Jim Beam Brands Co v Christine and Donald Crowden
[2019] ATMO 21
•9 February 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Jim Beam Brands Co to registration of trade mark application 1687024(39) - DIAL A DRIVER WE'LL GET YOU HOME WITH YOUR CAR GUARANTEED DaD & device - in the names of Christine and Donald Crowden.
Delegate: M. Cooper Representation: Opponent: Andrew Wiseman and Lena Balakrishnan of Allens Patent and Trade Mark Attorneys
Applicant: Self-representedDecision: 2019 ATMO 21
Opposition under s.52 of the Trade Marks Act 1995: ss.42(b), 44, 58A, 60, 62A grounds – s.42(b) grounds established - registration refused.Background
1. This matter concerns an opposition by Jim Beam Brands Company (“the Opponent”), under s.52 of the Trade Marks Act 1995 (“the Act”), to registration of the trade mark detailed below in the names of Christine and Donald Crowden (“the Applicants”):
Application Number: 1687024
Trade Mark:
(“the Trade Mark”)
Filing Date: 13 April 2015
Specification of Services:
Class 39:
Vehicle transport services including driving services; transport of vehicles on behalf of a vehicle owner; arrangement of passenger transport
(“the Services”)
Endorsement: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.
2. The Trade Mark was examined and advertised as accepted for possible registration on 15 September 2016 in the Australian Official Journal of Trade Marks.
3. On 15 November 2016, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 15 December 2016, a Statement of Grounds and Particulars (“SGP”) was filed which cited opposition grounds under sections 42(b), 44, 58A, 60 and 62A of the Act.
4. On 25 January 2017 the Applicants filed a Notice of Intention to Defend.
Evidence
5. Evidence in Support (“EIS”) of the opposition was filed by the Opponent on 8 November 2017. It comprised the declaration of Mark Roland Hill, dated 8 November 2017, Chief Financial Officer of Beam Suntory Australia Pty. Ltd., the operating Australian subsidiary of the Beam Suntory Group of companies of which the Opponent is also a part (“the Hill declaration”). It includes exhibits MH-1 to MH-7. Confidentiality was claimed over various paragraphs and exhibits.
6. The Applicants did not file Evidence in Answer. Consequently the Opponent did not file Evidence in Reply.
7. On 19 April 2018, the Opponent requested a hearing and the matter proceeded before me, a delegate of the Registrar, in Canberra on 20 November 2018.
8. Mr. Andrew Wiseman and Ms. Lena Balakrishnan appeared for the Opponent. There was no appearance by the Applicants. Following the hearing, an email from Mr. Crowden, one of the Applicants, was forwarded to me. On 21 November 2018 I responded by email, seeking to clarify the contents with Mr. Crowden however he did not reply. In the circumstances, and as advised in my email to Mr. Crowden, I have assumed his email was advice only of his non-attendance at the hearing.
The Opponent’s evidence
9. In his declaration, Mr. Hill outlined the Opponent’s business as the manufacturer, since 1795, of Jim Beam bourbon whisky, sold throughout the world, including Australia.
10. He noted the distinctive red and gold rosette that appeared on its whisky labels and associated products, with the words “Jim Beam” in an “eyebrow” shape above a rosette. He claimed the Opponent has used this logo in Australia since at least 1991 and in around 2013/14 it adopted a new, but essentially identical, logo. He listed a number of products on which the logo appears and supplied research and evidence which demonstrated that “Jim Beam bourbon whisky is the world’s No. 1 bourbon”, that several million units are sold in Australia each year and it is carried in several Australian liquor retail outlets and bars.
11. Mr. Hill also referred to and attached evidence of
· extensive merchandising of the brand,
· third party recognition of the brand,
· several books and articles recognising the brand (including the logo) as “iconic”,
· several advertising and promotional campaigns, on television, radio and magazines,
· significant expenditure associated with the above activities,
· the Opponent’s large following on social media, including 3.2 million followers of Jim Beam Australia on Facebook and
· very high brand penetration and awareness of the Jim Beam trade marks, with the associated logo, in Australia.
