Lucasfilm Entertainment Company Limited v BIODROID Entertainment, Lda
[2012] ATMO 77
•7 September 2012
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Lucasfilm Entertainment Company Limited to extension of protection of International Registration Designating Australia 1247070 – BIODROIDS - (Classes 9, 12, 28 and 41) filed in the name of BIODROID Entertainment, Lda
Delegate: Jock McDonagh Representation: Opponent: Amanda Caldwell of Spruson & Ferguson, Patent & Trade Mark Attorneys
Holder: Did not appearDecision: 2012 ATMO 77
Regulation 17A.29 opposition: grounds pressed under ss 41, 58, 58A59, 60, and 62A (pursuant to reg. 17A.28) – s 60 ground established - extension of protection to Australia refused – costs awarded against the HolderBackground
Application 1247070 BIODROID is an international registration designating Australia (“IRDA”). It was filed in the name of BIODROID Entertainment, Lda (“the Holder”) under the Madrid Protocol on 3 March 2008. Following its examination, IP Australia advertised its intention to extend protection to Australia on 17 July 2008.
Details of the IRDA are as follows:
Application Number: 1247070
International Number: 964081
Priority Date: 3 September 2007Goods and Services: Class 9: Apparatus for recording, transmitting and reproducing sound or images; magnetic recording media, data processing equipment and computers; games and games apparatus designed solely for use with television sets; computer-gaming software
Class 12: Vehicles; apparatus for locomotion by land, air or water
Class 28: Games, amusement game machines apart from those designed to be used solely with a television set and computer games but not designed solely for use with television sets; toys; articles for gymnastics and sports not included in other classes; decorations for Christmas trees
Class 41: Education; training; entertainment
(hereafter “the Goods and Services”)
Trade Mark: BIODROIDS
Lucasfilm Entertainment Company Limited (“the Opponent”), following the granting of an extension of time to oppose, filed Notice of Opposition (“the Notice”) to extension of protection of the IRDA to Australia on 16 January 2009 pursuant to reg. 17A.29 of the Regulations (“the Regulations”) under the Trade Marks Act 1995 (“the Act”).
The Opponent served and filed Evidence in Support as follows:
▪ Statutory Declaration by Martin Pollock made 18 April 2011, with Annexures A to L (“Pollock 1”)
▪ Statutory Declaration by Martin Pollock made 11 July 2011, with Annexure A (“Pollock 2”)No evidence was served by the Holder.
I heard the matter as delegate of the Registrar of Trade Marks on 18 June 2012 in Sydney. Amanda Caldwell of Spruson & Ferguson, Patent & Trade Mark Attorneys, appeared for the Opponent. The Holder was not represented at the hearing and had not provided any written submissions prior to the hearing.
Grounds of Opposition
While the Notice specified nine grounds corresponding to ss 41, 58, 58A59, 60, and 62A of the Act, Ms Caldwell confirmed prior to the hearing that the Opponent would only be pressing the grounds in the Notices based on ss 42(b), 43, 44, 59 and 60 of the Act. I treat the remaining grounds listed in the Notices as abandoned.
By virtue of Regulation 17A.34 of the Regulations, I am required to decide whether to refuse to extend protection or whether to extend protection in respect of some or all of the goods or services listed in the IRDA. In so doing, I propose to direct attention to Section 60 as affording the primary ground of opposition that was argued by Ms Caldwell in the making of her submissions.
Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia
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.
Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (2000) 51 IPR 102 by Kenny J at [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?
Further, at [86], Kenny J said:
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.
The Opponent has an IRDA, DROIDWORKS, with a Convention priority date of 22 May 1998 registered as Australian Trade mark number 771852. The Opponent’s evidence also establishes that the Opponent created – worldwide and in Australia - the trade mark DROID and developed numerous “DROID” characters that feature in each STAR WARS movie and its associated merchandising, dating back to the first movie in 1977. Apparently, DROID is a shortening of the word “android”, which is a robot designed to resemble a human being.
The Opponent’s evidence also demonstrates substantial gross box office sales in Australia and worldwide and (worldwide, including Australia) billions of dollars of licensed merchandise sold under various DROID trade marks.
According to Pollock 1, the Opponent created its DROID marks to denote its various robot characters in the STAR WARS franchise, and has been used extensively in that manner since 1977. The nature or purpose of each type of DROID is often conveyed by a descriptive additional word element such as “Astromech Droids” (such as the R2-D2 character), “Protocol Droids” (such as the C-3PO character), “Battle Droids”, to name just a few. Ms Caldwell submitted that the public has been educated over a long period of time to associate the DROID mark and DROID characters with the Opponent and its goods and services exclusively.
Ms Caldwell further submitted that as a result of the Opponent’s extensive, widespread and long standing use of its DROID trade mark and its family of DROID marks since 1977, the Opponent has acquired a substantial reputation for its DROID trade mark, whether on its own or in combined form, across a substantial and diverse range of goods and services. Indeed, it was submitted that the DROID trade mark has such an extensive reputation in Australia that it can be regarded as “famous” or “well known” in this country. My attention was drawn to the words of Hearing Officer Spence in CSL Limited v Capital Securitisation (Holdings) Pty Limited [2010] ATMO 42, at paragraph 26, which are equally applicable in relation to the consequences of use of the opposed mark:
…it is clear and unequivocal that the Opponent enjoys an extensive reputation in respect of its use of the acronym “CSL” such that the Opponent can lay claim to having an entitlement for that acronym to be regarded as a “famous” or “well-known” trade mark in Australia. The “CSL” mark is a household name and an icon or, if not, it must come close to being so. It follows unavoidably to my mind that in adopting or using its “CSL MONEY” trade marks and in endeavouring to obtain registration in respect of same the Applicant is likely to cause instances of deception or confusion to occur in the minds of a significant section of the Australian public who, on seeing the “CSL MONEY” trade marks of the Applicant would be led erroneously to presume that there exists some connection, association or relationship between those marks and the Applicant when such is not the situation.
I am satisfied that the Opponent’s DROID trade mark has acquired a substantial reputation throughout Australia in relation to goods or services the same, similar or closely related to those of the Opponent, and that this reputation would have been known to a significant number of Australians as at 3 September 2007.
I am satisfied that there is a significant likelihood of deception or confusion if the Holder were to use its BIODROID trade mark in connection with any of the goods or services covered by the IRDA. This is particularly likely as the major feature of the Holder’s mark is the Opponent’s DROID trade mark.
Accordingly, I find that the ground of opposition pursuant to Section 60 has been established.
Decision
Regulation 17A.34 provides:
17A.34 Decision on opposition
(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.
(2) The Registrar must tell the International Bureau of his or her decision.
In order for the Opponent to be successful, it is only necessary for one of the available grounds of opposition to be established by it. In this instance, I find that the Section 60 ground has been made out and I refuse protection in respect of all of the goods or services listed in the IRDA. That being so, I do not need to consider any of the remaining four grounds of opposition, and I make no formal determination or finding in relation to those grounds.
Costs
The Opponent sought its costs. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Holder as per Schedule 8 of the Regulations.
Jock McDonagh
Hearing Officer
Trade Marks Hearings
7 September 2012
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