Major League Baseball Properties, Inc. v Spartan Sports Holdings Pty Ltd
[2014] ATMO 81
•9 September 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Major League Baseball Properties, Inc. to registration of trade mark application 1219315 (28) - TWINS - in the name of Spartan Sports Holdings Pty Ltd
| Delegate: | Michael Kirov |
| Representation: | Opponent: Relied on written submissions prepared by Spiro Pappas of Chrysiliou IP Applicant: Relied on written submissions prepared by Ashutosh Agarwal of Acorn Lawyers |
| Decision: | 2014 ATMO 81 Section 52 opposition: Grounds under ss 42(b), 44 and 60 pressed – trade marks not deceptively similar (s 44 ground not established) –insufficient reputation shown to establish use likely to be confusing, deceptive or misleading (s 42(b) and 60 grounds not established) – opposition unsuccessful. |
Background
This is an opposition brought by Major League Baseball Properties, Inc. (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Spartan Sports Holdings Pty Ltd (“the Applicant”):
Application Number: 1219315
Priority Date: 15 January 2008
Goods:Class 28: Sporting articles being boxing equipment
Trade Mark: TWINS (“the Opposed Mark”)
Acceptance of the application for registration was advertised on 22 April 2010. The Opponent filed its Notice of Opposition (“the Notice”) on 22 July 2010 and for their evidence the parties rely on the following Statutory Declarations:
Evidence in Support
▪ Michelle Gai Gorton made on 22 June 2011, with Annexure MGG-1 (“Gorton”)
▪ Lawrence William Greene made on 18 November 2011, with Exhibits A to V (“Greene”)
Evidence in Answer
▪ Kunal Sharma made on 24 August 2012, with Annexures A to L (“Sharma”)
▪ Ian Charles Davis made on 21 August 2012 (“Davis”)
Evidence in Reply
▪ Spiro Pappas made on 29 April 2013, with Annexures SP-1 to SP-4 (“Pappas”)
Kunal Sharma has been the sole Director of the Applicant since its incorporation on 16 November 2009. He is also sole Director of two related companies, Spartan Sporting Goods Pty Ltd (“SSG”), which was incorporated in 1999 and is a licensed user of the Opposed Mark, and Royce (Aust) Pty Ltd (“Royce”), which was incorporated in 2006 and which was the original owner of the opposed application before its assignment to the Applicant in December 2010. Mr Sharma refers collectively to the Opposed Mark, the TWINS Logo trade mark shown below (which is subject of the Applicant’s registration 1173138 in Class 28), and “other device and word trademarks that comprise or incorporate the characters T, W, I, N, S,”[1] as “Associated Trademarks”. He says that Royce “chose, invented and/or coined each of the Associated Trademarks…for boxing related sporting goods” and that the Applicant has been using the marks “since early 2007.”[2]
[1] It is not apparent why Mr Sharma refers to the word “twins” in this way and I confirm that nothing in this decision turns on any distinction between the word per se and “the characters T, W, I, N, S,”.
[2] As mentioned, the Applicant was not incorporated until November 2009 and Mr Sharma is presumably intending to refer to early use by Royce and/or SSG here since he elsewhere says it is these two companies which have used the relevant marks “continuously and regularly across Australia since early 2007.”
Mr Sharma says that boxing equipment “bearing the [Opposed Mark] and/or the Associated Trademarks” including gloves, pads and protectors, punching bags and even “complete boxing rings” (“the Boxing Goods”) has been sold “through wholesalers, retailers including sporting goods retailers [Woolworths, Big W, ALDI, K-Mart and Rebel Sport are identified], online, mobile salesmen, corporate promotions and the [Applicant’s] showroom at Warilla.” He goes on to describe the Applicant’s advertising and promotion of the Boxing Goods and says that, “So far, I have not come across any incident of any confusion between the [Opposed Mark] and the Opponent’s [trade marks].”
Lawrence William Greene does not say what connection he has with the Opponent nor, indeed, what his profession is or for whom he works. I note his “business address” is that of a well known firm of IP lawyers in New York and I accordingly assume he would be acting for the Opponent in a legal capacity. He provides details of the Opponent’s Australian and worldwide registrations for trade marks featuring the element TWINS and of their use for many years in connection with an American baseball team called the “Minnesota Twins” and the team’s associated licensed merchandise. The relationship between the Opponent and the teams making up the American Major League is explained on the Opponent’s website (< Major League Baseball Clubs formed [the Opponent] in 1966 as the Club's [sic] agent for marketing and trademark licensing and protection. Major League Baseball Properties is responsible for managing consumer licensing activities, developing national advertising campaigns, cultivating sponsorship opportunities with major consumer brands and corporations, growing the game and the business of baseball outside the United States and creating national marketing programs in conjunction with Clubs, broadcast rights-holders and national sponsors. [The Opponent] also operates a full-service video and audio production unit (Major League Baseball Productions), a publishing division and stock photo licensing agency, and manages logistics for the All-Star Game, the World Series and all other special events.
