Lucasfilm Ltd LLC v Stephen Muller
[2018] ATMO 13
•2 February 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Lucasfilm Ltd LLC to registration of trade mark application 1723562(32) - theforceawakens - in the name of Stephen Muller.
| Delegate: | M. Cooper |
| Representation: | Opponent: Written submissions from Shelston IP Applicant: Written submissions from Applicant |
| Decision: | 2018 ATMO 13 Opposition under s.52 of the Trade Marks Act 1995: s.43 considered – use of the opposed trade mark likely to deceive or cause confusion because of connotation - registration refused |
Background
This matter concerns an opposition by Lucasfilm Ltd. LLC (‘the Opponent’), under s 52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade mark detailed below in the name of Stephen Muller (‘the Applicant’):
Application Number: 1723562
Trade Mark: theforceawakens (‘the Trade Mark’)
Filing Date: 29 September 2015
Specification of Goods:
Class 32: Aerated beverages (non-alcoholic); Alcohol free beverages; Beverages consisting of a blend of fruit and vegetable juices; Beverages containing not more than 1.15% (by volume) of alcohol; Beverages made from fruit concentrates; Coconut milk (beverages); Edible essences for making beverages; Electrolyte replacement beverages for general and sports purposes; Essences for making beverages; Extracts of vegetables (beverages); Fruit beverages; Fruit concentrates for making beverages; Fruit juice beverages; Fruit juice beverages that contain multi vitamins; Fruit juice extracts (beverages or for making beverages); Fruit juice nectar (beverages or for making beverages); Fruit syrup (beverages or for making beverages); Grain based non-alcoholic beverages; Hop concentrates for use in the preparation of beverages; Hop essences for use in the preparation of beverages; Hop extracts for use in the preparation of beverages; Isotonic beverages; Low alcohol beverages containing not more than 1.15% (by volume) of alcohol; Malt based preparations for making beverages; Malt-containing beverages (beers); Malt-containing beverages (non-alcoholic, except beers); Mineral water (beverages); Non-alcoholic barley based beverages; Non-alcoholic beverages (except non-alcoholic beer); Non-alcoholic fruit juice beverages; Non-alcoholic honey-based beverages; Pastilles for effervescing beverages; Powders for effervescing beverages; Preparations for making beverages; Seltzers (beverages); Sherbets (beverages); Sorbets (beverages); Soya based beverages (not being dairy substitutes); Soya-based beverages, other than milk substitutes; Spring water (beverages), other than for medical purposes; Squashes (non-alcoholic beverages); Syrup for making beverages; Syrup powder for beverages; Syrups for beverages; Tisanes (non-medicated beverages and other than tea based); Tonic water (non-medicated beverages); Tropical fruit squash (beverages); Vegetable extracts (beverages); Vegetable juice concentrates (beverages); Vegetable juices (beverages); Waters (beverages); Whey beveragesThe Trade Mark was examined and advertised as accepted for possible registration on 25 February 2016 in the Australian Official Journal of Trade Marks.
On 22 April 2016, Lucasfilm Ltd. LLC (‘the Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark. On 20 May 2016, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds under sections 42, 43, 58, 59, 60 and 62A of the Act.
A Notice of Intention to Defend was received from the Applicant on 4 July 2016.
Evidence in Support of the opposition was filed on 14 October 2016 and, on 25 January 2017, the Applicant filed his Evidence in Answer.
The Opponent advised on 2 February 2017 that it would not be filing Evidence in Reply. Consequently, IP Australia wrote to the parties noting that it was now open to them to request a hearing. On 14 February 2017 the Opponent advised that it did not wish to request a hearing but intended to file written submissions.
On 7 April 2017 IP Australia wrote again to the parties noting that there had been no request for a hearing and the matter would be allocated in due course to a delegate of the Registrar of Trade Marks for decision on the written record. The parties were further advised that they had one month from the date of the letter to file any written submissions.
Submissions were filed by the Applicant on 7 May 2017 and from the Opponent on 8 May 2017.
