Kevin Edward Taylor v Simplicity Systems Pty Ltd

[2000] ATMO 56

TRADE MARKS ACT 1995

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

Re:Opposition by Kevin Edward Taylor to registration of trade mark application 779730(9) - footystats and device of a person kicking a football- filed in the name of Simplicity Systems Pty Ltd.

Background

Simplicity Systems Pty Ltd (the applicant) filed the above numbered application on 1 December 1998 for the trade mark shown below:

The application was filed in class 9 for goods described as "data processing equipment and computers".

The trade mark was examined in due course, and as the examiner found no grounds for rejection, was accepted for registration without the issue of any report.  It was advertised as accepted in the Australian Official Journal of Trade Marks on 13 May 1999.

On 14 July 1999, Kevin Edward Taylor (the opponent) filed a notice of opposition.  The grounds for opposition are not phrased in the words of the Trade Marks Act 1995, and as far as they are relevant read as follows:

Prior use of business name "Footystats" by registration, publication, exposure and distribution of services for several years.

The opponent filed, with his notice of opposition, a statutory declaration and various accompanying exhibits as evidence in support of his case.  The applicant did not supply evidence in answer, and in due course, the opponent notified that he would await the Registrar's decision.  The matter has now come to me, as delegate of the Registrar, for a decision based on the material on file.

The Evidence

The evidence in support of the notice of opposition consists of a single Statutory Declaration made by the opponent himself, with attachments.  The attachments include copies of business name registration certificates for a business named footystats; invoices and payment advices to the business; a copy of a web page which includes the word footystats; a copy of a 450 page publication labelled "Inside Football Weekly FOOTYSTATS"; and copies of pages from publications which incorporate football statistics.  The last two exhibits do not include the word footystats, and I must discount them.

In his declaration, Mr Taylor states that he registered the word footystats as a business name in May 1992, and that it is still registered as such.  He says his business is known as footystats, and is based on a computer database of material he has gathered together and has used since 1984.  Mr Taylor says he has published a book form of this data, titled footystats, annually since 1992.  A copy of the 1999 book was supplied as part of the evidence.

He states that he has a contract with a major print media website for the supply of AFL statistics under the title footystats, from which he earns a yearly income.  He also refers to use of his statistical material in a weekly AFL publication, "Football Record", over the last 7 years.  The extracts from this publication is the material mentioned above which I must discount, because there is no mention in them of the trade mark word.

Mr Taylor states in his declaration that he became aware of the applicant's trade mark application when he received, on 25 May 1999, the results of a Search for Business Name, a service offered by IP Australia  and designed to assist people avoid already registered trade marks when planning to register a business name.

Discussion

The notice of opposition does not nominate grounds in the usual terminology of the Trade Marks Act 1995. However, section 52(4) of the Act specifies that registration of a trade mark may be opposed only on those grounds set out in  Division 2 of Part 5.  Consideration of the comments in the notice of opposition leads me to infer that the only appropriate grounds for consideration are those nominated in sections 58 and 60.  These sections are set out in full below:

Applicant not owner of trade mark

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

Note:  For applicant see section 6.

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

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

(a)       it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b)       because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1:  For deceptively similar see section 10.

Note 2: For priority date see section 12.

I shall discuss these matters in turn.

Section 58 - Applicant is not the owner of the trade mark

Ownership, as it is to be considered under the provisions of section 58, refers to ownership at common law. On that subject, McGarvie J. said in the case of Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark YANX; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) 59 ALJR 77 at 83.

The applicant, in filing his trade mark application, made a claim under the provisions of section 27(1)(a) for ownership of the trade mark in relation to particular goods - in this case data processing equipment and computers.  In accepting the application for registration, the Registrar recognised this claim as prima facie valid.  If the opponent wishes to overturn this view, he must establish that the applicant was not the owner of the trade mark, in respect of the particular range of goods at the time of filing.  The ownership referred to, however, is limited to "the same kind of thing", as per Holroyd J. in Hick's Trade Mark (1897) 22 VLR 636.

The first issue to be decided is whether two trade marks are substantially identical, and here I rely upon the tests set out by Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1967)109 CLR 407 at 414:

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 … mark and the total impression of resemblance or dissimilarity that emerges from the comparison … .