Mr Greene explains that:
This opposition is based upon (a) [the Opponent’s] senior trademark rights in Australia, namely, Australian Trademark Registration No. 554991 for the mark MINNESOTA TWINS & design, which registered on April 30, 1998 in Class 28 for “games and playthings including toys; sporting goods in this class”; and (b) the worldwide fame and, in particular, the fame in Australia of the TWINS club and the associated…TWINS Marks.[3]
[3] Mr Greene had earlier defined “TWINS Marks” as “the trademarks and service marks comprising the word TWINS alone and/or with other words and/or designs [as exhibited to the declaration] which are used to identify the goods and services associated with, relating to and/or promoting [the Opponent], the [MINNESOTA TWINS] Club and/or their affiliated and related entities.”
Mr Greene is obviously mistaken in referring to the Opponent’s registration “554991” which, although owned by the Opponent, covers goods in Class 18 and is not for a mark containing the element TWINS. Nevertheless the declaration by the Opponent’s Australian attorney Michelle Gorton exhibits details of the Opponent’s registration 554881 in Class 28 and I understand this to be the mark to which Mr Greene intended to refer. The registered mark in question, which underpins the Opponent’s s 44 ground, is shown below:
The matter was scheduled for hearing before me, as a delegate of the Registrar of Trade Marks, on 17 June 2014 in Sydney. However the Applicant’s attorneys advised via email on 3 June that neither they nor the Applicant would be attending and that it would rely on written submissions instead. The Opponent’s attorneys subsequently advised via email on 6 June that the Opponent had decided on the same course. Both parties’ attorneys accordingly filed their respective written submissions (prepared by Spiro Pappas in the Opponent’s case and by Ashutosh Agarwal in the Applicant’s case) and have asked that I decide the matter taking the submissions into account and based on the Notice and the evidence described above.
Grounds of Opposition and Onus
The Notice lists a number of specific grounds corresponding to various provisions of the Act. However, the Opponent’s submissions confirm that only the grounds in the Notice based on sections 42(b), 44 and 60 of the Act are pressed. These grounds are discussed below, where I have found it convenient firstly to consider ss 44 and 60 before turning to the ground based on s 42(b). I treat the remaining grounds listed in the Notice as abandoned.
I proceed on the basis that the Opponent bears the onus of establishing one or more of the grounds of opposition pressed at the hearing on the balance of probabilities.[4]
Discussion
[4] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599.
Section 44
The ground based on s 44 of the Act is indicated in the Notice as follows:
[The Opposed Mark] is substantially identical with or deceptively similar to a trade mark registered by another person or whose registration is being sought by another person, in respect of similar goods and/or closely related services and/or similar services and/or closely related goods and the [Priority Date] is not earlier than the priority date for the registration of the other trade mark. Accordingly, the registration of [the Opposed Mark] must be refused pursuant to the provisions of Section 44 of the Act.
There has been no honest concurrent use, prior continuous use, and no other circumstances exist justifying acceptance of the [Opposed Mark] for registration under sub-Section 44(3) or sub-Section 44(4) of the Act.
Only s 44(1) of the Act is relevant to the present matter and this is reproduced below:
Identical etc. trade marks
44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.(2) …
(3) …
(4) …
As mentioned, the Opponent relies on its registration 554881 for the mark MINNESOTA TWINS & device (“the Opponent’s Mark”, shown in paragraph 7 above), which covers “games and playthings including toys; sporting goods in this class” in Class 28 (“the Opponent’s Registration”), to underpin its s 44 ground. The registration bears the endorsement:
Registration gives no right to the exclusive use of the word MINNESOTA and the DEVICE OF A BASEBALL. The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.
I note the registration dates from 30 April 1991, well before the Priority Date, and well before the Applicant’s (or Royce’s) claimed first use of the Opposed Mark.
For the sake of completeness I mention that I do not consider the Opposed Mark to be “substantially identical” with the Opponent’s Mark, nor was this claimed by Mr Pappas.
