John McIntyre v Cooley Invesments Pty Ltd

[2012] ATMO 116

TRADE MARKS ACT 1995

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

Re:Opposition by John McIntyre to registration of trade mark applications 1344648(39) and 1344650(39) - AQUADUCK AND DEVICES - filed in the name of Cooley Investments Pty Ltd.

Delegate:	Nicole Worth
Representation:	Opponent: Troy Houghton of Counsel, instructed by Gold IP Lawyers. Applicant: Susan Anderson of Counsel, instructed by TVP Lawyers.
Decision:	2012 ATMO 116 Section 52 oppositions – ss58, 60, 42, 43, 58A pressed – no grounds established – trade marks to proceed to registration– costs awarded against opponent

Background

1. This is an opposition by John McIntyre (‘the Opponent’) pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade marks detailed below, in the name of Cooley Investments Pty Ltd (‘the Applicant’):

Application number 1344648	Application number 1344650
Priority Date: 10 February 2010	Priority Date: 10 February 2010
Services: Arranging, conducting, providing, organising amphibious vehicle sightseeing tours (tourism and transport) and other transportation services of person both on land and on water.	Services: Arranging, conducting, providing, organising amphibious vehicle sightseeing tours (tourism and transport) and other transportation services of person both on land and on water.
Endorsement: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

1. Acceptance of the above trade marks was advertised in the Australian Official Journal of Trade Marks on 10 June 2010, after which the Opponent filed Notices of Opposition (‘the Notices’) to their registration on 10 September 2010. The Notices nominated grounds of opposition under sections 41, 42, 43, 44, 58, 58A, 60, and 62A of the Act.

2. After the filing and service of evidence, discussed further below, I heard the matter as a delegate of the Registrar of Trade Marks in Brisbane on 4 September 2012. Troy Houghton of Counsel, instructed by Gold IP Lawyers, represented the Opponent. Susan Anderson of Counsel, instructed by TVP Lawyers, represented the Applicant.

   Evidence

3. The evidence filed and served in respect of these matters is as follows:

   Evidence in Support[1]

   ·     Statutory declaration of John McIntyre, Director of Noosa Amphibious Safaris Pty Ltd[2], dated 9 March 2011 with Exhibits A to P and Sealed Exhibits A to D. (‘McIntyre 1’).

   ·     Statutory declaration of Nicole Domican, employee of Noosa Amphibious Safaris Pty Ltd, dated 9 March 2011.

   Evidence in Answer

   ·     Statutory declaration of Victor Leslie Cooley, Director of Cooley Investments Pty Ltd, dated 15 August 2011 with Exhibits VLC 1 to 6[3].

   Evidence in Reply

   ·     Statutory declaration of John McIntyre dated 16 November 2011 with Exhibits A to F and Sealed Exhibits A to C.

   [1] The contents of the evidence in support for each opposition are largely the same, although I note that one copy of the Nicole Domican declaration is undated.

   [2] Noosa Amphibious Safaris Pty Ltd changed its name to Quack’RDuck Pty Ltd in March 2011.

   [3] I note that the Exhibits are not referred to in Mr. Cooley’s declaration, but are appended under the heading “Exhibits to Statutory Declaration”.

   Further Evidence of Opponent

   ·     Statutory declaration of John McIntyre dated 20 August 2012 with Exhibits A to C.

   ·     Statutory declaration of Gary Abraham, founding proprietor of Gazart graphic design, dated 22 August 2012 with Exhibits A and B.

4. Before discussing the contents of the evidence I shall deal with two preliminary matters first, being the application for permission to serve further evidence and the Opponent’s sealed exhibits.

