Marvel Characters Inc v Charles - [2011] ATMO 92

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Marvel Characters Inc to registration of trade mark application 1298683(25) - ghost rider - filed in the name of Gary Charles.

Delegate: Alison Windsor

Representation: Opponent: Stephen Rebikoff of Counsel instructed by Davies Collison Cave Patent And Trade Mark Attorneys
Applicant: did not appear

Decision: 2011 ATMO 92
S52 opposition: opposition established under section 62A – application refused – costs awarded against applicant.
Background

On 12 May 2009 Gary Charles (‘the Applicant’) filed an application to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’). The trade mark applied for is the words ghost rider (in lower case) and the application claims the following goods in class 25:
Apparel (clothing, footwear, headgear); athletic clothing; beach clothing; belts (clothing); boys' clothing; casual clothing; children's clothing; clothing; clothing for sports; clothing of leather; denims (clothing); girl’s (sic) clothing; gloves (clothing); hoods (clothing); jackets (clothing); jerseys (clothing); ladies clothing; leather belts (clothing); men's clothing; motorcyclists' clothing (other than for protection against accident or injury); motorists' clothing; sports clothing (other than golf gloves); thongs (clothing); women's clothing
Following examination, the application was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks dated 10 September 2009.
Marvel Characters Inc (‘the Opponent’) filed notice of opposition (‘the Notice’) on 10 December 2009. The parties filed evidence in support, in answer and in reply as provided for by the Trade Mark Regulations 1995 (‘the Regulations’). The Opponent then asked to be heard.
The matter came before me, as a delegate of the Registrar of Trade Marks, in Melbourne on 19 July 2011. The Opponent was represented by Stephen Rebikoff of Counsel, instructed by Davies Collision Cave Patent And Trade Mark Attorneys. The Applicant did not appear, but provided brief written submissions.
Grounds of opposition and onus
The Notice nominated grounds for opposition under sections 41, 42(b), 43, 58, 59, 60 and 62A of the Act. At the hearing the Opponent pursued only those grounds under sections 60, 42(b), 58 and 62A. The onus is on the Opponent to establish at least one of the grounds pursued on the balance of probabilities.[1] For completeness I find that the grounds not pursued at the hearing have not been established.
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 at [22] to [26]; Sports Warehouse Inc v Fry Consulting (2010) 87 IPR 300 at [36] to [39].
Evidence and submissions
The evidence provided in this matter consists of the following declarations:
Evidence in support
·    Carol G Pinkus, Director of Intellectual Property of Marvel Entertainment LLC, made 8 September 2010 with Exhibits
CP-1 to CP-6
Evidence in answer
·    Gary Charles made 10 December 2010
Evidence in reply
·    Fiona Brittain, Solicitor of Davies Collison Cave, made…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2011] ATMO 92
Decision Date: 14 September 2011

CaseChat Overview and Summary

Marvel Characters Inc. (the Opponent) opposed the registration of trade mark application number 1298683 by Gary Charles (the Applicant). The dispute concerned the Applicant's proposed trade mark, which he stated he chose simply because he liked the name "Ghost Rider" and found it was not trade marked. The Opponent, a well-known producer of comic books and related merchandise, argued that the Applicant's proposed mark was confusingly similar to its famous "Ghost Rider" character, which has been published and distributed in Australia and internationally since 1972. The decision was made by Alison Windsor, a Hearing Officer for Trade Marks and Designs Hearings.

The primary legal issue before the Hearing Officer was whether the Applicant's proposed trade mark should be refused registration on the grounds of opposition, specifically concerning the likelihood of confusion with the Opponent's well-established "Ghost Rider" character and associated trade marks. The Applicant's defence rested on the assertion that his products were not similar to the Opponent's character and that he had no intention of representing Marvel's "Ghost Rider."

The Hearing Officer found that the Opponent had established a ground for opposition. The evidence demonstrated that the "Ghost Rider" character, with its distinctive features such as a flaming skull and flaming motorcycle, had a long history of publication and extensive merchandising in Australia, including a major motion picture released in 2007. The Applicant's own declaration, while asserting no intention to represent the Marvel character, acknowledged liking the name and that his products were currently limited to shorts under the "Ghost Rider" label, with potential for future expansion. The Hearing Officer considered the Applicant's analogy to "Dove soap and Dove chocolate" to be unconvincing in the context of trade mark law, where the focus is on the potential for consumer confusion.

