLR 353 at 362 and Pianotist Co.'s Appn, (1906) 23 RPC 774. Ms Kearney noted that Parker J said in the latter case,

    You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

20. Ms Kearney submitted that GO DIVE is the essential feature of the applicant’s trade mark and it is by this feature that the trade mark will be remembered and recalled. She observed that although the applicant’s trade mark also contains device elements it is by the words GO DIVE that the applicant’s services will be requested. Ms Kearney further submitted that the services are intended for the same small and specialised market in which the opponent operates.

21. I agree with Ms Kearney that the trade marks are deceptively similar. The source of the likely deception or confusion is obvious - the use of the words GO DIVE with or without device elements is likely to suggest to prospective purchasers that the scuba diving activities and services share a common origin. The threshold requirement for a section 60 ground has been met.

22. The reputation in Australia of the opponent’s trade mark at the relevant date cannot be assumed - it must still be established as a question of fact - per Lockhart J in Conagra Inc v McCain Foods (Aust) Pty Ltd, (1992) 23 FCR 302. The opponent first used the trade mark GO DIVE in respect of software in March 2003, about six months prior to the filing of the subject application. Its introduction to the market appears to have been low key in nature and there is no evidence as to the value of sales and no evidence as to the total amount spent on advertising and promotion. There are no independent trade declarations attesting to the opponent's reputation. In fact, there is nothing before me to show that the trade mark had amassed a reputation sufficient to lead consumers into deception or confusion if another trader were to use a substantially identical or deceptively similar trade mark. On the basis of the evidence before me, I am not satisfied that the requisite reputation existed at the relevant date. Accordingly this ground of opposition has not been established.

    Section 43

23. Section 43 provides that registration may be refused if, because of some connotation that the trade mark has, the use of the trade mark is likely to deceive or cause confusion. Connotation refers to that which is implied in a trade mark in addition to its essential or primary meaning, per Down to Earth (Victoria) Co-operative Society Ltdv Schmidt, (1998) 41 IPR 632. Deception or confusion could arise regarding the origin, nature or quality of the goods or services, or through an implied endorsement or licence of services by a person or organization.

24. Ms Kearney submitted that there is an inherent connotation of aquatic activities in the trade mark and given that the diving trade is a small trade group and that the opponent is the ‘world’s largest recreational diving membership organization’ the mark is likely to deceive or cause confusion in the relevant market because it will imply an immediate connection with the opponent.  She argued that the opponent is so well known in the field of diver training that the words GO DIVE will immediately suggest a connection with the opponent.

25. The words GO DIVE form an unusual, ungrammatical combination that fixes itself in the mind and is easily recalled. While it certainly brings to mind aquatic activities it is not so obvious a combination that other traders are likely to think of it and desire to use it in respect of their scuba diving and snorkelling activities. The opponent operates in a niche market and is clearly a big player in that market. It provides diver training at numerous PADI centres around Australia where the GO DIVE training manual is used and promoted.  It first used the words GO DIVE as the name of its diver training manual in 1998 and has used it continuously since 1999 in Australia and internationally, that is for some four and a half years before the priority date of the subject application. The GO DIVE manual has been widely promoted within the relevant market as essential reading for those taking up the recreational sport of diving. I am satisfied that the expression GO DIVE is well known within the recreational diving community as being associated with the opponent’s diver training activities. The applicant proposes to deal in the same services as the opponent in the same niche market. Given this I consider it likely that if the applicant were to use the mark in respect of the services claimed a significant number of prospective purchasers of the services would be likely to be confused in the sense that they would wonder if the applicant’s services were endorsed by or in some way connected with the opponent. This ground of opposition is established.

    Section 42(b)

26. So far as it is relevant to this application section 42 of the Act provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law.

27. Since the decision of Madgwick J in Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, the Registrar has been obliged, when assessing whether use would be contrary to law under section 42(b), to take into account the operation of laws and legislation other than the Trade Marks Act 1995. The test to be satisfied is that use would, rather than could, be contrary to law and the relevant standard to be applied is that there must be a ‘real or not remote chance or possibility’ of a reasonably significant number of people being misled or deceived per Equity Access Pty Limited v Westpac Banking Corporation (1989) 16 IPR 431.

28. Ms Kearney submitted that use of the trade mark GO DIVE would contravene sections 52 of the Trade Practices Act 1974, (‘TPA’). Section 52 of the TPA provides as follows:

    Misleading or deceptive conduct

    (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

29. Ms Kearney noted that D R Shanahan says in Australian Law of Trade Marks and Passing Off, 3^rd Edition 1990, at page 456,

    ‘Misleading conduct does not merely cause confusion; it actually directs a person towards the wrong choice’.

30. The TPA has a higher standard than does the Trade Marks Act 1995 so that confusion in the sense of wonderment, is not within the meaning of the words 'misleading or deceptive' per Parkdale Custom Built Furniture Pty Ltd v Puxa Pty Ltd, (1982) 149 CLR 191. I am not satisfied on the basis of the evidence before me that use of the applicant’s trade mark would contravene sections 52 of the TPA. This ground of opposition has not been established.

    Decision

31. The opponent has successfully established one of the grounds of opposition on which it relied. Therefore pursuant to section 55 of the Act I refuse to register trade mark application number 970214.

    Costs

32. As the opponent has been successful in these proceedings, I award costs against the applicant and direct that Go Dive Australia Pty Ltd pay the costs of International PADI, Inc, in accordance with the Official Scale set down in Schedule 8 of the Trade Marks Regulations 1995.

    Mary Skivington
    Hearing Officer
    Trade Marks Hearings
     29  August 2005