5. The Opponent filed and served an application for permission to serve further evidence on 22 August 2012. The further evidence shows that certain statements made by the Applicant regarding the date its trade marks were originally commissioned are incorrect. The Opponent declares that this information was only recently brought to his attention, and that the declaration of Gary Abraham (the designer of said trade marks) gives credence to the claim that the Applicant’s trade marks were commissioned later than declared. I am satisfied that it is appropriate to allow the evidence to be brought into proceedings, and at the hearing the Applicant confirmed it had no objections to the application. That being the case, I grant permission and will consider the further evidence in making my decision.

6. The declarations of John McIntyre, led in evidence in support and evidence in reply, contain the statement “I say that the information contained in [the sealed exhibits] of this declaration are confidential in relation to the business activities of [the Opponent’s company] and that any disclosure of the information contained in these Exhibits would seriously and adversely affect the business activities of [the Opponent’s company]”. Further statements within the actual sealed exhibits suggest that I would be unable to even acknowledge the existence of their contents. As this decision will be published I am potentially left in a difficult position, because a substantial part of this opposition is argued on the basis of the sealed exhibits. Were I to apply the claim for confidentiality strictly I would be unable to give any reasons in respect of them and must hence find that the Opponent cannot establish its opposition.

7. It is therefore not in the Opponent’s interest that I apply its claim for confidentiality too narrowly. I consider that since the Opponent has rested much of its case upon the contents of the sealed exhibits, it must expect that at least to some extent such evidence will be weighed and discussed. Accordingly, I will refer to the sealed exhibits as necessary, noting that in order to preserve their confidentiality I need not discuss in detail any material which might be of a sensitive commercial nature.

8. Here follows a summary of what I identify to be the relevant facts and events.

9. In 1996 Aquabus Safaris Pty Ltd (‘Aqua’) commenced a business taking people on tours in and around the Gold Coast, Queensland. The tours were advertised under the name ‘Aquabus Safaris’ and conducted upon an amphibious vehicle. Such vehicles are known colloquially as ‘ducks’, deriving from the original military designation ‘DUKW’[4]. The vehicle used by Aqua appears to have displayed the name ‘Surfers Safaris’ and was decorated with blue and white camouflage-patterned decals. The word ‘Surfers’ was replaced with ‘Aquabus’ apparently at some point early in the company’s existence. The Opponent’s immediate family members were the directors of Aqua and the Opponent was employed as a “captain” of the amphibious vehicle.

   [4] See for example the Oxford English Dictionary Online (2012 Oxford University Press).

10. In 1998 Aqua registered the trade mark AQUADUCK in plain typescript in respect of the services “transportation services being the transportation of persons on land and on the water” (Trade Mark Registration Number 754940). It is not clear whether the trade mark was used at this point in time - there is no evidence that indicates such.

11. In 2000 another tour operator, Adventure Duck Pty Ltd (‘Adventure’), commenced business. Adventure also provided tours in the Gold Coast, and it utilized an amphibious vehicle decorated with decals depicting a duck’s bill and eyes and the words ‘Adventure Duck’.

12. It is not clear who owned and operated the business of Adventure. The Opponent declares ‘Adventure Duck’ was the trading name of an entity named Mainbay Pty Ltd (‘Mainbay’) but there is no documentary evidence of this. In any event both the Opponent and the Applicant appear to accept that Mainbay either owned or operated as Adventure, and it is apparent that Aqua and Adventure were separate entities offering the same services in the Gold Coast.

13. Also in 2000 the trade mark below, number 829799, was registered in the name of Mainbay in respect of “amphibious vehicles” in class 12 and “transport services, including by amphibious vehicles; arranging and conducting of sightseeing, tours and cruises” in class 39. (It was subsequently assigned to the Opponent and Quack’rDuck Pty Ltd, as mentioned later in this section).

1. In 2001 a third tour operator, an entity owned and operated by the Applicant, entered the market. It was known as ‘Jaws Down Under’ and according to the Opponent utilized an amphibious vehicle decorated with shark decals.