12. In particular, Mr. Hill referred to the Opponent’s involvement with the V8 Super Car Rally, its sponsorship of the Dick Johnson Racing Team from 2007-2012 and then of the event from 2013-14. He exhibited several photographs which demonstrated use of the Jim Beam logo on the racing cars over this period and the use of the logo on the “Jim Beam Party Crew” clothing and fleet. In addition he provided evidence of the Jim Beam logo as it appeared on the “Jim Beam Travel Safe Bus” which was used to transport people from the Bathurst track to the town centre. He attached a flyer which displayed the logo and which included the following comment: “Where do you draw the line? Know Your Limit – Drink Responsibly” and “Jim Beam is helping you travel safely at this year’s Supercheap Auto Bathurst 1000”.[1]
[1] Tab 6 of Exhibit MH-4 of the Hill declaration.
13. The Opponent’s several Australian registered trade marks were listed[2] and, although none are registered for class 39 services, many contained the below logo (“the Opponent’s marks”).
[2] Paragraph 58 of the Hill declaration.
14. In relation to the Applicants, Mr. Hill had reviewed their website and Facebook pages and attached exhibits indicating that the Applicants actively followed the V8 Supercar rally. He exhibited photographs from these sites, including one which, he claimed, showed Mr. Crowden with Jim Beam Party Crew members in front of one of his cars displaying the Trade Mark[3]. Mr. Hill also exhibited a photograph of the Opponent’s badged racing cars nose-to-nose with the Applicants’ vehicle displaying the Trade Mark. He claimed this appeared on 21 November 2013 on the Applicants’ Facebook page and had since been taken down. He contended that the Applicants had “tried to draw an unauthorised connection between its vehicles and the Opponent”. He further noted that the photographs of the Applicant with the Jim Beam Party Crew, who were independent contractors of the Opponent, were also unauthorised.
[3] Tab 2 of Exhibit MH-7 of the Hill declaration
15. Mr. Hill observed the many similarities between the Trade Mark and the Jim Beam logo, in particular the rosette and the font and appearance of the words. He expressed his belief that the Applicants had based the Trade Mark on the Jim Beam logo.
Submissions
16. A noted above, the Applicant did not file any submissions.
17. Mr. Wiseman provided the Opponent’s written submissions and also appeared at the hearing.
18. In relation to the s.60 ground of opposition, Mr. Wiseman submitted that anyone seeing the Trade Mark would immediately think of the Opponent and conclude that the goods or services being provided were associated with the Opponent. Although the Opponent’s core product is alcohol, he submitted that the evidence established the Opponent’s significant brand extension activities over a long period of time and its application of its logo to vehicles, including cars and the Jim Beam Travel Safe bus. Mr. Wiseman contended that the Applicant’s Facebook page and website clearly demonstrated the Applicants’ awareness of the Opponent’s branded vehicles and their internet-posted photographs showed their deliberate branding comparison. Combined with the “extensive reputation and esteem that the [O]pponent has acquired in the brand”, this meant that anyone encountering the Trade Mark would likely be confused or deceived into thinking there is a business connection between the Opponent and the Applicants.
19. With regard to s.62A, Mr. Wiseman referred to the Applicants’ website and Facebook pages as demonstrating, prior to the relevant date, that the Applicants knew of the Opponent and were seeking to mimic the vehicles driven by the Jim Beam racing car team and indicate a connection with the Opponent. In this context it was submitted that the Applicants’ conduct in making the Trade Mark application fell short of standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area.