To succeed under its s 44 ground, then, the Opponent must establish on the balance of probabilities that:
• the opposed application covers “similar goods”[5] to those covered by the Opponent’s Registration; and
• the Opposed Mark is “deceptively similar” to the Opponent’s Mark.
[5] As defined in s 14(1) of the Act, namely the same goods and/or goods of the same description.
In Registrar of Trade Marks v Woolworths Ltd[6] (“Woolworths”) French J (as he then was) noted that these two issues were not necessarily to be considered in isolation, stating at [40]: [7]
In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the registrar or a judge on appeal from the registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.
[6] (1999) 45 IPR 411.
[7] His Honour’s comments were made in the context of trade marks covering goods and services, but are relevant also in the context of marks covering similar goods.
That said, the Opponent’s Registration’s coverage of “sporting goods in [Class 28]” generally would obviously include the “Sporting articles being boxing equipment” claimed by the Applicant. The essential issue for determination is accordingly whether the Opposed Mark is deceptively similar to the Opponent’s Mark. This is the issue to which I now turn.
As Mr Pappas noted, s 10 of the Act provides that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”. Citing a number of well known and well accepted passages from judicial discussion on the issue of deceptive similarity generally, he highlighted that for comparison purposes the trade marks should not be looked at side by side, that the possibility of imperfect recollection of the Opponent’s Mark should be considered and that, in the familiar words of Parker J from Re Application by Pianotist Company Limited:[8]
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or rather you must refuse the registration in that case.
[8] (1906) 23 RPC 774 at 777; 1A IPR 379 at 380.
Mr Pappas also referred to Shanahan’s Australian Law of Trade Marks and Passing Off[9] (“Shanahan”) concerning the relevance to the comparison where marks share the same “idea” or where “the later trade mark incorporates the essential distinguishing or memorable feature of the earlier trade mark.” As Shanahan mentions, Wilfred Greene MR of the English Court of Appeal explained in Saville Perfumery Ltd v June Perfect Ltd[10] (“Saville”) that:
[In most cases]…traders who have to deal with a very large number of marks used in the trade in which they are interested, do not, in practice, and indeed cannot be expected to, carry in their heads the details of any particular mark, while the class of customer among the public which buys the goods does not interest itself in such details. In such cases the mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection. Such a feature is referred to sometimes as the distinguishing feature, sometimes as the essential feature, of the mark.
[9] Lawbook Co., 4th ed., at [30.1520] and [30.1525].
[10] (1939) 1B IPR 440; (1941) 58 RPC 147, at IPR 452-453; RPC 162.
I note Lord Radcliffe put it similarly in de Cordova v Vick Chemical Co[11] (“de Cordova”) in a passage quoted with approval by the Full Federal Court (Moore, Sackville and Emmett JJ) in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd[12] (“Crazy Ron’s”). As the Full Court put it:[13]
[84] Lord Radcliffe emphasised (at IPR 498–9; RPC 105–6) that the infringer had used one of the “essential features” of the registered trade marks:
They have not used the mark itself on the goods that they have sold, but a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features. The identification of an essential feature depends partly on the court’s own judgment and partly on the burden of the evidence that is placed before it. A trade mark is undoubtedly a visual device; but it is well-established law that the ascertainment of an essential feature is not to be by ocular test alone. Since words can form part, or indeed the whole, of a mark, it is impossible to exclude consideration of the sound or significance of those words. Thus it has long been accepted that, if a word forming part of a mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader, for confusion is likely to result … The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.
(Full Federal Court’s original emphasis, in italics, retained)
[11] (1951) 68 RPC 103; at RPC 106; 1B IPR 496 at IPR 499 (HL).
[12] (2004) 209 ALR 1; 61 IPR 212; [2004] FCAFC 196, at [84].
[13] Lord Radcliffe’s words were also quoted with approval by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961-1963) 109 CLR 407; (1961) 1B IPR 523, at CLR 415: IPR 529.
With that as background, Mr Pappas submitted:
The Opponent’s [Mark] consists of the word TWINS in large letters, in combination with the word MINNESOTA in smaller letters and the design of a ball.
The idea conveyed by the Opponent’s [Mark] is that of twins. This idea is clearly evident from the dominant nature of the word TWINS in the trade mark. The word TWINS is displayed in larger letters than the word MINNESOTA, the letters are thicker in size, the letters are in bold format and the word TWINS is written in a slanted manner. These factors all assist in clearly making the word TWINS the essential feature of the Opponent’s [Mark] In viewing the trade mark, it is the word TWINS which would likely strike one's eye. It is this that would most likely fix itself in the recollection of a person's mind.