2. In 2002 the operators of Aqua registered another company, Aquaduck Tours Pty Ltd (‘Tours’), and began to utilize an amphibious vehicle decorated with a duck’s bill and eyes, and with the word ‘Aquaduck’ displayed. There is no information pertaining to whether Adventure objected to such use or either tacitly or expressly allowed it. In any event this use appears to have continued for a number of years to the present day. The Opponent was still in the employment of one or both of Aqua and Tours at this time.

3. In 2003 the Applicant is declared to have purchased the Aqua and Tours businesses, and continued to provide amphibious tours through one or both of the companies Aquaduck Pty Ltd and Aquaduck Safaris Pty Ltd (not apparently related to either Aquabus Safaris Pty Ltd or Aquaduck Tours Pty Ltd). The AQUADUCK word mark owned by Aqua was assigned to the Applicant on 6 August 2003. The opposed marks were commissioned in 2004 and apparently have been in use since then. The Applicant continued to use vehicles decorated with a duck’s bill and eyes and the word ‘Aquaduck’, and in 2005 changed the original blue and white camouflage-patterned vehicle to match (by overlaying the camouflage pattern with decals of a duck’s bill and eyes and the ‘Aquaduck’ name). Again there is no indication of whether Adventure made any objections.

4. Once the Aqua and Tours businesses were sold to the Applicant, the Opponent ceased his employment with them. It is not clear precisely when, but at some point in or before 2007 he relocated to Noosa and began to operate an amphibious tour business there.

5. In 2008 Adventure went into receivership, and after no purchasers for the business could be found it ceased trading and was placed in liquidation. It seems that Mainbay, being the purported owner/operator of Adventure, was also placed in liquidation.

6. Also in 2008 the Opponent registered the trade mark AQUADUCK in plain typescript in class 12 for a range of vehicles, including amphibious vehicles (registration number 1242540). It does not appear that he was using, or has used, the trade mark since.

7. Between February and August 2009 the Opponent applied for the registration of several trade marks (1285471, 1296445, 1297524 and 1314325, images of which are shown later in this decision) featuring the expression ‘Qwack-a-Duck’/ ‘QuackADuck’/ ‘Quack’R Duck’ and/or the image of an amphibious vehicle decorated with the bill and eyes of a duck, including the three dimensional shape of such. All are registered in class 39 in respect of, inter alia, transport and sightseeing tours.

8. At some point in 2009 the Opponent relocated back to the Gold Coast. In October 2009 he began to promote his tour business under the ‘Quack’R Duck’ name, apparently with a logo depicting a cartoon amphibious vehicle with the eyes and bill of a duck being driven by a duck in a captain’s uniform. According to the Applicant he placed an advertisement for ‘Quack’R Duck’ tours in ‘Ticketmates Magazine’, which appears to be a national tourism and ticketing publication. In November 2009, via solicitors, the Applicant wrote to the Opponent objecting to such use and asserting its intellectual property rights.

9. Later that month the Opponent entered into negotiations with the now defunct Mainbay to purchase the intellectual property of the Adventure (it appears negotiations took place directly with Mainbay rather than any third party liquidators dealing with the property of Mainbay). Although such negotiations do not appear to have been finalized the Opponent commenced operating his tour business in the Gold Coast in December 2009, trading as ‘Quack’R Duck’ and utilizing an amphibious vehicle depicting a duck’s bill and eyes.

10. In February 2010 the Applicant applied for the opposed trade marks. Soon after, in April 2010, the Opponent (with either Quack’rDuck Pty Ltd or Noosa Amphibious Safaris Pty Ltd) filed three more trade mark applications depicting a cartoon amphibious vehicle decorated with a duck’s bill and eyes, none of which have proceeded to registration (being variously lapsed, withdrawn or refused).

11. The remaining points relate to information in sealed exhibits, so I will discuss them only in general terms. Several months after the Applicant applied for the opposed trade marks, the Opponent and Mainbay executed an agreement wherein Mainbay purportedly sold to the Opponent the copyright in one or more images (despite Mainbay being in liquidation). I note also that the composite ‘Adventure Duck’ trade mark registration, depicted at paragraph 14, was assigned to the Opponent in May 2010.