No party requested a hearing and, as a delegate of the Registrar, I have proceeded to decide the matter on the filed material.
Evidence
The Evidence in Support filed by the Opponent consists of the declarations of:
· Charles J Steinberg, Vice President of Lucasfilm Ltd. LLC, made on 13 October 2016 with Annexures CJS-5[1] to CJS-16 (‘the Steinberg declaration’).
· Sean Francis McManis made on 14 October 2016 and accompanied by annexure SFM-1, being the statutory declaration of Viet-Chau (Veg) Tran submitted in respect of earlier Opposition proceedings (‘Tran declaration’).
[1] CJS-5 comprises an earlier Steinberg declaration, dated 16 February 2016, and its annexures CJS1-CJS4 relating to the previous Opposition filed by this Applicant in respect of the Opponent’s TM 1674815.
The Opponent’s submissions included a copy of the unpublished ATMO decision relating to the Applicant’s opposition to the Opponent’s trade mark application 1674815 ‘THE FORCE AWAKENS’ (‘the Prior Opposition’).[2]
[2] Stephen Muller v Lucasfilm Ltd LLC (Unreported ATMO decision, 10 November 2016).
The Evidence in Answer filed by the Applicant consists of correspondence, asserted to be a declaration, made on 25 January 2017.
The Opponent’s evidence
According to the Steinberg declaration, Lucasfilm Ltd LLC (‘Lucasfilm’) has been responsible for the ‘Star Wars’ franchise, including multiple films, several animated TV series, comic books, and associated merchandise for over 30 years. Relevantly, its trade mark registrations, ‘THE FORCE AWAKENS’, (TM nos. 1674815 and 1674816) are the same as the title of 7th film it has produced in the Star Wars series.
The film’s title was announced on 6 November 2014 and evidence was annexed of the widespread media and consumer interest, on social and print media, that followed. In particular, several annexed documents demonstrated the worldwide publicity in 2015, conducted as a prelude to the release of the film ‘The Force Awakens’, as well as the many retail and promotional events associated with it. For example, the ‘Force Friday’ worldwide retail event (the ‘unboxing’), which took place on 4 September 2015, started in Australia and over $2m in merchandise was sold by Australian retailers. It was described in reports as a ‘record-breaking retail event’. All these activities preceded the lodgement of the Trade Mark.
The ‘Licensing Product Bible’, also annexed to the Steinberg declaration, identifed Australian distributors of the Opponent’s merchandise.
Mr Steinberg declared that ‘it is common for major movie producing companies to widely merchandise and license the use of movie titles in relation to product. This leverages equity in the movie title’. He claimed that the Opponent and the Disney group (which acquired the Lucasfilm group of companies in December 2012) have a long history of merchandising movie titles and, ‘in my experience, they [consumers] also expect the movie title to be used in relation to authorised licensed product, which would extend to use in relation to the drinks described in the opposed Trade Mark Application No. 1723562.’
Mr Steinberg stated his belief that at 29 September 2015, ‘The Force Awakens’ was widely known in Australia as the name of the approaching Star Wars film release and was widely and strongly associated with Lucasfilm, such that any third party use of that name, or a near identical name such as “theforceawakens”, in relation to merchandise, including drinks, ‘would be likely to deceive or cause confusion if that name was not being used by Lucasfilm or an authorised licensee of Lucasfilm’s right[s].’
As mentioned earlier, the Steinberg declaration annexed a copy of an earlier declaration made by him relating to the Applicant’s unsuccessful Prior Opposition [3] That Steinberg declaration (Annexure CJS-5) stated that the Opponent (Lucasfilm) registered the words ‘The Force Awakens’ as a trade mark on 6 November 2014 in USA, the same day as the announcement of the film title, and noted that the Applicant registered the domain name ‘theforceawakens.com.au’ shortly after this on 11 November 2014. He also noted the revenue received and awards won by the movie (paragraphs 28-9).
[3] Stephen Muller v Lucasfilm Ltd. LLC (Unreported ATMO decision, 10 November 2016).