20. In relation to its s.42(b) ground, the Opponent alleged contraventions of ss.18 and 29 of the Australian Consumer Law (“ACL”) as well as passing off and copyright infringement. It submitted that the Applicants’ use of the Trade Mark, in particular its website and Facebook page photographs showing the Opponent’s vehicle displaying its logo next to and nose-to-nose with the Applicants’ vehicle displaying the Trade Mark, constituted conduct that demonstrated “a clear undeniable intention to mimic” the Opponent’s branding, “specifically the JIM BEAM logo.” The Opponent contended this conduct, when combined with the esteem and extensive reputation that it has in its marks, meant that a person encountering the Trade Mark would be likely misled or deceived into thinking there was a business connection between them. The Applicant’s posted photograph of the Jim Beam Party Crew workers standing in front of one of the Applicants’ vehicles bearing the Trade Mark was said to demonstrate that instances of such deception had already resulted from the manner in which the Applicants had used the Trade Mark. That is, the presence of the Party Crew members strongly suggested that they mistakenly believed there was a connection between the Opponent and the Services.
21. In addition, it was claimed that, by adopting the same characteristics as the Opponent’s JIM BEAM logo, the Applicants conduct contravened s.29 of the ACL because any consumer would
·mistakenly believe that the transportation services provided under the Trade Mark had a particular history or previous use in the sense of being associated with the Opponent; or
·mistakenly believe that the transportation services provided under the Trade Mark have “the sponsorship, approval, performance characteristics accessories, uses or benefits” associated with the Opponent,. Such sponsorship conveying that the opponent “stands behind and, perhaps, wholly or partly finances some activity”. It was claimed to be particularly so given the Opponent’s prior use of the phrase “THE TEAM” logo as part of its transportation services in 2009; or
·mistakenly believe the transportation services provided under the Trade Mark had sponsorship, approval or affiliation with the Opponent due to the similarities between the JIM BEAM logo and the Trade Mark.
22. In relation to the passing off claim, the Opponent contended that it had established the required reputation for passing off and that, by adopting a logo which bears the essential features of the Opponent’s JIM BEAM logo, but for the different words, the Applicants have misrepresented to consumers that its Services are produced by, or in association with, or are endorsed by the Opponent. It was claimed that the effect of this misrepresentation would be damage or diminution of the Opponent’s goodwill in the essential features of the logo and consequently gave rise to a passing off action and was therefore contrary to law.
23. In relation to breach of s.36 of the Copyright Act 1968 (Cth), the Opponent claimed that the JIM BEAM logo is an artistic work which it owns and to which it has exclusive rights. Asserting similarities between the Opponent’s JIM BEAM logos and the Trade Mark, it was submitted that the Applicants had substantially reproduced them. It followed that use of the Trade Mark would infringe the Opponent’s copyright and therefore be contrary to law.
24. At the hearing, Mr. Wiseman submitted that the Opponent has acquired reputation and goodwill in its trade marks and there has been a misrepresentation by the Applicants, specifically their demonstration of “a clear undeniable intention to mimic” the Opponent’s brand, which gave rise to a misrepresentation that their services are associated with the Opponent. Consequently damage has taken place or is likely to take place as a result of the incorrect belief resulting from the Applicants misrepresentation.
25. With regard to the s.44 grounds, the Opponent claimed the Trade Mark is deceptively similar to 28 of the Opponent’s marks (as listed), containing the same imagery and creating a common idea between the marks. The distinctive elements of the Opponent’s marks, that is, the stylized words in the eyebrow positioned above a distinctive rosette, were the same in the Trade Mark. Noting that the words of the Trade Mark are descriptive and therefore should be discounted in the comparison, it was submitted that the virtual identity between the rosette and the font of the text in each mark underscored a real and tangible danger of contextual confusion and they should be regarded as deceptively similar. Although acknowledging that the Opponent’s marks apply to different goods and services, Mr. Wiseman submitted that they were closely related. Specifically, that the “transportation services” claimed by the Applicants are “in the nature of ensuring safe transport following the consumption of alcohol and the Opponent’s evidence indicated that consumers would expect such services to be provided by the alcohol manufacturer”. He further contended that the Services are commonly offered by an organisation behind an alcoholic beverage and they are a necessary adjunct to the goods claimed under the Opponent’s marks. Because use of the Trade Mark post-dates the first use of Opponent’s marks, it was further submitted that a valid claim could not be made under s.44(4): s.58A.