12. The agreement, however, appears to have had a number of potential deficiencies (including that the copy filed in the evidence in support did not include the execution page nor the actual image(s) to which the copyright pertained). Almost a year later a new agreement was executed to address those deficiencies and was filed as part of the Opponent’s evidence in reply.

13. Among other things, the Opponent contends that his ownership of the copyright in two images (‘the copyright images’), sold to him by Mainbay Pty Ltd, renders the Applicant’s opposed trade marks contrary to law by way of copyright infringement. He further contends that by way the assignment to him of registration 829799 (the ‘Adventure Duck’ composite trade mark), he now has prior rights in copyright and/or trade mark material which is “substantially similar” to the applied-for trade marks.

14. The Opponent has also filed some evidence of confusion, being (a) the declaration of Nicole Domican, an employee of his company, and (b) some photographs uploaded on to the internet. With regard to (a) Ms Domican describes the similarities in the vehicles used by the parties and states “I receive approximately 30 enquiries weekly from passersby who enquire whether [the Opponent’s company and the Applicant] are the same company” and “Each boarding session we regularly are required to turn away persons who have purchased tickets from Aquaduck and tried to board the tours provided by my employer”. With regard to (b) an online album of photographs was uploaded onto the internet with the album title ‘Adventure Duck!’, but the photographs in fact show Aqua’s/the Applicant’s vehicles (it is not clear when the photographs were taken, although they appear to have been uploaded in 2004).

15. With this summary of events in mind I turn now to the grounds of opposition to be considered.

    Grounds and Onus

16. At the hearing the Opponent pursued grounds of opposition in respect of sections 42, 43, 58, 58A and 60. The Opponent also stated that it abandoned those grounds under sections 41, 44 and 62A, so I shall treat them accordingly.

17. In order to succeed in its opposition, the Opponent must establish at least one ground of opposition according to the ordinary civil standard, being the balance of probabilities[5]. The time at which the opposition must be established is the date of filing the applications[6], being 10 February 2010.

    [5] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

    [6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592; Winton Shire Council v Lomas (2002) 56 IPR 243; Lomas v Winton Shire Council [2003] AIPC 91-839.

18. I will mention at the outset that the Opponent does not clearly differentiate between trade marks and the use of a concept or theme, being ‘duck-billed vehicles’, and/or images of ducks or the word ‘duck’ in respect of amphibious tours. Consequently a substantial part of the Opponent’s evidence and submissions is directed at the Applicant’s adoption and use the concept/theme particularly upon its vehicles, as opposed to the actual trade marks applied for. Although the trade marks incorporate images of such vehicles in cartoon form, the consideration of the opposition grounds is not in respect of the Applicant’s vehicles but rather in respect of the trade marks applied for.

    Section 58 Applicant not the owner of trade mark

19. Section 58 of the Act provides:

    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.

20. In order to succeed under this ground of opposition, the Opponent must establish that:

    ·the respective trade marks of the Applicant and Opponent are either identical or substantially identical[7];

    ·the respective services of both parties are the ‘same kind of thing’[8]; and

    ·the Opponent’s trade mark use was prior to both the application to register and any actual use of the trade mark by the Applicant[9].

    [7] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495.

    [8] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75.

    [9] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413.

21. It appears that the Opponent relies upon its use of some or all of its registered trade marks, and the copyright images, in establishing that the Applicant is not the owner of the applied-for trade marks. For convenience, I reproduce the opposed trade marks and the Opponent’s registered trade marks in the table below. Note that registration 1296445 is in respect of a shape, described in an endorsement to the registration as:

    “The trade mark consists of the shape and colour of an amphibious 4WD bus, characterized by a tapered bow painted with the image of a yellow and white duck on the front and a blue splash design on the sides. The frontal view is painted with the image of a yellow duck’s beak. The side view is painted with the image of a white duck’s head and a blue splash design. The back view is a blank white stern. The aforementioned appears as shown in the representations attached to the application form.”