He alleged that the evidence and claims by the Applicant of his prior use of the trade mark are ‘likely fabricated’ , that there is ‘no substantiation of his claims regarding the incidence and use of the words ‘the force awakens’ and there has been no use as a trade mark or indeed at all’. He observed that the material provided by the Applicant indicated that he provides pageantry services and organises talent shows, but under different business names. He further noted the Applicant’s claims that he first used the words on 28 April 2013 in association with a “Kids and Teen Parade” however none of the material he provided supported these claims.
The Opponent’s investigations in this regard are outlined in the Tran declaration, as attached to the Declaration of Sean Francis McManis, the Opponent’s legal representative. Tran outlined the communications between the Applicant and Opponent regarding the dispute consequent to the Applicant’s registration of the domain name ‘theforceawakens.com.au’, soon after the announcement of the film’s title. This background, Tran claimed, established the Applicant’s awareness of the Opponent’s interest and claimed rights prior to the date of the Trade Mark filing on 29 September 2015.
Tran noted the Applicant’s websites promoted pageantry and the Miss Australia Model agency but, on the basis of her investigations, the claims of prior use of the trade mark were not substantiated. Tran concluded that there was nothing to identify any trade or intended trade or capacity to trade by the Applicant and considered that the application had been made in bad faith.
The Applicant’s Evidence
The Evidence in Answer supplied by the Applicant has been provided in the form of correspondence, with no annexures and containing a purported ‘declaration’. Various photographs, constituting the Applicant’s evidence, were copied into the text of the correspondence. No original documents or certified true copies were produced. Notwithstanding the unconventional nature of the Applicant’s production of the evidence, to which the Opponent made no objection, I am satisfied it complies with the requirements for filing declarations under the Trade Marks Regulations 1995 (r.21.17).
As noted above, the Applicant has applied to register the trade mark ‘theforceawakens’. In Evidence in Answer the Applicant observed that the Steinberg declaration did not demonstrate use of its trade mark “THE FORE AWAKENS” on a beverage. The Applicant included a blurred copy of an invoice from Officeworks, copies of photos of women in front of a poster, and a poster which he claimed evidenced his ‘enticement’ of entrants ‘to my Miss Australia and the Force awakens parade auditions.’ So far as can be determined from this material, there appears to be only one oblique reference to (or purported use of) the Trade Mark. That is, a line at the bottom of a copy of a poster that states “the Force awakens within”. He referred to the Tran declaration but did not address the allegations that he had fabricated his claims or altered the website. He maintained that the content of the photographs he has provided (of women in hats and T-shirts and water bottles labelled “Sydney 2000 Fashion expo”, a poster for the Expo and an article which refers to him as the photographer) demonstrated his trading capacity over the period 1996-2000 and his prior trade in beverages.
Submissions
Opponent
In its submissions, the Opponent’s legal representative attached a copy of the ATMO decision of 10th November 2016[4] refusing the Applicant’s opposition to registration of the Opponent’s trade mark no. 1674815, ‘THE FORCE AWAKENS’. The submission noted that the hearing officer was not satisfied that material filed by the Applicant was relevant and that it was not possible to determine if the one apparent use by the then opponent was use as a trade mark. Notwithstanding the receipts provided for hotel accommodation, advertising, and some promotional material, they did not support the opposition grounds, the sign did not appear on any material and the documentation provided was not relevant. The hearing officer was not satisfied that the opposition was established. The applicant’s (Lucasfilm’s) trade mark ‘THE FORCE AWAKENS’ was registered and costs were awarded against the opponent (the current Applicant).
[4] Stephen Muller v Lucasfilm Ltd. LLC (Unreported ATMO decision, 10 November 2016).
