LM Sports Pty Ltd as trustee for TJNL Enterprises Trust v The Racing League Pty Ltd

[2024] ATMO 146

TRADE MARKS ACT 1995

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

Re:Opposition by LM Sports Pty Ltd as trustee for TJNL Enterprises Trust to registration of trade mark application number 2114349 (class 41) – TRL THE RACING LEAGUE (fig.) – in the name of The Racing League Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Self-represented

Applicant: Cirrus Legal Pty Ltd

Decision:

2024 ATMO 146

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44 and 60 considered – no grounds established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by LM Sports Pty Ltd as trustee for TJNL Enterprises Trust (‘Opponent’) to registration of the trade mark which is the subject of the application detailed below in the name of The Racing League Pty Ltd (‘Applicant’):

Number:   2114349 (‘Application’)

Trade Mark:   (‘Trade Mark’)

Filing Date:  25 August 2020

Specification:                   Class 41: Wagering services (‘Applicant’s Services’)

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2.     Following the advertisement of acceptance of the Application, the Opponent filed both a Notice of Intention to Oppose the Trade Mark and a Statement of Grounds and Particulars (‘SGP’) on 11 March 2021.  This office then wrote to the parties advising that a deadline of 2 July 2021 had been set for the Applicant to file its Notice of Intention to Defend (‘NID’).

3.     On 25 June 2021, the Applicant applied for a one month extension of time to file its NID and the NID was filed on 26 July 2021.  Initially, this office intended to refuse the extension of time but after a hearing on the issue, the extension was granted,[2] the NID was taken as properly filed and a deadline of 19 August 2022 was set for the Opponent to file its evidence in support (‘EIS’) of the opposition.    

[2] [2022] ATMO 81 (Delegate N. Barbey).

4.     The Opponent then obtained an extension of time before filing its EIS on 12 July 2023 consisting of a declaration of Tom Longworth, owner of the Opponent, made on 12 July 2023 with attachment (‘Longworth’).  The Applicant filed its evidence in answer comprising a declaration of Larry Nesbit Noble, solicitor for the Applicant, made on 9 October 2023 with attachment (‘Noble’).  On 8 December 2023, the Opponent filed its evidence in reply being a declaration of Tom Longworth made on 8 December 2023 with attachment (‘Longworth 2’).

5.     Following the conclusion of the evidence stage, the parties were given the opportunity to request a hearing.  The Applicant requested a hearing by way of written submissions.  This office issued an official notice confirming that a hearing was scheduled by way of written submissions and setting a deadline for the filing of submissions.  No submissions were filed by either party.  This matter has now been allocated to me to determine as a delegate of the Registrar of Trade Marks and I do so based on the aforementioned materials.

Grounds, onus and relevant date

6.     In its SGP, the Opponent nominated grounds of opposition under ss 44 and 60.  The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[3]  The standard of proof is the ordinary civil standard of the balance of probabilities.[4]

[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

7.     The date at which the rights of the parties are to be determined is 25 August 2020 (‘Relevant Date’) being both the filing date and priority date of the Application.

Opponent’s evidence

8.     The Opponent is the owner of the following Australian trade mark registration[5] (‘Opponent’s Registration’):

[5] Registration 1229418 has an endorsement that the ‘Provisions of paragraph 44(3)(b) and/or Reg 4.15A applied.’

Number	Trade Mark	Filing Date	Services
1229418	(‘Opponent’s Mark’)	24 March 2008	Class 41:  Management of sporting events; officiating at sports contests; organisation of sporting activities; organisation of sporting competitions; organisation of sporting events; organisation of sports competitions; production of sporting events (‘Opponent’s Services’)

9.     Longworth claims that the Opponent has a national reputation for organising and operating touch rugby league itself or through its franchisees[6] in various towns and cities of the eastern states of Australia.  Longworth estimates that 500,000 people have been customers of its touch rugby league network since 2005.  At the time of Longworth, there were over 80,000 individuals in the Opponent’s competition database.

[6] Any reference to the Opponent includes its franchisees.