Opposed trade marks	Opponent’s registered trade marks
1344648	829799
1344650	1296445
1297524
1314325

1. Although all of the trade marks depicted in the table above have a level of similarity, in that they are all ‘duck-themed’, it was stressed in Carnival Cruise Lines Inc. v Sitmar Cruises Ltd[10] that in order to establish a ground under section 58 the marks in question must at a minimum be substantially identical:

   When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity will suffice…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. But to go beyond this is, in my view, not possible.

   [10] [1994] FCA 936; (1994) 31 IPR 375.

2. The question of substantial identity is to be arrived at after comparing the trade marks:

   …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.[11]

   [11] Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1961) 109 CLR 407 at 414-415.

3. In comparing the opposed trade marks side-by-side with those of the Opponent, I find that while they are similarly themed the different features within each preclude a finding of substantial identity. The word ‘Aquaduck’ is a significant feature of the opposed marks, as are the cartoon style depictions of a duck and man driving a ‘duck billed vehicle’. Two of the Opponent’s marks are also cartoon style images, however they are differentiated by (a) the presence of the words ‘Adventure Duck’ and ‘Quack’R Duck’ and (b) significantly different images: one being a quite different looking ‘duck billed vehicle’ rearing out of water, the other being a duck at a ship’s wheel. The remaining marks of the Opponent are relatively realistic illustrations (one being representative of a shape) of a vehicle decorated with a duck’s bill and eyes and blue and white ‘splash pattern’. Whilst a similar vehicle is present in the second of the opposed marks, it is again the word ‘Aquaduck’ and the cartoon man driving a cartoon styled vehicle which differentiates the marks to the extent that they are not substantially identical.

1. Given the copyright images are contained within the previously mentioned sealed exhibits, I will not describe them here except to say that I do not consider them to be substantially identical to the applied for marks either.

2. The use of the Opponent’s marks is therefore not use of essentially the same trade marks as those applied for by the Applicant, and the ground fails at this hurdle.

   Section 60 Trade mark similar to trade mark that has acquired a reputation in Australia

3. Section 60 of the Act provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, 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:  For priority date see section 12.

4. It is not necessary to establish deceptive similarity or substantial identity in order to establish a ground under section 60 (although consideration of them is still important in assessing the likelihood of deception or confusion). What is necessary is that the Opponent establish that its trade marks had acquired a reputation in Australia before the priority date of the opposed marks and that because of that reputation, use of the opposed marks would be likely to deceive or cause confusion.

5. Of reputation under section 60 of the Act Kenny J said in McCormick & Company Inc v McCormick[12] at paragraph 81:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

   [12] (2000) 51 IPR 102 at p81.

6. In noting that factors such as the esteem, or image, projected by a trade mark are relevant to the assessment of reputation, her Honour continued that:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product…

7. Submissions from both parties in respect of section 60 are brief. The Opponent, after citing the principles relevant to section 60 states:

   It appears uncontested that the Applicant’s Marks were registered before the priority date. It also seems uncontroversial that Adventure Duck had acquired a reputation in those Marks from their first use in 2000 in the Gold Coast. It is submitted in light of the above, the three elements required to oppose the mark under Section 60 have been met.

8. The Applicant rebuts this with:

   With respect to the Adventure Duck mark, any reputation and goodwill associated with that mark was completely diluted as a result of the liquidation of the Adventure Duck and Mainbay companies and by the non-use of the marks (until the assignment in May 2010). The reputation that the trade marks have acquired relate therefore only to the applicant.