In relation to the opposition grounds in the current matter, the Opponent relied principally on s.62A. Referring to decisions in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[5] (‘Fry’) and DC Comics v Cheqout Pty Ltd[6] (‘DC Comics’) and Radio Corporation Pty Ltd v Disney[7] (‘the Mickey Mouse case’), the Opponent contended that the facts indicated a filing in bad faith. The success and history of the Star Wars franchise and the accompanying concept of ‘the Force’ was noted. It was submitted, among other things, that at the Trade Mark filing date of 29 September 2015, the imminent release of the movie ‘The Force Awakens’ was well-known and the subject of numerous comments in publicity and promotions. These included the high level of pre-release promotional material, including beverage cups bearing the trade mark, and activity and public interest. In particular, it was submitted that the filing of this application was at a time when a ‘reasonable and honest trader” would have known that the name ‘The Force Awakens’ was associated with and being used by the Opponent and would be widely licensed. It was further submitted that the ATMO decision[8] established that the Applicant’s claims as to his use of the Trade Mark were ‘entirely without foundation’.
[5] [2012] FCA 81 at 167
[6] [2013] FCA 478 at 63
[7] (1937) 57 CLR 448
[8] Stephen Muller v Lucasfilm Ltd. LLC (Unreported ATMO decision, 10 November 2016).
With regard to s.42(b) of the Act, the Opponent relied on the above submissions made in respect of s.62A, in claiming that the Applicant’s use of the Trade Mark would be contrary to ss.18 and 29 of Schedule 2 to the Competition and Consumer Act 2010.
It was further submitted, in relation to s.43, that the Opponent’s activities and pre-release publicity mean that any use of the Trade Mark is likely to deceive or cause confusion owing to a connotation conveyed by the name “theforceawakens”. That is, that it has a direct association with the Opponent’s film. Reference was made to the decision of Twentieth Century Fox Film Corporation v Durkan [2000] ATMO 5 (‘Braveheart’) in this regard.
In relation to the s.58 ground, the Opponent claimed ownership of the mark ‘the force awakens’ and that the Applicant has no ‘good faith’ intention to use the Trade Mark, which is necessarily implicit in any claim to authorship. It was also noted by the Opponent that, aside from a ‘brief assertion to the contrary’, there is no evidence that the Applicant has or ever will conduct any trade in beverages, ‘let alone the broad range for which the application has been filed.’ It was also claimed that the marks are substantially identical and the Opponent has used the mark in relation to its merchandise, including drinking cups. On these bases it was asserted that the Opponent is the true owner of the Trade Mark at the filing date of the application and the Applicant cannot claim ownership.
The submission also relied on s.59 and the evidence submitted as demonstrating that the Applicant had no genuine intention to use the Trade Mark.
In relation to s.60, it was submitted that the Opponent had a relevant reputation as at the filing date of the opposed application by virtue of its pre-release publicity and the public interest in the release of the film ‘The Force Awakens’. Relying on the same reasons as in the s.62A ground (above) it was claimed that, as a consequence of the Opponent’s reputation and consumer expectations that the use of the name ‘The Force Awakens’ would be licensed by the Opponent, the Applicant’s use of the trade mark was ‘clearly likely’ to deceive or cause confusion.
In summary, it was submitted that ‘theforceawakens’ is not a name that ‘would naturally occur to anyone in choosing a brand name under which to market beverages’ and that the Applicant had not demonstrated his ‘claimed interests in the name’. It was asserted that the only reason he chose to register the mark was to ‘take advantage of the publicity, interest and goodwill generated by the Opponent in respect of its Star Wars movie’ and, quoting Fry, that such conduct ‘would be regarded as in bad faith by persons adopting proper standards’. The Applicant had been on notice of the Opponent’s rights in the film title but he still proceeded with his application for registration of the Trade Mark. On this basis it was claimed that his filing of the Trade Mark ‘falls well short’ of standards of acceptable commercial behaviour observed by reasonable and experienced persons and therefore the filing was clearly in bad faith.
The Opponent sought costs.