10.    The Opponent’s Mark has been used since 2005 in relation to touch rugby league competitions, apparel, and marketing, advertising and administrative materials. The Opponent’s Mark has also been used since 2005 on its websites at and Longworth claims that these websites receive significant traffic and page views.

11.   In addition, the Opponent’s Mark is used on its Facebook and Instagram accounts which have 19,000 and 26,000 followers respectively.  The Opponent’s franchisees also have their own social media accounts (about 40 in total) each with 1,000 to 10,000 followers.

12.   The Opponent claims that it has become a ‘household brand’ in part due to Darren Lockyer, a well-known rugby league player, being the ‘face’ of the Opponent’s business since 2019 which has resulted in the Opponent receiving publicity in mainstream media.  A weblink to this media coverage is provided.  The Opponent’s approximate advertising expenditure since the business commenced and the fees paid to Darren Lockyear are provided.

13.   Longworth claims that the Opponent and Applicant promote their businesses by similar means to the same audience and includes screenshots of advertisements on Facebook for each party on ‘Thursday 4 March at 7:07pm.’  In addition, the Opponent alleges that both parties use their marks in similar positions on their respective apparel and includes photos showing Darren Lockyer wearing a tank top with the Opponent’s Mark on the left side of his chest and Billy Slater (a former teammate of Darren Lockyer) wearing a t-shirt with the Trade Mark on the right side of his chest.  I note that it is common for brands to be positioned on either the left or right side of the chest on a shirt. 

14.   Much of Longworth 2 is in the nature of submissions.  However, I note that in Longworth 2, the Opponent claims that there is customer confusion between the Opponent’s mark and the Trade Mark which the Opponent alleges is causing it to lose significant business.  The Opponent provides ‘four random emails’ from the Applicant’s customers who have erroneously contacted the Opponent instead of the Applicant.  The Opponent alleges it receives at least one such erroneous contact weekly ‘across all of our communication mediums’ which adds to the work of its staff and its administration costs.

Applicant’s evidence

15.   Noble declares that the Applicant’s business commenced in September 2020 and has grown rapidly.  ‘Social Media Facts and Figures’ at May 2022 are annexed to Noble and also an article from The Daily Telegraph on 9 September 2020 about the launch of the Applicant which refers to media coverage by the major television networks, newspapers and electronic media.  The launch of the Applicant’s business featured sporting figures from different codes including jockeys, horse trainers and cricket.  Details of the Applicant’s advertising expenditure is provided. 

16.   The attachment to Noble claims that the purpose of the Applicant’s business is to increase the number of racehorse owners in Australia.  At the time of Noble, the Applicant had about 8,000 owners of 3 teams with 23 horses in total, and a database of 25,000 people.  Statistics on the nature of the Applicant’s customers are provided with more than half being over 55 years old and 70% male.

17.   Much of Noble consists of arguments about differences in the respective trade marks and markets of the Applicant and Opponent.  It is not necessary to summarise those arguments here.

Discussion of grounds of opposition

Section 44

18.   Section 44(2) relevantly provides:

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

19. In its SGP, the Opponent nominates the Opponent’s Mark, detailed at [8] above, as the basis for this ground of opposition.

20.   To succeed on this ground, the Opponent must establish that:

·     the Opponent’s Mark has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’);

·     the Applicant’s Services are similar to the Opponent’s Services (‘the second requirement’); and

·     the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark (‘the third requirement’).

21.   The first requirement is satisfied in that the Opponent’s Registration has an earlier priority date than the Relevant Date and is held in a name other than the Applicant.

22.   I now turn to a consideration of whether the Applicant’s Services are similar to the Opponent’s Services and note that s 14(2) provides that services are similar to other services if they are the same or of the same description. 

23.   The test for whether two sets of services are similar is essentially the same as that applied for goods of the same description[7] in that I must consider the nature or characteristics of the services, whether the services are used for the same or similar purpose and the trade channels through which the services are provided.[8] 

[7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (Kitto J); Re J Lyons & Co Ltd’s Application [1959] RPC 120, [28] (CA UK).