The Hearing Officer concluded that the Opponent had succeeded in its opposition. Consequently, the registration of trade mark application number 1298683 was refused. The Applicant was ordered to pay the Opponent's costs.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The evidence provided in this matter consists of the following declarations:Evidence in support· Carol G Pinkus, Director of Intellectual Property of Marvel Entertainment LLC, made 8 September 2010 with ExhibitsCP-1 to CP-6Evidence in answer· Gary Charles made 10 December 2010Evidence in reply· Fiona Brittain, Solicitor of Davies Collison Cave, made 11 March 2011 with Exhibits FMB-1 to FMB-10 The evidence shows that the Opponent has published comic books in Australia and overseas for many years. Carol Pinkus states that she has held her position with Marvel Entertainment LLC for 20 years and that the Opponent is a wholly-owned subsidiary of her company. She says that one of her company’s most famous characters is named ‘Ghost Rider’, a character which she describes as “a mystical motorcycle stunt rider with superhuman strength and power to control Hellfire”. She says that the character first appeared in comic books which were published in 1972 and which have been distributed internationally, including in Australia, since that time. The character has appeared in comic books alongside other Marvel characters as well in its own comic book stories. The evidence exhibits various Wikipedia® articles which give details about the character and the publications in which it has appeared. Also exhibited to the declaration are copies of the title pages from ‘Ghost Rider’ comic books, some of which date from as early as 1973 and are then dated up until 2007. The character is usually shown as having a flaming skull instead of a head and face; its motorcycle is also shown surrounded by flames and it is often shown wielding a flaming chain. Ms Pinkus states that the character appeared in a movie of the same name starring Nicholas Cage which was filmed in the Docklands studios in Melbourne (beginning some time in 2005) and released in 2007 for worldwide distribution. Promotional merchandise preceded and accompanied the release of the movie and included toy action figures, videos and DVDs, posters and t-shirts. Other ‘Ghost Rider’ merchandise available for sale in Australia prior to the Applicant’s filing date included footwear, sleepwear, underwear, games, bags, electronic goods and toys. The Applicant served and filed a very short Statutory Declaration accompanied by a number of photographs of the products that he states are provided for sale. Given the brevity of the document, I reproduce the complete wording here:[2]First I want to state that in no way is my self or my business trying to represent Marvel characters “GHOST RIDER”. We don’t use the flaming skull or the Harley. I just liked the name so I searched IP Australia and it was’nt (sic) trade marked so I applied. As you can see from the 22 photo’s (sic) I have enclosed of our products it is nothing like Marvel’s character. If Dove soap and Dove chocolate can co-exist, I think we can too. At the moment we are only doing shorts under the Ghost Rider label. That may change in the future. But I will undertake that we are not interested in, nor will use Marvel’s character “GHOST RIDER”. [2] The original declaration is hand written and all in upper case. In reproducing the wording I have not reproduced it exactly as it was written, but the words, punctuation and sense of the document remain.

Decision

Reasons for decision

As the Opponent has made out a ground of opposition, it is not necessary for me to consider the other grounds pursued at the hearing, though these and any other grounds may be considered if an appeal to the Federal Court was to ensue.Decision The Opponent has succeeded in its opposition to the registration of trade mark application number 1298683. I refuse to register the application.Costs Costs usually follow the event and I see no reason to depart from that practice. I award costs against the Applicant according to the Official scale.Alison WindsorHearing OfficerTrade Marks and Designs Hearings14 September 2011

Ratio Decidendi

Legal Principle Established

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Delegate:	Alison Windsor
Representation:	Opponent: Stephen Rebikoff of Counsel instructed by Davies Collison Cave Patent And Trade Mark Attorneys Applicant: did not appear
Decision:	2011 ATMO 92 S52 opposition: opposition established under section 62A – application refused – costs awarded against applicant.