Kris John Gaunt v NBA Properties, Inc

[1998] ATMO 67

TRADE MARKS ACT 1995

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

Re:      Opposition by NBA Properties, Inc. to an application by Kris John Gaunt for registration of trade mark number 728289

Trade Mark application number 728289 was filed by Kris John Gaunt of 82 Thelma Street, Como, Western Australia, on 20 February 1997.  Registration is sought in respect of pizza products in class 30. The trade mark is shown below. It comprises a cartoonlike representation of a dinosaur stepping past a circular device and holding a pizza in its left paw.  The words raptor pizza boldly feature and surround the dinosaur character.  I shall refer to this mark as the pizza raptor mark. 

The trade mark application was examined and the Registrar, on 7 August 1997, advertised the trade mark for acceptance.   In the following three months the application was open to opposition.  In that time, NBA Properties, Inc., of 645 Fifth Avenue, New York, New York, U.S.A. filed notice to oppose registration.  The notice was filed on behalf of NBA Properties, Inc. by its agent, Chrysiliou Moore Martin, patent and trade mark attorneys of Sydney, New South Wales.   For convenience I shall refer to the opponent from here on as NBA Properties. 

The grounds of opposition are broad, including that:

· Mr Gaunt’s trade mark is in violation of NBA Properties’ copyright and its registration would be contrary to law - section 42 of the Trade Marks Act1995;

·   Mr Gaunt is not the owner of the application mark - section 58 of the Act ;

·   NBA Properties has a reputation in its trade mark and use of the application mark would be likely to cause deception and confusion - section 60 of the Act.

As evidence to support its opposition, NBA Properties filed a single declaration from Mr Anthony Moore of 60 City Road, Southbank, Victoria.  The remaining time for evidence duly concluded and, in August of 1998, NBA Properties’ agent applied to have the matter heard.  Mr Gaunt had filed no evidence and he was not responding to the Registrar’s communications.  For the sake of limiting costs, a hearing was therefore set down for Sydney.  It took place before me on 13 October 1998.  Mr Andros Chrysiliou appeared on behalf of NBA Properties.  Mr Gaunt was not present, was not represented and did not furnish any written submissions.

Evidence

Mr Anthony Moore is an employee of NBA Australia Limited, a financially controlled subsidiary of the opponent company NBA Properties.  NBA Australia Limited represents NBA Properties in Australia and acts for it in merchandising and licensing matters.  NBA Properties, says Mr Moore, owns a large portfolio of trade marks relating to the names and logos of basketball teams participating in competitions in the United States.  US basketball has an Australian following, its popularity is increasing, and it is now well known and well supported in this country.  A large part of this following is made up by children who, says Mr Moore, are especially familiar with the teams’ logos, and with the merchandise which features and promotes them. There is an extensive range of this merchandise. It includes electronic products and accessories, basketball cards, videos, school supplies, home furnishings, drink containers, mugs, toys and games, clothing, shoes, published material, collectables, gifts and novelties and, in 1995, accounted for Australian retail sales valued in excess of $100 million.  These goods are distributed through prominent national retailers including Myer-Grace Brothers, K Mart and Target. This level of activity was achieved by 1995, some two years before 20 February 1997, the application priority date.

Participating in the US basketball contests is a team known as RAPTORS.  This team came into being in Canada in 1994, the name RAPTORS emerging from a successful competition which drew over 200,000 entries. The logo and name were unveiled in May 1994 and, and in the upcoming season, the RAPTORS team commenced play.  Since that time, the team, says Mr Moore, has achieved considerable fame and has been featured in the press, on television and in sporting magazines. Such a magazine is One on One[1]. The circulation of this magazine is not stated, but it is clearly available in Australia and, in a 1995 edition, depicts the RAPTORS logo. A number of other magazines in evidence show more images. Further exhibits show images of the RAPTORS logo and players in children’s play books (the kind designed for children to stick their card collection in); in “fan” material  - The Official Fan’s Guide; on a range of clothing; and on basketballs.  Mr Moore also exhibits various retailers’ catalogues (including Spalding’s 1995 Catalogue, Champion Australia’s 1996 Catalogue and Sports Specialist’s 1996 Catalogue) in which these clothing and sports goods are advertised.

[1] Exhibits AM1 and AM2

The artwork for the raptors team logo (shown above) was created by Sean Michael Edwards Design in New York which, on 11 April 1994, assigned all copyright in the work to NBA Properties. The use of this artwork by licensees is closely managed. Mr Moore demonstrates this with a copy of page of NBA Properties’ Artwork Approval Register - Spalding Australia [2] which records the details of approved use. NBA Properties has registered the raptors logo as a trade mark in classes 16, 25, 28, 41 and 9.   I shall refer to it as the basketball raptor mark