Following a side by side comparison, I do not consider the two trade marks to be substantially identical.  The applicant's trade mark includes a strong device portion, a cartoon character kicking a football.  The device portion of the trade mark subject of the application cannot be ignored and on a side by side comparison, the differences between the two marks are striking.

Having determined that the trade marks are not substantially identical, the remaining issue is whether the goods and/or services claimed by the applicant are the "same kind of thing" as those claimed by the opponent.

The applicant's trade mark has been accepted for a range of computer goods, namely data processing equipment and computers.  These goods are hardware items, possibly relatively expensive and to a degree specialist in application.

The opponent, on the other hand, appears to be dealing in completely different goods and/or services.  Mr Taylor produces a book incorporating statistics about AFL - the games, the players and various other snippets of information pertinent to this particular code of football.  He also supplies statistics of this type for publication via a website, and via other print media, though not always clearly under the word footystats.  While he claims use of a computer database of material, in no way can it be said that he deals in the same goods for which the disputed trade mark has been accepted.

The opponent therefore cannot claim either a substantially identical trade mark, or use on the same kind of goods.  The claim to ownership must fail.  I find that opposition under section 58 is unsuccessful.

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

To be successful under the provisions of section 60, the opponent needs to be able to indicate a trade mark which, prior to the relevant date, 1 December 1998, had an established reputation.  I must then consider whether, in view of the reputation claimed for the opponent's trade marks in Australia before the date of the present application, the mark the subject of this application, if used in a normal or fair manner in respect of any goods stated in the application, will be reasonably likely to cause deception and confusion amongst a substantial number of persons - Smith Hayden & Co Ltd's Appn (1946) 63 RPC 97. In this regard, it is to be remembered that there needs to be a real tangible danger of deception or confusion, as per Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

I have already decided that the two trade marks are not substantially identical, though they may be deceptively similar (per Shell Co v Esso Standard Oil, supra).  But does the opponent's mark have an established reputation?  Mr Taylor declares that he has being using the word since at least 1992 on the goods mentioned previously.  However, he gives no idea of how far his reputation has spread in this time.  I am not prepared to even make a guess at the size of the market he is dealing in, that market being AFL fans who are interested enough to want to go into the statistical detail he provides.  I simply do not have sufficient information before me to be able to declare that footystats has an established reputation in the marketplace.

In addition to the matter of reputation, is the question of whether there is a likelihood of deception or confusion in the marketplace.  On one hand is Mr Taylor's collection of football statistics, and his business built around supplying these statistics to interested parties via various media.  On the other hand is the applicant's claim for computers and data processing equipment.  I do not consider these two sets of goods to be likely components of the same market, and the possibility of confusion between the two proprietors is thus virtually nonexistent.  Deception and confusion to any degree is unlikely to occur in respect of such diverse goods when there is no established reputation to be considered.

The opponent has thus failed to make out either leg of the test required to support opposition under the provisions of section 60, and I find the opposition is unsuccessful on this ground. 

Conclusion

The opposition is thus not successful on either of the grounds relied upon.  However, I think it is appropriate here to refer to comments made in correspondence between the parties, and which are copied to the trade mark file.  From this correspondence it appears possible that the applicant is not using its trade mark on the goods claimed in the trade mark application, but is using it on something much closer to the opponent's goods.  In letters on file from the applicant, reference is made to "software", and to a change of trademark for their product because of the opposition lodged by Mr Taylor.  Be that as it may, my decision must be made on the basis of the trade mark application and its designated goods.  I am not in a position to take into account use on goods which do not form part of the application claim.  If the applicant is not using the trade mark on the goods it has claimed in its application., the worth of a registration may be questionable.  It is my belief that, following registration, the applicant would be unlikely to be successful in any infringement action against the opponent because the respective sets of goods are so completely unrelated.

Decision

The opponent has not been successful in making out a case for his opposition.  I therefore dismiss the opposition in its entirety.  I direct that the application may proceed to registration after 30 days from the date of this decision, on payment of the appropriate fees. 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.

Alison Windsor
Senior Examiner

7 June 2000