26. The Opponent sought costs.
Onus and standard of proof
27. In respect of proceedings under section 52, an opponent bears the onus of establishing one or more of the grounds of opposition in relation to the goods and services of an opposed trade mark. The standard of proof required is on the balance of probabilities.[4]
[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26].
28. As noted above, the Opposition grounds claimed in its SGP are those under sections 42(b), 44, 58A, 60 and 62A of the Act.
29. The time at which a ground of opposition must be established is the date of filing of the application for registration.[5] In this case that date is 13 April 2015 (“the relevant date”).
[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [595].
Consideration and reasons
30. The Opponent’s grounds of opposition are discussed below.
Section 42(b)
31. Section 42(b) of the Act provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) …; or
(b) its use would be contrary to law.
32. As was noted by Rangiah J in Primary Health Care Limited v Commonwealth of Australia, with whom Katzmann J and Greenwood J agreed on this point:
Section 42(b) of the [Act] requires that the use of atrade mark “would be” contrary to law. It is not enough for a party opposing registration to show that s 18 of the ACL or s 52 of the [Trade Practices Act 1975 (“the TPA”)] might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of thetrade mark.[6]
[6] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411].
33. That is, in Madgwick J’s words,[7] that use of the Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.
[7] Advantage Rent-A-Car Inc v Advantage Car Renal Pty Ltd (2001) 52 IPR 24, [28].
34. In its SGP, in relation to this ground, the Opponent stated:
The Opponent manufactures alcoholic beverage products, among other goods, which are sold throughout the world, including in Australia, in packaging bearing the distinctive red and gold Rosette Logo, with the JIM BEAM Swing Logo (and variations thereof) as pictured below:
(Collectively referred to here as the JIM BEAM Trade Marks)
The above Jim Beam Trade Marks (and variations thereof) have appeared on the Opponent’s alcoholic beverage products, and associated products and merchandise, since at least as early as 1962. The JIM BEAM Swing Logo has appeared on the Opponent’s products since at least as early as 1938. The Jim Beam Trade Marks have also appeared on the motor vehicles of the Opponent’s Jim Beam Racing team. The Jim Beam Trade Marks are now regarded as well-known marks.
Trade Mark No. 1687024 (the Trade Mark) is similar to the Opponent’s Jim Beam Trade Marks, bearing the essential features. Use of the Trade Mark on vehicles or in relation to transportation services, as designated under the Trade Mark, would likely result in consumers being misled or deceived into thinking that the Applicant’s services are affiliated with the Opponent, or have the Opponent’s sponsorship, authorisation or approval. Such use would constitute passing off and amount to misleading and deceptive conduct and the making of false representations in contravention of s.18 and 29 and Schedule 2 to the Competition and Consumer Act 2010 (Cth).
Given the fame of the JIM BEAM Trade Marks, and the clear similarities between the marks, use of the Trade Mark could also amount to an infringement of Jim Beam’s registered rights under s.120(3) of the Trade Marks Act 1995 (Cth).
The Trade Mark is also objectively similar to the Opponent’s original works in which copyright subsists. The Applicant’s conduct demonstrates a causal connection between the Opponent’s original Jim Beam Logo and the Trade Mark. The Applicant does not, therefore, own the copyright in the Trade Mark and the use and registration of the Trade Mark would likely give rise to an infringement of the Opponent’s copyright under the Copyright Act 1968.
Use of the Trade Mark is therefore contrary to law, and registration should be refused under section 42(b) of the Trade Marks Act 1995.
35. The Opponent’s submissions are otherwise summarised above. As previously noted the Applicants did not provide evidence or submissions.
The relevant provisions of ss 18 and 29 of the Australian Consumer Law (“the ACL”), in Schedule 2 to the Competition and Consumer Act 2010 (Cth) provide as follows:
Section 18: Misleading or deceptive conduct
A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
..
