Marvel Characters Inc v Charles
[2011] ATMO 92
•14 September 2011
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 appearDecision: 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 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.
The photographs show pictures of mainly denim shorts, both men’s and ladies’, bearing the words ‘Ghost Rider’ embroidered or impressed onto the legs and pockets of the garments. Some of the shorts also have the letters GR embroidered onto them. The words ‘Ghost Rider’ appear on internal labels on the garments and on swing tags which are also shown in the photographs. Two pairs of shorts, which I infer are ladies shorts, have the words as well as the image of a figure riding a motorcycle embroidered on the front left leg at pocket level.
In the Opponent’s evidence in reply Fiona Brittain attests to causing an investigation to be carried out in relation to the Applicant’s business,[3] which revealed that he is also the owner of the business name ‘Urban Soldier’ and that he operated at the time from a shop at Eagleby in Queensland.[4] The investigator ascertained that one of the Applicant’s businesses was indeed operating from a store devoid of identifying signage at the Eagleby shopping centre. The shop offered for sale clothing bearing a number of different brands. Among the products for sale were items of clothing bearing the brands ‘Spiderman’ and ‘Marvel Super Heroes’, both of which Ms Brittain says are world-famous trade marks and characters owned by the Opponent. Some of the other brands offered at the site are, Ms Brittain says, also well-known brands associated with other traders or performers. Also available were items of clothing bearing the brand ‘Ghost Rider’.
[3] The Applicant’s statutory declaration describes himself as owner of “Suave Enterprises”.
[4] Exhibit FMB-2.
Ms Brittain exhibited photographs of the items of clothing and their labels which the investigator had purchased from the Applicant’s retail store. Many of the photographs of the ‘Ghost Rider’ clothing which Ms Brittain has exhibited are the same or similar to those depictions already provided by the Applicant and that show the words and embroidery which I have described earlier. However Ms Brittain provides, at Exhibit FMB-7, a photograph which is a significant omission from the Applicant’s photographs. This is the image of a swing tag from the men’s shorts which the investigator had purchased from the Applicant’s store. This swing tag includes the words ‘Ghost Rider Jeans’ and the image of a motorcyclist with a flaming head riding a flaming motorcycle and wielding a flaming chain. Another swing tag for men’s shorts, provided at Exhibit FMB-8, includes the words ‘Ghost Rider’ depicted in upper case sloping letters, all of which have flames streaming from them. This specific script, Ms Brittain says, is the exact script which the Opponent has used on its movie posters, an image of which is also shown in the Exhibit.
Ms Brittain states that she has conducted an Australian Trade Marks Office proprietor name search for the Applicant which has revealed that he has applied for a number of trade marks which are arguably owned by other parties. These trade marks include the well-known ‘Red Bull’ logo; ‘army of one’ (the name of the 39th episode of the popular television series ‘The Sopranos’) and ‘Beat Down’ (the name of a movie about a street fighter which was released in 2010).
Discussion and reasons
The Applicant provided brief written submissions for the hearing as he did not intend to appear in person. He noted in these submissions that the filing date for his application was 12 May 2009 and that the Opponent has a later filed registration for the words GHOST RIDER in classes 9, 16, 28 and 41.[5]
[5] Trade mark registration number 1331297
The Applicant’s main submission is that he liked the name ‘Ghost Rider’ and this liking was his reason for applying for the trade mark. Rather than making a reference to the Opponent’s character, he said, he was aiming at a market ‘more along the lines of the Swedish ghost rider’.[6] He maintained that he searched IP Australia’s ATMOSS database and as there was no registration for the words, he applied for the trade mark. He specified that his market for clothing is adult wear and, as he considers that the Marvel characters are aimed at children via cartoons, the market is not the same. He contended that Marvel Comics may own the trade mark GHOST RIDER in other countries, but it does not own it in Australia. He noted that according to the Opponent’s lawyers GHOST RIDER has been in the market since 1972, a total of 39 years, during which time the Opponent has not registered it as a trade mark.