[8] MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] 90 FCR 236 (Burchett, Sackville and Lehane JJ).

24.   In determining whether services are of the same description, the Full Court in Accor Australia and New Zealand Hospitality Pty Ltd v Liv Pty Ltd[9] enunciated a number of factors to be considered including:

[9] (2017) 345 ALR 205 (Greenwood, Besanko and Katzmann JJ).

·the inherent character of each of the services for which the trade mark is registered.

·to whom are the services offered?

·how are they provided?

·how are they used?

·what is their purpose?

·are they bundled together with other services?

·are they differentiated by the functional level at which they are provided: wholesale or retail?

·where do they originate?

·what is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?

·how closely contestable are the services in substance: are they in the same market or trade?

·how might consumers of the services perceive the services:  see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71]‑[73].[10]

[10] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 345 ALR 205.

25.   In the present case, the Applicant’s Services are wagering services whereas the Opponent’s Services are the organisation of sporting events and competitions.  Wagering services and sporting competitions serve different primary purposes and target different aspects of consumer interest. Wagering services are focused on getting consumers to bet on uncertain outcomes in order to have the chance to win money based on luck or skill.  The organisation of sporting events and competitions involves planning, managing and facilitating participation in sport.  The Opponent’s Services are intended to promote participation in sport and the enjoyment of sport, a healthy lifestyle and competition which fosters positive attributes such as discipline, teamwork, communication, resilience.  The Applicant’s Services and Opponent’s Services are opposites in their nature and purpose. 

26.   Further, in Australia, the provision of wagering services is heavily regulated.  Whilst the Applicant’s Services include sports betting on the outcome or aspects of a sporting event of competition, consumers would understand that the sports betting services and sporting competition are not provided by the same entities and have different trade origins.    

27.   A degree of overlap in the class of consumers to whom the Applicant’s Services and Opponent’s Services are targeted does not make the services similar.[11]  A great many services of a diverse nature are probably directed to the adult male population but this alone is not sufficient to support a finding that two sets of services are similar.

[11] M Davison and I Horak Shanahan’s Australian Law of Trade Marks and Passing Off 7^th edition online, 2022, Thomson Reuters, [35.1005].

28.   Similarly, it is not sufficient that both the Applicant’s Services and Opponent’s Services may both a connection to sport.  There are various examples of two sets of goods or services relating to sports that have not been found to be closely related such as sporting equipment and clothing (including sports clothing)[12] and sporting and recreation services and magazines, books and informational brochures relating to sports.[13]

[12] General Sportcraft Company Ltd v Sportscraft Consolidated Pty Ltd [1993] ATMO 14 (Delegate I. Forno).

[13] Natural Supplementary Assn Inc v Body For Life International Pty Ltd (2004) 59 IPR 634; [2004] ATMO 13 (Delegate J. McDonagh).

29.   On the evidence before me, I am not satisfied that the Applicant’s Services and Opponent’s Services are similar.  Accordingly, the second requirement is not satisfied and the s 44 ground of opposition is unsuccessful.

Section 60

1. Section 60 is reproduced below:

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

   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.

   31.   To establish a ground of opposition under s 60, an opponent must first demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market and secondly that as a result of that reputation, use of the trade mark would be likely to deceive or cause confusion    

   Reputation

   32.   Justice Kenny considered the meaning of ‘reputation’ in McCormick & Co Inc v McCormick (‘McCormick’) and based on the Macquarie Dictionary definition, his Honour concluded it refers to ‘the recognition of the [trade mark] by the public generally.’[14]  This means the reputation must be amongst a ‘significant or substantial’ number of Australian consumers, tempered by the nature of the relevant market.[15]   In the present case, the relevant market is large being all spectators and participants in sporting events and competitions.

   [14] [2000] FCA 1335, [81] (‘McCormick’).

   [15] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   33.   The Opponent must establish the ‘existence and extent of reputation’ as a matter of fact.[16]  In terms of establishing reputation, in Rodney Jane Racing Pty Ltd v Monster Energy Company, O’Bryan J observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally...[17] 

   [16] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [77] (Lockhart J).