9. Whilst both parties’ submissions appear to acknowledge a past or present existence of a reputation in a trade mark, there is little evidence before me pertaining to reputation such that I could be satisfied one exists, or that if so, deception or confusion is likely because of the use of the opposed marks in the face of it. The Opponent does not identify in which of its trade mark(s) it claims a reputation, although its statement above implies that registration 829799 is the relevant mark since it is the only one that dates back to 2000. At the same time, and as previously mentioned, it appears that the Opponent does not clearly differentiate between its various marks, but rather seeks to protect a concept or theme of ‘ducks’ or ‘duck-billed vehicles’ common amongst them.

10. In respect of the evidence there is no information regarding the volume of sales or the number of passengers taken on tours. The Opponent provides only a single overall figure for dollars spent by “the Quack’R Duck business” on marketing its “distinctive brand”, which apparently includes the ‘Adventure Duck’ business and trade marks (and which I note would have taken place after the priority date given the Opponent did not own the ‘Adventure Duck’ trade mark until May 2010). Precisely what marketing took place is not described, and the Opponent does not provide examples of advertising material. Nor is there other indicative information such as website traffic or numbers of enquiries. As a result even were I certain of which trade marks the Opponent claimed a reputation in, or whether in fact it claimed a reputation in a family of marks, I could not be satisfied that their reputation was such that the use of the opposed marks would be likely to cause deception or confusion.

11. In addition to the above, it appears from the declaration of Nicole Domican that a significant reason for confusion between the parties is not the reputation in or similarities between the trade marks, but that “the company’s [sic] both board passengers from bus stops that are approximately 100 meters apart”. It is not surprising that two companies using vehicles with similar appearances in very near proximity to each other are confused by some members of the public. This does not, however, support a finding that because of the reputation in the Opponent’s mark(s) the Applicant’s trade marks are likely to deceive or cause confusion.

12. For these reasons I am not satisfied that the use of the Applicant’s trade marks is likely to give rise to deception or confusion as a result of a reputation in the Opponent’s trade marks, and the ground under section 60 is not established.

    Section 42 Trade mark scandalous or its use contrary to law

13. Section 42 of the Act provides:

    An application for the registration of a trade mark must be rejected if:

    (a) the trade mark contains or consists of scandalous matter; or
    (b) its use would be contrary to law.

14. In its submissions the Opponent confirmed that its objection was based on section 42(b) only, and in particular that use of the opposed marks by the Applicant would be contrary to section 18 of Schedule 2 of the Competition and Consumer Act 2010 and contrary to the Copyright Act 1968.

15. Madgwick J, in Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd[13], observed that it may be difficult for the Registrar to look at questions of law outside her expertise and places an onerous responsibility on her, but nevertheless:

    …[T]he Registrar has the comfort that the criterion is that the use “would” not “could” be contrary to law

    …

    what is required is that the Registrar form a view as to whether the use of a trade mark would be contrary to law. Such opinion does not have a similar effect to say, a judicial conclusion of law as to breach of copyright proceedings; the effect is limited to the refusal of registration. In any case, an appeal de novo lies form the Registrar’s decision to this Court where any error of the Registrar may be corrected.

    [13] [2001] FCA 683; (2001) 52 IPR 24 at [28].

16. The Opponent must therefore satisfy the Registrar that use of the opposed trade marks “would”, not “could”, be contrary to law.

    Competition and Consumer Act 2010

17. With regard to the claim that use of the trade marks would contravene Australian consumer protection legislation I note that as at the priority date, 10 February 2010, it was the Trade Practices Act 1974 that was in force (the Competition and Consumer Act 2010 only coming into force as from 1 January 2011)[14]. I will nevertheless consider the Opponent’s submissions with reference to the equivalent section of the now repealed Trade Practices Act 1974 (‘the TPA’) which provides:

    Section 52. (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive.

    [14] Wilcox J, in Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd [2003] FCA 1502; (2004) 59 IPR 343 at [47] considered that the application of s 42(b) should be considered as at the priority date, although looking forward to prospective conduct after registration was effected.