The [Opposed Mark] simply consists of the word TWINS. Therefore, the idea conveyed by the [Opposed Mark] is that of twins, which is also the essential feature of the [Opposed Mark].
While the Opponent’s [Mark] also contains the word MINNESOTA, it is submitted that it is the word TWINS which one would come to remember the Opponent’s [Mark] by. There is a tendency in Australian sporting circles to refer to teams by their mascots/emblems rather than their geographical names. For example, rugby league teams such as the CANBERRA RAIDERS or Australian football teams such as the SYDNEY SWANS are usually referred to as the "RAIDERS" or "SWANS", rather than as CANBERRA and SYDNEY respectively. This is highlighted by the Opponent's TWINS trade marks, which are set out in Exhibit B to the Greene Declaration, and show in some instances use of the term TWINS without any reference to the term MINNESOTA. It is submitted that sports marketing departments in modem times prefer the emphasis on team mascots/emblems rather than geographical locations, as they can extend their supporter base. A supporter in Brisbane is unlikely to wish to support the SYDNEY SWANS, but where there is no emphasis on the word SYDNEY, there is a better likelihood that the supporter in Brisbane may take a liking to the SWANS. Accordingly, and given that the nature of the goods in question are sporting goods, persons viewing the reference to the term TWINS would most likely see it as somehow being associated with the MINNESOTA TWINS.
In regard to the word MINNESOTA, reference is made to the following three cases:
·in Starr Partners Pty Ltd v Dev Prem Pty Ltd (2007) 71 IPR 459 [“Starr Partners”], Lindgren, Emmet and Finkelstein JJ in finding that the STARR REALTY and star design trade mark infringed the registration for the STARR PARTNERS and star design trade mark, stated at page 463:
“While the word ‘Partners’ differs from ‘Realty’, the question is whether the two words would make such a lasting impression on the hypothetical reader’s mind that he or she would not be likely to be deceived or confused. We do not think they would do so”.
Their Honours were influenced by the non-distinctive nature of the words PARTNERS and REALTY;
·in Emilio Pucci Srl v The Shoe Corporation Pty Ltd [2003] ATMO 26 [“Pucci”], the Registrar's Delegate found under the old grounds of Section 60 of the Trade Marks Act that the trade mark PUCCI MADE IN ITALY and Design was deceptively similar to the trade mark EMILIO PUCCI. The Registrar’s Delegate stated in regard to the PUCCI MADE IN ITALY and Design trade mark that “The applicant who seeks to register the present mark is prepared to send its goods out marked, in essence, PUCCI". It is submitted that this is effectively an observation that the term PUCCI is the essential element of the trade mark, despite the additional presence of a geographic place name, ITALY, and a design element in the trade mark; and
·in NBA Properties, Inc. v Kris John Gaunt [1998] ATMO 67 [“NBA Properties”], the Deputy Registrar in finding that the RAPTOR PIZZA and dinosaur design trade mark was substantially identical to the TORONTO RAPTORS and dinosaur design trade mark, stated:
“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 ....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 be lightly 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.
It is submitted that the word MINNESOTA in the Opponent’s [Mark] should similarly be seen as not an element that stands out and is unlikely to be recollected, as it is descriptive. Even if one were to take the view that the word MINNESOTA adds to the idea conveyed by the Opponent’s [Mark] it would arguably only add to the idea of twins. Minnesota is a State in the United States, in which the cities of Minneapolis and St Paul are located. These cities are often referred to as the “Twin Cities”.
Similarly, the design of a ball in the Opponent’s [Mark] should also be seen as not an element that stands out and is unlikely to be recollected, as it is arguably descriptive of sporting goods. Although, if one were to take the view that the design of a ball is relevant for the purposes of comparison of trade marks, it should be noted that “sporting articles being boxing equipment” as covered by the Opposed Application, could include boxing speed balls.
In summary, in comparing the [Opposed Mark] to the Opponent’s [Mark] applying the doctrine of imperfect recollection, the [Opposed Mark] is deceptively similar to the Opponent’s [Mark]. The impression or recollection that will be carried away of the Opponent’s [Mark] is that of twins, so that the person who does not have the benefit of a side-by-side comparison of the two trade marks, will be deceived and confused when viewing the [Opposed Mark] which also conveys the idea of, and has the essential feature of, twins.