[2] Exhibit AM17

Copyright - section 42

Mr Chrysiliou began his submissions with a lengthy address on the question of copyright. He prefaced this with an acknowledgement that the Registrar does not have the power to decide copyright but he said the matter at hand was rather different. He directed me to section 126[3] of the Copyright Act 1968. This, he said, lays down first, that copyright is presumed to subsist in work if the defendant does not put in issue the subsistence of the copyright; and second, that a plaintiff shall be presumed to be the owner of the copyright if s/he claims to be the owner and the defendant does not dispute that claim. Mr Morgan, he says, on behalf of NBA Properties, claims that the original artwork in the application trade mark was created by Sean Michael Edwards Design and that the copyright in that work was assigned to NBA Properties. Mr Chrysiliou says NBA Properties now claims copyright through the operation of section 184(1)(a)[4] of the Copyright Act 1968 and the provisions of regulation 4 of the Copyright International Protection Regulations which govern provisions of the Australian Copyright Act to the effect that works first published in the USA are to be treated as if they were first made and published in Australia. Mr Chrysiliou says he is not asking me to decide copyright infringement, but, where the proposition that copyright subsists has not been put into issue, I should find that certain presumptions established under the Copyright Act apply in the opponent’s favour.

[3] Presumptions as to subsistence and ownership of copyright

[4]  Application of Act to countries other than Australia

It seems to me to be perfectly clear, however, that inasmuch as the Registrar does not have competence to decide matters of copyright infringement, equally he does not have competence to decide questions under sections 126 and 184 of the Copyright Act or to determine the operation and effect of regulation 4 of the Copyright International Protection Regulations. Certainly, a document assigning copyright to NBA Properties is in evidence, and if that transfer was the issue, it may be that I could make a ruling on the relevance of that document.  However, I am not being asked simply to acknowledge a transfer document, but to interpret and apply provisions of certain legislation which lies quite outside of my authority.  This, of course, I cannot do.  And I would remind Mr Chrysiliou of the following comments from the Hearing Officer, Ms Vija Zars, in Sea World, Inc. v ANZ Executors & Trustees Company Limited (as yet unpublished) regarding submissions based on a Copyright Act claim.  She says: 

Such matters are not strictly within the Registrar's province. Of course, it would be a different matter if there had been a ruling by the court on an action taken under the Copyright Act and the injured party, armed with that judgment took appropriate action under the Trade Marks Act to preserve or maintain his rights.

NBA Properties is not armed with any such judgment, and I decline to find for the opponent in respect of this ground.

Ownership - section 58

In respect of ownership, Mr Chrysiliou again relied on the Copyright Act 1968.  He submits that an applicant may not claim proprietorship of a trade mark if that claim depends on a breach of the law.  Further, he says, that where a breach of the law is alleged, and the applicant fails to respond to that allegation, then again it should be held that the applicant has no proper claim.  The breach of the law referred to by Mr Chrysiliou is the claim that the pizza raptor mark is a copy of the basketball raptor mark and that copyright in this work belongs to the opponent, NBA Properties. 

As discussed above, however, it is not within my competence to decide matters under the Copyright Act.  Nor, in the circumstances, am I prepared to find that this is a question that ought to have been addressed by Mr Gaunt.  

I do not find that NBA Properties has succeeded on the ground of proprietorship. 

Prior reputation - section 60;

Section 60 is a ground of opposition.  It reads:

1. 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.

As per the famous directives in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (109 CLR 407 at 414), substantial identity is determined by a side by side comparison of the marks. The similarities and difference are to be 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.

For this purpose, then, it is convenient and appropriate to depict the marks side by side.

The marks have in common with each other, and as their essential features, a cartoon representation of an apparently carnivorous dinosaur, dressed in shorts, stepping past a circular device on which, in bold letters, are the words raptor or raptors Again in common, each dinosaur character has one paw extended before it, appears to be moving at speed, and has its face turned in profile to look back across its shoulder.  There are, however, differences in the detail. In particular, the dinosaur in the pizza raptor mark carries a pizza in its outstretched paw; the dinosaur in the basketball raptor mark carries a basketball.  The word pizza appears only in the pizza raptor mark, and the word toronto only appears in the basketball raptor mark. The character in the pizza raptor mark wears no shirt and is barefoot - the character in the basketball raptor mark wears a singlet with the letter R on it, and wears shoes. One further point is that the dinosaur in the pizza raptor mark steps to the left - the dinosaur in the basketball raptor mark steps to the right. 

The total impression left by these marks is, in my opinion, that the marks so resemble each other that without a careful side by side comparison, one is likely to be mistaken for the other. While many of the small details of the two marks are not the same - they clearly agree in the central and essential features namely, the powerful dinosaur character, the dominating word raptor or raptors, and the overall construction or design. Mr Chrysiliou submits that this degree of commonality cannot be the result of chance. He may well be right, but nothing, I think, turns on that point. I will however, comment a little further on three of the points of difference.  First, is the word toronto.  This in itself is an evocative word, and it cannot lightly be dismissed.  Here, however, I do dismiss it. First, because it is strongly descriptive, and second, because it is overwhelmed by the other vigorous and complex elements in the mark. The second point of difference is the word pizza.  It is entirely descriptive and contributes no trade mark value to the mark. The third point of difference is that one mark is oriented to the left and the other to the right. To my mind, that reads as nothing more than a mirror effect and I think it of very little practical help in differentiating marks which hold so much spectacular graphic and textual material in common.  All told I think that these marks are substantially identical with each other.