[6] This is apparently a reference to a YouTube video clip which involves a person using the same name. I understand the character to be a motorcycle rider whose main claim to fame is not being caught by authorities when he exceeds the speed limit by a significant amount.
The fact that the Applicant simply ‘liked’ the name ‘Ghost Rider’ is also noted in his declaration filed as evidence in support. He said in both the declaration and in his written submissions that he does not wish to use the Opponent’s ‘Ghost Rider’ character. He submitted that there was no bad faith in his application because he was applying for something which he simply liked, not in an effort to take advantage of a well-known cartoon character.
The Opponent has raised the matter of the application having been made in bad faith contrary to s 62A of the Act, and it is convenient to begin my consideration of this matter with this ground.
Section 62A – Application made in bad faith
Section 62A was added to the Act via the Trade Marks Amendment Act 2006 which came into force on 23 October 2006. This section provides that registration may be opposed on the grounds that the application was made in bad faith.
The Act provides no guidance as to the meaning of the term ‘bad faith’. Some examples of conduct that may constitute bad faith as envisaged under section 62A were set out in the Explanatory Memorandum[7] as follows:
· persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
· persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
· persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
[7] Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth)
These examples are not exhaustive. In the HARDCOFFEE decision,[8] the Registrar’s Delegate decided that, in a case where an applicant claims that the application was made as a result of its own ignorance or naivety rather than in bad faith, the relevant test for bad faith should be whether “the ‘reasonable man’ standing in the shoes of the applicant should be aware that he ought not to apply for the registration of the trade mark”.
[8] Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26
Similarly, in the United Kingdom decision of Harrison v Teton Valley Trading Company, Sir William Aldous held:[9]:
The words “bad faith” suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However, the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as bad faith by persons adopting proper standards.
[9] [2005] FSR 10 [at 26]
There is a further relevant comment from Harrison’s case at [33]:
The words “bad faith” are not apt for definition. They have to be applied to the relevant facts of each case. The test is the combined test[10] and the standard must be that of acceptable commercial behaviour observed by reasonable and experienced persons in the particular commercial area being examined. I stress “acceptable commercial behaviour” to exclude behaviour that may have become prevalent, but which would not upon examination be deemed to be acceptable.
[10] The ‘combined test’ as defined in the Harrison case is the combination of ‘an objective test and a subjective test, and which requires that before there can be a finding of dishonesty it must be established that the defendant’s conduct was dishonest by the ordinary standards of reasonable and honest people and that he himself realised that by those standards his conduct was dishonest’.
The Applicant in this instance has chosen a name which he said he chose simply because he liked it and he denies any intention to trade off the Opponent’s claimed reputation in the GHOST RIDER trade mark. However, the Applicant’s claims ring a little hollow when the contents of Exhibit FMB-7 and FMB-8 are considered. It is clear from these exhibits that the Applicant is quite prepared to use indicia specific to the Opponent’s ‘Ghost Rider’ character and apply them to his goods. If, as the Applicant has said, he has no interest in trading off the renown of the Opponent’s comic book and movie character, one wonders why he would specifically use these indicia.
Under these circumstances, and given the Applicant’s history of applying for trade marks which he arguably does not own nor apparently have permission to use (as well as his practice of selling goods in his shops bearing same)[11] the only available inference is that the application was not made in good faith. The evidence which the Opponent has provided in respect of the Applicant’s other trade mark applications and registrations, in conjunction with the evidence of the clothing brands available for sale in the Applicant’s shop, is sufficient for me to be satisfied that this application is an example of the Applicant’s standard pattern of behaviour, a pattern which leaves much to be desired as far as commercial fair dealing is concerned. Despite the Applicant’s protestations to the contrary, I am satisfied that the present application was made in bad faith, and thus the Opponent succeeds in establishing this ground of opposition.
[11] Exhibit FMB-9 and paragraphs 11 and 13 of this 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 Windsor
Hearing Officer
Trade Marks and Designs Hearings
14 September 2011
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