Section 29: False or misleading representations about goods or services
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
...
(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits.
(h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation.
Sections 18 and 29(1)(g) and (h) of the ACL require consideration as to whether the relevant consumers would be misled or deceived as to the true origin of the Applicants services and/or that they had some connection with the Opponent.
A person is said to engage in misleading conduct under s.18 (formerly s.52 of the Trade Practices Act 1974 (Cth) or “the TPA”) if he or she (or it) engages in conduct that might lead a reasonable person in the position of the recipient of the information to be led into error.
The relevant conduct for consideration in this context is the Applicants’ use of the Trade Mark in relation to its Services. The test is forward looking and is concerned with the likelihood of misleading or deception and what would occur if the Trade Mark is used in respect of the Services. In considering the notional use of the Trade Mark however the actual use to which it has been put is also relevant as it can be regarded “as illustrative of what would be normal and fair”.[8]
[8] Electrocoin v Coinworld [2004] EWHC 1498 at [21]; Hot Tuna IP Ltd v Select GmbH Unternehmen fur Zeitarbeit (2014) 107 IPR 585, [30]-[32].
The Opponent has relied on its reputation, and the adoption by the Applicants in the Trade Mark of a similar logo and get-up in respect of its Services, to contend that the use of the Trade Mark is likely to mislead consumers into the belief that the services sold or offered for sale are the Opponent’s services or are sponsored by or affiliated with it.
The propositions relevant to determining whether there has been a breach of (then) s.52 of the TPA, now s.18 of the ACL, have been discussed in many cases[9]. Perhaps most pertinently and succinctly are those of Hill J in Equity Access Pty Ltd v Westpac Banking Corporation excerpted below:
[9] Veda Advantage Ltd v Malouf Group Enterprises Pty Ltd [2016] FCA 255 [203 ..]; Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [412].
1. For conduct to be misleading or deceptive the conduct must convey in all the circumstances of the case a misrepresentation…
2. There will however be no contravention of s.52(1) of the Act unless error or misconception results from the conduct of the corporation and not from other
circumstances for which the corporation is not responsible …3. Conduct will be likely to mislead or deceive if there is a "real or not remote chance or possibility" of misleading or deception regardless of whether it is less or more than 50%...[it] is an objective question which the Court must determine for itself. Hence evidence that persons in the relevant class have been misled will, although admissible, not be determinative...
4. Conduct of a corporation causing mere confusion or uncertainty in the minds of the public in the sense that they may be caused to wonder whether two products may have come from the same source is not necessarily coextensive with misleading or deceptive conduct.. Since actual deception need not be shown the Court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived…
5. In a case such as the present the applicant must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant's business in a particular country or geographical area… in some circumstances very slight activities may be found to be sufficient to establish that a name has become distinctive of a person's business in a particular country…
6. Section 52 is not confined to conduct which is intended to mislead or deceive.. a corporation which acts honestly and reasonably may none the less engage in conduct that is likely to mislead or deceive...[10]
[10] Re: Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 at [41]
I initially note that s.18 and 29 of the ACL refer to the conduct of “a person” and not “a corporation”. Therefore the conduct of the Applicants, as individuals and joint owners of the Trade Mark, is embraced by the relevant ACL provisions.
Approaching the above propositions in reverse order, although the Applicants’ intentions in this regard are unknown, their prior use of the Trade Mark, in particular their internet postings as exhibited in the Hill declaration, strongly suggest that they have deliberately cultivated a perception by consumers that there is an affiliation or association between the Services and the Opponent which does not and did not exist. There is no indication that such postings were “cheeky”[11] or intended as parody[12], being, in my estimation, more “rip-off” than “take-off”. I give some weight to this factor in my consideration of whether there would likely be a breach of ss. 18 or 29 of the ACL.