The present circumstances are similar to the case of Wayne Maurice Gibson & Jillian Louese Gibson v. Photodisc, Inc. [1998] ATMO 47 [“Photodisc”], where the Registrar's Delegate, in comparing the trade mark PHOTO-DISK THE CD ROM PHOTO ALBUM and Design and the trade mark PHOTODISC stated:
“I agree that the word PHOTO-DISK is the feature by which the opposed trade mark will be remembered and I am in no doubt that the close similarity between PHOTODISC, the opponent's trade mark, and PHOTO-DISK, the essential feature of the application trade mark, renders them deceptively similar”.
Applying the principles applied in that matter to these opposition proceedings, there should be a similar finding of deceptive similarity.
The essence of the Opponent’s case is, then, that the element TWINS is an “essential feature” of the Opponent’s Mark and that each of the additional elements MINNESOTA and the baseball device “should”, as Mr Pappas has put it, “be seen as not an element that stands out and is unlikely to be recollected”. Because the Opposed Mark consists entirely of the element TWINS the parties’ marks must accordingly be considered deceptively similar for the purposes of s 44(1) of the Act.
The Applicant’s submissions in response do not address this “essential feature” issue as such. Indeed, the submissions significantly misquote the actual s 44 ground raised in the Notice in terms which refer to an irrelevant, third party registration now irrevocably removed from the Register following its non-renewal in 2012.[14] After setting out the words of s 44(1) itself the submissions continue:
The Opponent’s [Mark] is registered in relation to Sporting Articles, namely boxing gloves and equipment. [sic] Despite the Opponent’s claims, the Opponent’s own evidence leaves no doubt that even if the Opponent has used the words [sic] “Twins”, such use was limited to Baseball the Major League Baseball club “Minnesota TWINS” [sic]. For argument’s sake, even if such use of the words [sic] “TWINS” is deemed to be the [sic] use as a trademark, it would still be in relation to using it in a very limited way.
[14] Removed registration 923062 Sport for Life in Class 41.
I confess to having significant difficulty in understanding this and other submissions made by the Applicant’s attorneys on the relevant s 44 issues as I see them. To start with, neither the Opposed Mark nor any of the registered marks of either party covers “Sporting Articles, namely boxing gloves and equipment”. Moreover, most of the specific submissions made seem to rely on the argument that the principal goods of interest to the parties, being sporting goods related to baseball in one case and to boxing in the other, are sufficiently different as to obviate the risk of confusion or deception amongst relevant consumers. As I have already noted, however, the Opponent’s Registration covers, inter alia, “sporting goods” in Class 28 without qualification and clearly this description implicitly includes “boxing equipment”. It is accordingly not in principle relevant as far as s 44(1) is concerned what activities the parties may be known for, or for what goods they may have used their respective trade marks in the past. Indeed the parties’ respective marks need not have been used at all. As Mason J put it in Berlei Hestia Industries Ltd v The Bali Company Inc:[15]
...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.
[15] (1973) 129 CLR 353 at 362.
That said, I return to the Opponent’s submission that the element TWINS should be regarded as an essential feature of the Opponent’s Mark and note Lord Radcliffe’s words from de Cordova quoted above, emphasized by the Full Federal Court in Crazy Ron’s, that “The identification of an essential feature depends partly on the court’s own judgment and partly on the burden of the evidence that is placed before it.” The Full Court went on to overturn the primary judge’s finding in that case that the words “CRAZY JOHN” were an essential feature of the mark shown below:[16]
(Referred to by the Full Court as “the 1995 mark”)
[16] Crazy Ron’s at [92] to [103].
In doing so, the Full Court made the following observations:
[92] The threshold factual question in the present case is whether, as the respondents argued, the primary judge erred in finding that the words “Crazy John” constituted an essential element of the 1995 mark for the purposes of undertaking the comparison implicitly required by s 120(1) of the TM Act.
[93] As the earlier discussion of the authorities shows, the concept of an “essential feature” of a registered trade mark is well-established, notwithstanding that the statutory language does not explicitly incorporate such a concept. Neither party suggested that the case should be decided without reference to the “essential feature” of the 1995 mark. It is, however, worth noting that the court’s duty is ultimately to the statutory language rather than to the complexities brought forth by many years of decisional authority…
[94] It is important to appreciate that the primary judge found that the words “Crazy John” formed an essential feature of the 1995 mark on the basis of an inspection of the mark itself. His Honour made the finding because of the prominence of the words and their reinforcement by the “deranged look” of the man sitting astride the globe. His Honour placed no reliance on any particular usage or understanding of the words “Crazy John” among consumers and traders in the mobile telephone market. The respondents did not suggest on the appeal that there was evidence of any such usage that should have been taken into account. Nor did they argue that the words “Crazy John” were so well-known that consumers generally should be taken to have become familiar with them in relation to mobile telephones.