Applicant
In his final submission the Applicant reiterated his previous claims. He again observed that the Opponent had demonstrated ‘neither any usage nor any intended usage of the words THE FORCE AWAKENS on any beverage product as claimed.’ He claimed that the photographs he supplied of event posters demonstrated ‘numerous exposures’ over the years and that a receipt he provided showed the date of manufacture of the poster which, he claimed, preceded the registration of his domain name ‘ He further claimed to have produced samples of vitamin C water[9] which he gave away as ‘freebees’ at his fashion event in Sydney on 11 March 2017. He expressed his reluctance to produce any further product until the opposition is resolved. He claimed however that this ‘proves’ his capacity to produce beverages in a commercial quantity to supply ‘the route and supermarket trade’. On the basis that this latter claim had not previously formed part of his evidence, and is not supported by any objective evidence, I attach very little weight to it.
[9] Production only of copies of photographs of models holding water bottles
He again selectively addressed the Tran assertions that there was no evidence to demonstrate his trade in the specified goods. He again referred to previous fashion events he held over 1996-2000, inserting copies of photographs and posters in the body of the submissions, which he claimed demonstrated ‘newspaper ads, articles, plus event merchandising images including t-shirts, caps, bottled water which was sold in cafes, milk bars and also Woolworths.’ He asserted that this showed his ‘prior trade in beverages and my capabilities’. He maintained that the Trade Mark was filed in good faith and claims he ‘cannot see how my beverages could infringe on a movie franchise in any shape or form.’
Grounds, onus and standard of proof
In respect of proceedings under section 52, the Opponent bears the onus of establishing one or more of the grounds of opposition and the standard of proof required is on the balance of probabilities.[10]
[10] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26]
The time at which a ground of opposition must be established is the date of filing of the application for registration[11]. In this case that date is 29 September 2015. As noted above, the Opposition grounds claimed in the SGP are those under sections 42, 43, 58, 59, 60 and 62A of the Act.
[11] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [595]
Consideration and Reasons
On the basis of the material and submissions before me I make the following initial findings:
·On 6 November 2014 the Opponent filed its application in the US for registration of the Trade Mark ‘THE FORCE AWAKENS’. The Australian application was filed on 16 February 2015.
·On 6 November 2014 the Opponent issued a worldwide announcement that ‘The Force Awakens’ would be the title of the 7th film in the ‘Star Wars’ series.
·There was significant worldwide publicity and comment in response to the announcement of the film’s title (Annexures CJS-2 and 3 as annexed to CJS-5).
·On 11 November 2014 the domain name ‘ was created and registered in the Applicant’s name.
·Throughout 2014 and 2015, the Opponent promoted the film ‘The Force Awakens’ worldwide, including licensing, merchandising and other promotional activities (Annexure CJS-4 as annexed to CJS-5).
·On 29 September 2015 the Applicant lodged his application for registration of the Trade Mark ‘theforceawakens’ in Class 32 - Beverages.
·Only one document produced by the Applicant in these proceedings contains the words similar to the Trade Mark. This is an uncertified copy of an undated poster containing the phrase ‘the Force awakens within’ on the last line of the poster.
·Other than his assertions, which are not supported by the material he produced, there is no evidence of the Applicant’s use or intended use of the Trade Mark.
The Opponent has relied primarily in its submissions on the ground of opposition in s.62A however, as outlined below, I have found that it has established the s.43 ground. Accordingly, it is unnecessary for me to address the other grounds claimed.
Ground of opposition under s 43
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.
It is therefore necessary to consider whether, as a consequence of a connotation conveyed by the words ‘theforceawakens’, that the Trade Mark, when used in relation to beverages (class 32), is likely to deceive or cause confusion.
Connotation
The meaning of ‘connotation’ was discussed by Gyles J in Pfizer Products Inc v Karam (‘Pfizer’)[12] when he commented:
‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks (TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc [2000] FCA 720; (2000) 100 FCR 358 at [43]; McCorquodale v Masterson at [25]–[26]).
[12] [2006] FCA 1663 at [53]
Any relevant connotation within the Trade Mark must be more than mere ‘allusion’ or ‘suggestion’[13].
[13] Aktion Zahnfreundlich v Suntory Limited (1998) 42 IPR 593 and Effem Foods P/L v Star-Kist Foods Inc (2000) 50 IPR 121
Further, for a mark to be rejected under s 43, there must be a ‘real tangible danger of deception or confusion’[14]. It is insufficient that exceptionally stupid or careless consumers might be confused[15].