[11] McIlhenny Co. v Blue Yonder Holdings Pty Ltd (1997) 39 IPR 187, [199, 201] Lehane J rejected the claim of a breach of s.52 of the TPA and passing off primarily on the basis that there was an absence of any representation of connection between the Opponent and the Applicant and their respective goods and services, unlike the circumstances of this opposition.
[12] Coca-Cola Company v All-Fect Distributors Ltd (1998) 43 IPR 47
In relation to the Opponent’s reputation, it has provided substantial evidence of its use of its Trade Marks, containing its logo, in its products and in significant brand extension activities in Australia. These activities include sponsorship of a variety of high profile events including television shows and car racing, as well as on merchandise from candles to cue racks. In addition, its significant social media presence and several million Australian followers, substantial brand exposure online and in several newspapers and other publications, and the research demonstrating a very high level of consumer recognition of the brand in Australia, shows that the Opponent’s marks, in particular its logo as it appears in them, have a “strong associative force” in the minds of the Australian public with the Opponent[13]. This association is such that I consider that the Opponent has demonstrated a significant reputation which extends beyond its alcohol products to its many other products and fields of activity. Therefore, on the basis of the duration and extent of their use in Australia, the volume of sales, extensive promotions and a high level of consumer recognition, I am satisfied that, at the relevant date, the Opponent’s marks, in particular its logo, had become distinctive of its business and had a well established reputation in Australia with a substantial number of Australian consumers including, but not confined to, those who consume its alcoholic beverages.
[13] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423 [426].
In the context of the ACL considerations, it is also necessary to identify the class of consumers likely to be affected by the Applicants’ use of the Trade Mark in relation to the Services. Given the broad nature of the Services as designated, I consider that class would be identifiable as those Australians seeking the provision of vehicle transport, that is, potentially, the Australian public in general. The evidence of “.05” next to the Trade Mark on the Applicants’ badged vehicles, indicates that this class may include (but again not be confined to) those people who have been consuming, or intend to consume, alcohol.
Consideration of this class is further required to be by reference to its “ordinary and reasonable” members[14] and it is necessary to establish that a reasonably significant number of them would be likely to be misled or deceived by the conduct. In addition, as noted above, and as the Court noted in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (‘Puxu’) “conduct which merely causes some uncertainty in the minds of relevant members of the public”[15], does not breach s.18 ( then s.52). Furthermore there must be a "real or not remote chance or possibility" of such misleading or deception.
[14] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (“Puxu”) [1981] HCA 44; (1982) 149 CLR 191, [210] [199,209]; Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12; (2002) 202 CLR 45, [105].
[15] Puxu[210] (Mason J).
The abovementioned internet postings by the Applicants, in my mind, actively cultivate and/or promote a consumer perception of a connection between the Opponent and the Trade Mark. For example, see below the Opponent’s vehicles bearing its marks and the Applicant’s vehicle bearing the Trade Mark. I find this use of the Trade Mark weighs heavily in favour of an inference that there is a real likelihood a significant number of consumers would be misled or deceived.
48. In particular, the photograph of the Jim Beam Party Crew members (below) posing with an Applicant in front of one of his vehicles bearing the Trade Mark, indicates that persons have already been misled into assuming a connection.
On the face of it, it seems reasonable to infer from the photograph that the Crew members were deceived or misled into participating in their Jim Beam attire or, alternatively, mistakenly assumed from the get-up of the Trade Mark appearing on the Applicant’s vehicle, that it was associated with the Opponent and they were authorised to pose in front of it. Whatever the reason for their participation in the photograph, evidence of it lends considerable weight to a conclusion that there is a "real or not remote chance or possibility" of misleading or deception arising from use of the Trade Mark and it is something more than causing “mere confusion or uncertainty”.
50. Another factor that weighs in favour of a finding that there is a real likelihood of a significant number of consumers being misled or deceived by use of the Trade Mark, is the similarity between the Trade Mark and the Opponent’s well-known logo. It is well-established that the get-up of a product can give rise to a misrepresentation that the goods or services of the trader are, or are in some way related to, the goods or services of another trader, or that there is some affiliation between the two.[16]
[16] S&I Publishing Pty Ltd v Australian Surf Lifesaver Pty Ltd (1998) FCR 354, [362-3]; Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 159 FCR 397, [97].