[95] It is not essential in an infringement case for the proprietor alleging infringement to adduce evidence that individual consumers have seen the registered trade mark and taken away an “imperfect recollection” of it. Nonetheless, it is of some significance that there was no evidence (or at least none to which the court’s attention was directed) that any consumer had formed a particular impression of the 1995 mark by virtue of having seen it. … In short, there was no evidence that any particular consumer had seen the 1995 mark and thereby acquired an imperfect recollection of the 1995 mark itself, or of any particular feature of it.
[96] …
[97] …
[98] The primary judge concluded, in essence, that the “idea” of the 1995 mark, or the impression that would be created by it, is the phrase “Crazy John”. However, in our view, the idea or impression that an ordinary purchaser would take from the 1995 mark involves much more than that phrase. The dominant idea conveyed by the mark to a casual observer is of the fantasy cartoon character sitting astride the stylised globe. The point is perhaps illustrated by Mr Darrer’s description in his 12 November 1999 letter to the Trade Marks Office of the 1995 mark as:
… the trademark crazy john with graphics of a man atop a globe holding a mobile phone.
A prospective customer endeavouring to recall the 1995 mark is likely to describe it in similar terms.
[99] …
[100] We make two additional comments. First, although everything depends on the particular circumstances of the case, some caution needs to be exercised before characterising words in a complex composite registered trade mark as an “essential feature” of that mark in assessing the question of deceptive similarity. If such a characterisation is made too readily, it effectively converts a composite mark into something quite different. On the respondents’ approach in the present case, for example, there was no need for them to have registered the 1999 mark,[17] since in practice it conferred no greater protection than one of the “essential elements” of the 1995 mark.
[101] Second, we recognise that the authorities have said that the question of deceptive similarity is in the end a matter of impression…
[102] If it is necessary to identify a specific error in the approach of the primary judge, we think it lies in the failure to take into account the fact that the 1995 mark is a composite mark of which the words “Crazy John” are but one of several prominent elements. His Honour obviously appreciated, as he said, that the 1995 mark “is a composite mark with a number of features”. But, with respect, the judgment does not address the significance of that fact in deciding whether the words “Crazy John” constituted an essential feature of the 1995 mark. The additional features of the 1995 mark are significant points of dissimilarity from the allegedly infringing mark and need to be given due weight in determining the nature of a consumer’s “imperfect recollection” of the 1995 mark.
[103] The primary judge’s conclusion that the appellant’s mark was deceptively similar to the 1995 mark rested on the finding that the phrase “Crazy John” constituted an essential element of the 1995 mark. Since that finding cannot stand, it follows that the finding of deceptive similarity must also be set aside.
[17] Registration 803950 CRAZY JOHN’S (Stylised) in Classes 35 and 38.
Referring to the abovementioned observations of the Full Court, Yates J emphasised more recently in Optical 88 Limited v Optical 88 Pty Ltd (No 2) that:[18]
[110] Importantly the Full Court went on to caution (at [100]) against a too ready characterisation of words in a complex composite registered trade mark as an “essential feature” of that mark when assessing the question of deceptive similarity. The Full Court remarked that if such a characterisation is made incautiously it may effectively convert a composite mark into “something quite different”.
[111] At the end of the day the question of deceptive similarity is one to be resolved in a given case by judicial estimation based on the visual and aural impression created by each mark and on the likely effect to be produced by each mark on the minds of likely customers of the goods and services in the course of the ordinary conduct of affairs: Australian Woollen Mills[19] at 659.
[18] (2010) 89 IPR 457; 275 ALR 526, at [106] to [111].
[19] Australian Woollen Mills Limited v F.S. Walton and Company Limited (1937) 58 CLR 641.
In the present matter I have concluded that the element TWINS alone is not an essential feature of the Opponent’s Mark, albeit that one might so characterize the combined elements MINNESOTA TWINS. The name Minnesota would, I believe, be known to most Australian consumers as that of a geographical location in the United States, whether or not they were also aware that it was the name of a State. Indeed, according to the Columbia Gazetteer of the World Online[20] this is effectively the only geographical significance the name has[21] and I am unaware of its having any other meaning. Its presence thus significantly informs the impression that I believe consumers would have of the combined words “Minnesota Twins”. That impression in the context of sporting equipment, would, I think, be of a sporting team of that name based in Minnesota, whether or not the consumer had previously heard of such a team, or knew that the Minnesota cities of Minneapolis and Saint Paul were, as Mr Pappas submitted, “often referred to as the ‘Twin Cities’”.