The section 60 ground then rests on the question of whether the evidence shows that the reputation established in the basketball raptor mark is such that use of the pizza raptor mark would be likely to deceive or cause confusion.

Here Mr Chrysiliou referred me to a number of cases including Radio Corporation Pty Limited  v Disney and others. (1937) 57 CLR 448. The High Court there found that use of the trade mark mickey mouse was likely to suggest an association with Walt Disney. Justice Dixon comments (p455.9) that Walt Disney’s merchandising gave rise to a valuable source of revenue.  He continues:

An elaborate and extensive system of licensing has been set up.  Under it manufacturers or traders pay for permission to use the names of the figures in connection with their goods.  In Australia alone licences have been granted for all sorts and descriptions of goods produced by numbers of unconnected manufacturers. The articles bearing representation of or called by the names of Disney’s conceptions have no characteristic in common.  They go from canned soups to cotton undershirts and from bridge scorers to boys’ braces.

Justice Dixon found that this position was not very likely to cause misunderstanding as to permitted use.  He says (p457.95) if a trader applies the name of a well known character such as Mickey Mouse to his or her goods, 

it may be that in some vague way the buyer supposes that Disney must have sanctioned it. 

However, as I commented in United Artists Corporation v Trevor Clarke Holdings Pty Ltd, 41 IPR 425, this judgement was handed down in 1937, and now in 1998 character merchandising is a prominent and common feature of the commercial world. With sports sponsorship frequently in the news, the public of today is much more aware of the implications of product endorsement and generally expects product endorsement to manifest approval. In terms of today’s commercial reality, therefore, I consider that if a pizza product carries a trade mark signifying a well known sports team, the public would expect the pizza dealer to be using that mark by licence or other authorised right.

In light then of:

§  the fact  that sponsorship is a recognised feature of twentieth century commerce,  and

§  the evidence furnished by the opponent,

I am to determine whether these substantially identical trade marks, used on the one hand by Mr Gaunt on pizza products and, on the other, by NBA Properties in connection with a sports team, and on a range of its merchandising products, are likely to cause a number of persons to wonder whether the pizza raptor mark indicates sponsorship, or a franchise arrangement, or some other trade connection, with NBA Properties - (as per Southern Cross Refrigerating Company v Toowoomba Foundry Proprietary Limited  (1954) 91 CLR 592 at 608).

As I have mentioned, Mr Gaunt does not dispute any of the material facts in evidence.

The Moore declaration shows that, before the priority date of the subject application, a system, similar to the Disney system described by his Honour Justice Dixon, was successfully established by NBA Properties.  Mr Moore shows first that the US basketball competitions have a significant following in Australia.  He shows the emergence of the RAPTORS team as a new team, describes the publicity surrounding its inauguration and testifies to the popularity that the team has generated.  He describes the flourishing business that is carried on in goods which capitalise on the merchandising aspect of the RAPTORS team and its logo, and he gives examples of Australian magazines which publish and promote US basketball competitions and feature the RAPTORS team. There is no evidence that the RAPTORS team or its logo has been used in respect of any food products, much less pizza products.   Nevertheless, on the evidence I am satisfied that the reputation of the basketball raptor mark was established before the priority date of the subject application; that that reputation is known to a significant number of people; and for those familiar with the RAPTORS team and the associated merchandising activities, the appearance of the basketball raptor mark on pizza products, would be understood as a further merchandising or sponsorship activity. I have found the pizza raptor mark is substantially identical to NBA Properties’ basketball raptor mark and, as of the date of application, by reason of NBA Properties’ reputation and successful merchandising activities, I find that use of the pizza raptor mark would be likely to deceive or cause confusion.

I therefore find that the section 60 ground of opposition is established.

Decision

I have not found that the registration of this trade mark is contrary to law, nor have I found that the opponent has a superior claim to proprietorship of the subject trade mark in respect of the goods claimed by Mr Gaunt in this trade mark application. The opposition therefore has not succeeded on the first two grounds.  However, I have found that the subject trade mark - the pizza raptor mark - is substantially identical to the opponent’s basketball raptor mark, and that because of the reputation shown to exist in the opponent’s basketball raptor mark prior to the application priority date, use of the pizza raptor mark would be likely to deceive or cause confusion.  I therefore find for the opponent, and I refuse the registration of trade mark application number 728289.

Costs

Mr Chrysiliou, on behalf of NBA Properties, asked for costs.  As the successful party NBA Properties is entitled to them and, with the authority of section 221 of the Act, I make that award.  As per the provisions of regulation 21.13 the amount of costs must be taxed, allowed and certified by a trade marks officer appointed by the Registrar for that purpose.

Helen R. Hardie
Deputy Registrar

23 December 1998