[14] Registrar of Trade Marks v Woolworths [1999] FCAFC 1020 at 43 citing Kitto J in Southern Cross Refrigerating Co. v Toowoomba Foundry P/L 91 CLR 529 at [594-5]
[15] Scotch Whisky Association v De Witt [2007] FCA 1649 at 61
The Opponent submitted that, by virtue of its activities, pre-release publicity and the public interest, use of the Trade Mark by the Applicant would likely deceive or cause confusion because of the connotation conveyed by the mark, that is, that it has a direct association with the Opponent’s movie, ‘The Force Awakens’.
The Opponent relies on the Braveheart decision[16] in which the delegate found:
Since the release of the BRAVEHEART film, however, the word BRAVEHEART no longer remains unknown. On the undisputed evidence, BRAVEHEART now has significant currency as the name of one of the most successful films of late 1990s. That film has had exceptional critical and popular success and the publicity associated with its acclaim has also been exceptional. On this basis, I think it is very clear that the trade mark BRAVEHEART THE MUSICAL, dominated as it is by the word BRAVEHEART, will openly give rise to a connotation of the film BRAVEHEART. The remaining words -- THE MUSICAL -- do not detract from that connotation. On the contrary, it seems to me that the overall connotation likely to be imparted to a substantial portion of the Australian public by the trade mark BRAVEHEART THE MUSICAL is that the makers of the film BRAVEHEART are now presenting (by way of a musical production) or promoting (by way of T-shirts or caps) a musical version of the story previously unfolded in the film.
The test for deception or confusion is recently dealt with in the judgement of French J in Registrar of Trade Marks v Woolworths, [1999] FCAFC 1020; (1999) AIPC 91-499 at 39 …. In considering the phrase likely to deceive or cause confusion, his Honour says:
The use of the word "likely" in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a "real tangible danger of its occurring".
In my view a real and tangible danger of deception and confusion does attach to use of the trade mark BRAVEHEART THE MUSICAL, by Mr. Durkan, in respect of theatre musical productions and T-shirts and caps. Use of this sign, dominated as it is by the name BRAVEHEART, will connote the celebrated BRAVEHEART film and therefore give rise to expectations that the theatre musical productions and the T-shirts and caps are associated with the maker of the BRAVEHEART film.
[16] Twentieth Century Fox Film Corporation v Michael F Durkan [2000] ATMO 5 (19 January 2000)
The Opponent’s evidence established a high degree of public attention and comment consequent to the announcement of the film title, “The Force Awakens’, in November 2014. The material provided demonstrated a strong advertising and social media campaign, with very active commentary from around the globe (Annexures CJS-3 and 4 annexed to CJS-5), including on Facebook, Twitter and YouTube. These interactions also included significant commentary from Australia.
In addition, the material provided demonstrated several events and activities in Australia in May and September 2015 (before 29 September 2015) in which the Opponent’s film title was promoted and displayed. These included the so-called ‘Star Wars day’ on 4 May 2015 and the worldwide release of merchandise at the ‘Force Friday’ event in early September 2015 which commenced in Sydney, Australia.
Having regard to the Opponent’s evidence, I accept that the film (to adopt the particular wording from the Braveheart decision) ‘has had exceptional critical and popular success and the publicity associated with its acclaim has also been exceptional’.[17]
[17] Ibid.
On this basis I am satisfied that the Trade Mark ‘theforceawakens’, clearly connotes the film ‘The Force Awakens’. I do not consider that the lack of spacing between the words in the Trade Mark detracts from that connotation, the aural and written effect being virtually the same. Given the film’s worldwide reach, as demonstrated by the evidence, I accept that a substantial portion of the Australian public were aware of its title at the date of the filing of this Trade Mark and, it follows, that I am satisfied the use of the Trade Mark on the Applicant’s goods, (beverages), would connote an association with the Opponent’s film ‘The Force Awakens’.