[20] At © Columbia University Press.
[21] It also appears in the names “Minnesota City” (population around 250), “Minnesota River” and “Minnesota Lake”, all in the State of Minnesota, and the “Minnesota Glacier” in Antarctica.
The additional presence of the baseball device in the Opponent’s Mark and overall styling of the mark as a whole reinforce this impression. Indeed, on the face of it the baseball device indicates a connection with the game of baseball in particular and accordingly that the “Minnesota Twins” is likely to be a baseball team from Minnesota.
The Opponent’s Mark must of course be considered in its entirety and to my mind the individual distinctiveness or distinguishing character of the element TWINS is significantly modified by the elements MINNESOTA and the baseball device with which it is combined. Mr Pappas submitted that because well known Australian football teams were marketed and referred to by their mascot or emblem, such as “Swans” for the “Sydney Swans” AFL team, so too were the Minnesota Twins likely to be referred to simply as “Twins”. While there is insufficient evidence to allow me to conclude how consumers of sporting goods in Australia actually refer to the Minnesota Twins baseball team (assuming for the time being that a significant number of such consumers refers to the team at all), this is not relevant to my enquiry into deceptive similarity under s 44. As it was put many years ago in Clark v Sharp:[22]
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the effect of the respective wholes.
[22] (1898) 15 RPC 141 (at 146).
Bearing this in mind I do not find the cases referred to Mr Pappas in his above quoted submissions of particular assistance as far as the present comparison between the Opposed Mark and the Opponent’s Mark is concerned. Both Starr Partners and NBA Properties involved marks which shared not only words in common, but which also shared very similar devices. In neither Pucci nor Photodisc were the combination marks relied on by the earlier trade mark owners essentially different from the individual elements PUCCI or PHOTODISC featured in their respective marks. In the present matter, however, the Opposed Mark is wholly contained within the Opponent’s Mark, in which its individual identity is, as I have sought to explain, very much subsumed within the mark as a whole.
As mentioned earlier, Mr Sharma says in his declaration that the Applicant (or its predecessor in title) had been using its registered trade mark and “other device and word trademarks that comprise or incorporate the characters T, W, I, N, S…for boxing related sporting goods…since early 2007” and that, “So far [in 2012], I have not come across any incident of any confusion between the [Opposed Mark] and the Opponent’s [trade marks].” Mr Pappas countered that while the Applicant may be claiming use since 2007, its evidence did not actually document instances of that early use and he thus submitted absence of evidence of confusion from the Opponent should not be seen as determinative in this case. I confirm that I agree with Mr Pappas in this regard.
Nevertheless when I consider the parties’ marks as wholes and attempt to assess their likely effect or impression in the minds of relevant consumers I am not satisfied that deception or confusion amongst a significant number of people is likely. I do not on balance believe there is a real tangible danger of a number of persons being left in doubt or caused to wonder whether the parties’ goods provided under their respective trade marks come from the same source. Accordingly, my conclusion is that the Opposed Mark is not deceptively similar to the Opponent’s Mark. The s 44 ground of opposition is therefore not established.
Section 60
The ground based on s 60 is indicated in the Notice as follows:
Another trade mark had acquired a reputation in Australia before the [Priority Date] and because of the reputation of that other trade mark, the use of [the Opposed Mark] would be likely to deceive or cause confusion. Accordingly, the registration of [the Opposed Mark] must be refused pursuant to the provisions of Section 60 of the Act.
Section 60 of the Act is reproduced below:
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) 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.
Mr Pappas’ submissions identify, in addition to the Opponent’s Mark (discussed above in connection with the s 44 ground), some 32 other marks set out in Greene containing the elements MINNESOTA TWINS, TWINS and/or a baseball device (referred to collectively hereafter as “the Opponent’s TWIN Marks”) as the “other trade mark(s)” which the Opponent claims had the relevant reputation in Australia as at the Priority Date.