18. In this regard, the Opponent submits that the Applicant’s trade marks would be likely to mislead or deceive because:

    To the extent that there is evidence that a party has deliberately adopted a name or get-up for the purpose of appropriating part of a trade or reputation of a rival, then such evidence may be used on the question of whether the name or get-up is likely to deceive or confuse. A finding of deliberate borrowing or taking has legitimate evidentiary use on the question of whether a party’s trade name or get-up is likely to deceive or cause confusion. In the present case, the Applicant knew of the use by Adventure Duck of the duck’s bill decal. So much can be gathered by the Cooley [declaration] and the inference that can be drawn by the operation of the two businesses at the same time on the Gold Coast, which is a small marketplace with few competitors.

19. I perceive two difficulties with the Opponent’s argument. First (and acknowledged by the Opponent) it is not sufficient if the conduct complained of causes mere confusion or uncertainty in the minds of the relevant public. The relevant standard for section 52 of the TPA is more onerous, being that the conduct must “mislead or deceive”[15]. As already indicated in respect of section 60, I am not satisfied that the use of the opposed trade marks is likely to cause deception or confusion on account of the Opponent’s reputation in its trade marks. It follows therefore that, on the stricter test posited by the TPA, use of the opposed trade marks is not likely to mislead or deceive. On that basis this leg of the section 42(b) ground is not established.

    [15] See for example Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506; (1989) 16 IPR 431 per Hill J at 440-442 and Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 1a IPR 684 per Gibbs CJ at 688.

20. Secondly, it appears questions could be raised about both parties conduct. The Applicant continued the alleged misconduct began by the Opponent’s former employer, and it is not clear whether this was done with or without complaint from Adventure[16]. On the other hand it was not until after the Applicant had established its business in the Gold Coast that the Opponent wished to enter the same market, and he devised a means by which he might assert prior rights after the priority date and after the Applicant attempted to enforce its rights against him.

    [16] I do note that Aqua had registered the word trade mark AQUADUCK in 1998, two years before Adventure commenced trade - indicating at least a prima facie intention to utilise a ‘duck-related’ trade mark. However it does not appear that the trade mark was used at any time prior to Adventure’s use of its marks.

    Copyright Act 1968

21. The copyright images which form the basis of this ground of opposition are the subject of sealed exhibits, and whilst it is not apparent to me what commercial disadvantage may befall the Opponent should they be reproduced as part of this decision, I nonetheless maintain their confidentiality. In doing so, however, I am unable to discuss in detail issues of relevance and the Opponent will have to be satisfied with only brief reasons for the decision I have made.

22. I am satisfied that the copyright images are original artistic works as defined by section 10(1) of the Copyright Act 1968 (the ‘CA’), that the author was a qualified person as per section 32(1) of the CA, and that copyright subsists in the works. Although I am unsure of the ramifications of Mainbay being in liquidation at the time it purportedly sold its copyright, I will assume that the copyright is now owned by the Opponent. However I am not certain that by way of the assignment (having occurred post priority date) the Opponent can claim prior copyright infringement against the Applicant. In any event, it is a question that need not be answered because I am not satisfied that the opposed trade marks reproduce at least a substantial part of the artistic works.

23. In this regard the Full Federal Court upheld the findings of Yates J in Optical 88 Limited v Optical 88 Pty Limited (No 2)[17], wherein he succinctly summarised the relevant consideration as:

    At the end of the day, the only question that arises is whether the first respondent’s logo is a reproduction of the applicant’s logo or of a substantial part of it: ss14(1), 31(1)(a) and 36 of the Copyright Act. This involves a comparison of the two works and the formation of a judgement based on the eye as to the degree of resemblance between the two. The degree of resemblance must be such that, to the eye, the first respondent’s logo reproduces, or reproduces a substantial part of, the applicant’s logo.