   [17] [2019] FCA 923, [83],

   34.   In its SGP, the Opponent particularises this ground as set out below:

   • We have forged a National reputation for organising and operating Touch Rugby League (TRL) and our trademark has been pivotal in helping us build our brand and business. We have invested heavily in the development of this brand which is anchored by the trademark registration.

   • The trademark is used on all apparel, all marketing/advertising material, all administrative and written documentation.

   • We have run competitions ourselves and also franchised TRL across the following cities: Cairns, Townsville, Mackay, Rockhampton, Sunshine Coast, Greater Brisbane, Ipswich, Redlands, Logan, Toowoomba, Gold Coast, Newcastle, Sydney, Canberra, and Melbourne.

   • We estimate that in the course of the last 16 years since our launch in 2005, up to 500,000 people have been customers of our entire network.

   • There are at least 20 separate businesses which either rely directly or indirectly on the value and reputation driven by our trademark.

   • More information and evidence can be made available on request.

   35.   It is not entirely clear whether the Opponent asserts a reputation in the Opponent’s Mark and/or the mark TRL solus.  The SGP should clearly outline the case which an applicant has to answer by specifying the relevant Trade Mark/s.  In the Opponent’s SGP, the references to ‘our trade mark’ appear to be a reference to the Opponent’s Mark detailed at the commencement of the SGP but many of the examples of use in evidence show both the Opponent’s Mark and TRL.  The Opponent’s Mark and TRL are to be considered as separate marks for the purposes of s 60.[18]   As such even if the evidence establishes that the Opponent had a reputation in the Opponent’s Mark at the Relevant Date, it does not automatically follow that a reputation also exists for TRL.  Accordingly, I consider it appropriate to determine whether the Opponent had a reputation in the Opponent’s Mark at the Relevant Date and if so, given that reputation, whether use of the Trade Mark is likely to deceive or cause confusion. 

   [18] Qantas Airways Ltd v Edwards [2016] FCA 729, [160] (Yates J).

   36.   The Opponent’s Mark has been used in Australia for well over a decade before the Relevant Date which is a considerable period of time.  From 2005 to 2021 (which is after the Relevant Date), the Opponent claims ‘up to 500,000 people have been customers of our entire network’ which equates to an average of just over 30,000 people annually.  In the scheme of the number of people participating in sports throughout Australia, this is not a substantial number of Australians.  Whilst the Opponent’s Mark may have been exposed to a broader audience who were spectators at its competitions, no details are provided about the number of competitions held or approximate spectators as such events.  Further, there are no details of the number of teams or games in each competition.

   37.   Few details are provided about how the Opponent advertises its services offered under the Opponent’s Mark.  Whilst the Opponent has three domain names and claims its websites receive significant online traffic and page views, no supporting figures or details are provided in support of this claim.  The Opponent’s followings on social media are modest given the length of time that the Opponent has been operating and in view of the size of the relevant market.  Moreover, the Opponent’s advertising expenditure is not considerable given the length of time the Opponent’s Mark has been used and other than social media, the Opponent’s websites and a fee to Darren Lockyer (who was engaged about a year before the Relevant Date), there are no specifics on any other promotion undertaken.

   38.    On my assessment of the Opponent’s evidence, I cannot be satisfied that the Opponent had a reputation in the Opponent’s Mark at the Relevant Date.  Further, even if I was satisfied that the Opponent’s Mark had a reputation, that reputation would be limited to touch rugby league and I do not believe that use of the Trade Mark for wagering services would be likely to deceive or cause confusion given the overall difference in the marks and services.  The misdirection of email enquiries is a result of the email address/domain trl.com.au and not due to use of the Trade Mark. 

   39.   The s 60 ground of opposition is unsuccessful.

   Decision

   40.   I have found that the Opponent has failed to establish a ground of opposition.  Accordingly, trade mark application 2114349 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the Application should be in accordance with the Court’s order or direction.

   41. In its Notice of Intention to Defend, the Applicant has requested an award of costs. Costs generally follow the event and therefore, I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Tracey Berger

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   19 August 2024