Use of these marks is described in Greene, who mentions the founding of the MINNESOTA TWINS baseball club in 1960 and details its history and star players in the American Major League and other U.S. based baseball competitions. He refers to “hundreds of licensees throughout the world”, including Australia, which are authorized to use the Opponent’s trade marks, including the Opponent’s TWIN Marks, for, inter alia, sporting goods related to baseball. However there is no evidence of any actual sales in Australia, nor of any advertising in this country for any goods bearing the Opponent’s TWIN Marks. Rather, Mr Greene merely mentions a single, arguably rather modest, figure for all retail sales throughout the world in the 13 years since 1994 and even then the figure given relates to any goods bearing the Opponent’s TWIN Marks whether sporting goods or not. Some reliance is put on the existence of the Opponent’s website on which the Opponent’s TWIN Marks can be seen in connection with the sale of a range of merchandise, although there is no indication of the number of Australians who may have purchased goods from, or indeed even visited, the site. The occasional television broadcasts in Australia of baseball games in which the Minnesota Twins team may have played are also mentioned, but it is difficult to assess what significance this might have as far as the reputation of the Opponent’s TWINS Marks is concerned. Moreover, a good deal of the information provided by Mr Greene aimed at establishing the reputation of the Opponent’s TWIN Marks in Australia relates to material or events which post-date the Priority Date and which are accordingly irrelevant as far as s 60 is concerned.
In summary I find it is not possible to ascertain the nature or extent of the reputation (if any) of the Opponent’s TWIN Marks in Australia as at the Priority Date based on the evidence before me.
To conclude, I am not satisfied the Opponent’s TWIN Marks enjoyed the kind of reputation contemplated by s 60 amongst a significant number of Australian consumers as at the Priority Date. Accordingly nor can I be satisfied that because of any such reputation use of the Opposed Mark for any of the goods claimed would be likely to deceive, or cause confusion amongst, a significant number of Australian consumers. The Opponent has accordingly not established its ground of opposition under s 60.
Section 42(b)
The ground based on s 42(b) is indicated in the Notice as follows:
Use of the [Opposed Mark] by the Applicant would be…contrary to law. Accordingly, the registration of the [Opposed Mark] must be refused pursuant to the provisions of Section 42 of the Act.
Section 42(b) of the Act is reproduced below:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) …
(b) its use would be contrary to law.
Mr Pappas submitted that use of the Opposed Mark would be contrary to law because it would constitute “misleading or deceptive conduct”, or conduct “likely to mislead or deceive”, contrary to s 18 of the Australian Consumer Law, being Schedule 2 of the Competition and Consumer Act 2010 (“the CCA”).
I firstly note that the Trade Practices Act 1974 (“the TPA”), which was in force at the Priority Date, is on the face of it the relevant Federal law rather than the CCA. (Although containing essentially identical consumer protection provisions the CCA, which replaced the TPA, only came into force as from 1 January 2011.) In this regard I note the words of Wilcox J in Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd:[23]
I think that [Counsel] is correct to say that the application of s 42(b) of the Act should be considered as at the priority date, although looking forward to prospective conduct after registration was effected.
[23] (2004) 59 IPR 343 at [47].
That said, s 18 of the CCA mentioned by Mr Pappas essentially corresponds to s 52 of the TPA. Insofar as relevant to the present matter, accordingly, s 52 of the TPA is reproduced below:
s 52 Misleading or deceptive conduct
(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
I am not satisfied that use of the Opposed Mark for the Applicant’s boxing equipment would amount to any of the offending conduct alleged by the Opponent, essentially for the same reasons discussed above in connection with s 60; that is, in light of the nature and extent of the reputation of the Opponent’s TWIN Marks in Australia established by the Opponent’s evidence and given the differences between the parties’ marks themselves.
I note too that, unlike s 60 of the Act, s 52 of the TPA is not concerned with behavior that “would be likely to deceive or cause confusion”. The relevant provisions of the TPA require a likelihood that Australian consumers be misled or deceived as to the true origin of the Applicant’s goods or their supposed connection to the Opponent, rather than mere confusion or simply being caused to wonder as is the case with s 60 of the Act.
There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct than is the case with trade marks likely to deceive or cause confusion under s 60. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd,[24] by way of example, Gibbs CJ noted with respect to s 52 of the TPA:
In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.
[24] (1982) 1A IPR 684 at 688.
I accordingly find that the Opponent has not established its ground under section 42(b) of the Act.
Decision
Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:
…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.
I have found the Opponent has not established any of the grounds it raised pursuant to ss 42(b), 44 and 60 of the Act. The trade mark application may accordingly proceed to registration one month from the date of this decision. 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.
Costs
Both parties requested an award of costs in their favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.
Michael Kirov
Hearing Officer
Trade Marks Hearings
9 September 2014
Key Legal Topics
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Intellectual Property
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Commercial Law
Legal Concepts
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Injunction
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Breach
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