Likely to deceive or cause confusion
The second element of s.43 requires that the use of the Trade Mark in relation to the particular goods “would be likely to deceive or cause confusion” due to the abovementioned connotation.
The meaning of the words ‘deceive’ and ‘cause confusion’ was discussed in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd[18]:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public …. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.
[18] (1979) RPC 410 at [423].
Similarly, as Rich J said in Radio Corp Pty Ltd v Disney[19]:
In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney.” The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney.” This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.
[19] (1937) 57 CLR 448 at [454] (the ‘Mickey Mouse case’).
As Latham CJ also remarked in the same case, the names Mickey Mouse and Minnie Mouse were “…so closely associated in the public mind with…. Walter E Disney and his activities, that the use of either the names or the figures in connection with any goods at once suggests that the goods are ‘in some way or other’ connected with… Disney.”[20]
[20] Op. cit. [453]
In McCorquodale v Masterson[21] the Court, allowing for the differences between ss.43 and 44, considered that French J’s discussion of the likelihood of deception or confusion in Registrar of Trade Marks v Woolworths Ltd[22] (‘Woolworths’) was pertinent to its consideration of s.43. As follows:
[21] [2004] FCA 1247 at 27 (McCorquodale)
[22] [1999] FCAFC 1020
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) [...] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question [...] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
54. Further, as French J also noted in Woolworths [23]
[23] [1999] FCAFC 1020 at [50]
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362 ; 1 ALR 443 at 450 :
… the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.
Prior to the date of filing the Trade Mark, the film title, ‘The Force Awakens’, had been announced and, as evidenced by the material filed by the Opponent, subsequently generated enormous worldwide comment and further publicity and promotion (see Annexures to CJS-5), including in Australia. The evidence also demonstrated the licensing and production of a significant amount of merchandise associated with the film (including beverage cups incorporating the film title), including to Australian entities.
At the date of the filing of the Trade Mark on 29 September 2015, on the basis of the significant prior publicity and notoriety associated with the announcement of the film title and the associated promotional and merchandising activities, I am satisfied that it can be inferred that a ‘significant sector’[24] of Australian consumers knew of (and had keenly anticipated) the new film and the announcement of its title.
[24] McCorquodale v Masterson [2004] FCA 1247 at 60
A demonstrated by the evidence, the range of merchandise in the Opponent’s Star Wars franchise included soft drinks and other beverages. Although the evidence before me did not demonstrate use of the film’s title on a drink, given its demonstrated use on beverage containers, I find that it is not an unlikely brand extension. Therefore, if registered, the use of the Trade Mark on beverages would be use on goods not different from the usual range of merchandise used to promote movies.
In summary, given the evidence of the broad range of goods already marketed by the Opponent and its licensees, and on the weight of the evidence discussed above as to the notoriety of the film, I consider that it might be readily inferred that use of the Trade Mark, ‘theforceawakens’, on the Applicant’s beverages, would give rise to a ‘real connection’ with the Opponent’s film, ‘The Force Awakens’ in the minds of the public. That is, it would ‘directly and immediately’[25] connote the film and give rise to a real likelihood that consumers may mistakenly consider that the beverages were in some way approved or licensed by the Opponent or had come from the same source. On this basis I am satisfied that the use of the Trade Mark in relation to the specified goods would be likely to deceive or cause confusion within the meaning of s.43 of the Act.
[25] Ibid.
It follows that, for the above reasons, I find that the Opponent has established the ground of opposition under section 43 of the Act.
Accordingly there is no requirement for me to consider the remaining grounds particularised in the SGP. In the event of an appeal to this decision, it will be open to the Opponent to additionally pursue those grounds and the others available under the Act.
Decision
Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, 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.
Subsection (3) does not apply to these proceedings. Accordingly, I refuse to register trade mark application 1723562.
Costs
The Opponent has requested its costs and I accordingly award costs against the Applicant at the scale set out in Schedule 8 to the Trade Mark Regulations 1995.
Mary-Ann Cooper
Hearing Officer
Oppositions and Hearings
2 February 2018
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