51. In the circumstances of this opposition, even acknowledging the Trade Mark’s different aural impression, it is the device and the organisation of the text within and outside of it which strikes the eye.[17] In this context I note the distinctive features of the Opponent’s logo which appears in its marks as follows:
[17] See Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 where the impact of a brand’s “gestalt” is discussed.
· words in an eyebrow shape above above a gold and red rosette,
· lettering within the inner circle of 4 concentric circles,
· the white text in the third circle from the centre, dots separating the levels of text,
· none of the words appear upside down, and
· a ribbon behind the rosette with its ends visible at top and bottom of the rosette.
As the Opponent observed, the device in the Trade Mark appears in identical font and in an identical eyebrow shape, over a rosette, with lettering appearing in the centre, words in white in the 4 concentric circles, not upside down, with white dots separating the levels of text. While acknowledging the different letters and words in the text of the Trade Mark, on the basis of an overall thematic similarity or “gestalt”, it bears a striking resemblance to the Opponent’s logo as it appears in many of its marks. In addition, although the Applicant did not seek to register the Trade Mark in particular colours, the evidence as discussed above demonstrates the Applicants have used it in the same colour combination as that adopted by the Opponent in its logo. It is also the colour combination depicted in the Trade Mark application and, in any event, its registration would enable it to be used in the form (see s.70 of the Act). It is therefore appropriate to have regard to the prospect of confusion where the Opposed Mark is presented in that way[18]. Given the striking visual similarities between the Trade Mark and the logo as used in the Opponent’s marks, I consider such presentation gives rise to a real likelihood that persons concerned in purchasing the Services will be misled into assuming an association or affiliation with, or endorsement or sponsorship of, the Services by the Opponent.
[18] Facton Ltd v MishMash Clothing Pty Ltd (2012) 94 IPR 523 [18]
Such an error or misconception would be the direct result of the Applicants’ conduct in its use of the Trade Mark and not the result of other circumstances for which they are not responsible.
As noted above, for conduct to be misleading or deceptive the conduct must convey in all the circumstances of the case a misrepresentation. In the circumstances of this opposition, the Opponent claims the use of the Trade Mark misrepresents that there is a business relationship or affiliation between the Services and the Opponent or that the Opponent has endorsed the Services. For the above reasons I am satisfied that use of the Trade Mark by the Applicants would convey such a misrepresentation.
Overall, given the strength of the Opponent’s reputation in its logo which, the evidence establishes, is clearly familiar to many Australians, the activities of the Applicants in actively promoting a connection between the Services and the Opponent, and the striking visual similarities between the Trade Mark and the Opponent’s logo, I consider that there would be a real likelihood that a person accessing the Applicant’s Services would be misled into believing that they were associated with, sponsored or endorsed by, or being delivered by or under the auspices of, the Opponent. I consider that this representation arising from use of the Trade Mark would cause more than mere confusion or uncertainty and is appropriately characterised as a misrepresentation such as is contemplated by s.18 of the ACL.
It follows that I am therefore satisfied that the Applicant’s use of the Trade Mark would be likely to mislead or deceive contrary to s.18 of the ACL and therefore the Opponent has established its opposition under s.42(b) of the Act.
Decision
57. Given that the Opponent has established one ground of opposition in relation to the Trade Mark, there is no requirement for me to consider the remaining grounds particularised in the SGP. In the event of an appeal to this decision, it will be open to the Opponent to additionally pursue those grounds and any others available under the Act.
58. Section 55 of the Act relevantly provides:
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.
59. Subsection (3) does not apply to these proceedings
60. For the above reasons, I refuse to register trade mark application 1687024.
Costs
The Opponent has sought its costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.
Mary-Ann Cooper
Hearing Officer
Oppositions and Hearings
8 February 2019
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