    [17] [2010] FCA 1380; (2010) 89 IPR 457.

24. His Honour, in discussing logos which incorporated or were based upon the numeral “88”, made a further observation relevant to this matter:

    The taking of an idea or concept is not an infringement of copyright without the resulting work being a reproduction, or a reproduction of a substantial part, of the artistic work itself expressed in material form.

25. I do not consider the degree of resemblance between the Opponent’s copyright images and the Applicant’s trade marks is such that the trade marks are a reproduction, or a reproduction of a substantial part of the copyright images. Beyond a common idea or concept the material form of each differ markedly, and the ground under 42(b) of the Act fails accordingly.

    Section 43 Trade marks likely to deceive or cause confusion

26. Section 43 of the Act provides:

    An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

27. In order for section 43 to be established, the likelihood of deception or confusion must be as a result of some connotation inherent in the opposed trade mark and not dependent on external considerations such as similarity to another trade mark. See for example Winton Shire Council v Lomas[18] in which Lander J states:

    Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s60.

    [18] (2002) 56 IPR 72.

28. The Opponent acknowledges such, however then frames its submissions as a comparison between the Applicant’s trade marks and its own branding (being a combination of its trade marks and its use of a ‘duck theme’ on vehicles and trade names), concluding “It is submitted that there are sufficient similarities between the Applicant’s Marks and the Opponent’s Marks to cause deception and confusion sufficient enough to ground a rejection under section 43”.

29. Generally such matters are more appropriately dealt with under sections 44 and 60. Section 43 may be triggered where a name or image with some notoriety, such as SUMMER BAY[19], [PRINCESS] DIANA[20] or MICKEY MOUSE and MINNIE MOUSE[21], is contained within a trade mark in a way that connotes sanction, sponsorship or affiliation. However the Opponent has not shown that it has some general notoriety such that, away from its own trade marks or branding, the opposed trade marks connote some sort of sanction or connection with the Opponent.

    [19] Amalgamated Television Services Pty Ltd v Pickard [1999] ATMO 103.

    [20] The Executors of the Estate of Diana, Princess of Wales v Bonnie Masterson [2001] ATMO 46.

    [21] Radio Corp Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448.

30. In summary the Opponent has not pointed to any connotation inherent in the opposed trade marks likely to deceive or cause confusion. Accordingly the ground is not established.

    Section 58A Opponent’s earlier use of similar trade mark

31. Section 58A applies to trade mark applications which have been accepted by the Registrar of Trade Marks under the provisions of section 44(4) because of “prior continuous use”. It allows for an opponent to establish first use at common law of the trade mark the applicant had established use prior to in satisfying the provisions of section 44(4).

32. Application 1344648 was not accepted under section 44(4) and so section 58A has no application in respect of that mark.

33. Application 1344650 was accepted under the provisions section 44(4). At the time of acceptance, it was the pending trade mark 1314327 that had been raised as a conflicting trade mark and the Applicant demonstrated use before the priority date of the conflicting trade mark. It would usually then be incumbent upon the Opponent to establish that it used the trade mark 1314327 prior to the first use of the Applicant’s trade mark. Here, however, the pending trade mark 1314327 was in the name of a Mr. Robert Domican (who may or may not be related to Nicole Domican, one of the Opponent’s employees and declarant) and he subsequently withdrew the trade mark application in March 2010. In any event there is no evidence of any use at all of the trade mark 1314327. Consequently this ground of opposition cannot be established.

    Decision and costs

34. According to section 55(1) of the Act:

    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.

35. The Opponent has not established a ground of opposition and so its opposition is unsuccessful. Applications 1344648 and 1344650 may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

36. Costs ordinarily follow the event in opposition matters, accordingly I award costs against the Opponent to the extent allowed in Schedule 8 of the Trade Mark Regulations 1995.

    Nicole Worth
    Hearing Officer
    Trade Marks Hearings
    27 November 2012