SARAH MCCORQUODALE, RICHARD JOHN CAREW CHARTRES, THE DIANA, PRINCESS OF WALES MEMORIAL FUND v BONNIE MASTERSON V 675 of 2001
KENNY J 24 SEPTEMBER 2004 MELBOURNE
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
V 675 OF 2001
BETWEEN:
SARAH McCORQUODALE FIRST APPLICANT
RICHARD JOHN CAREW CHARTRES SECOND APPLICANT
THE DIANA, PRINCESS OF WALES MEMORIAL FUND THIRD APPLICANT
AND:
BONNIE MASTERSON RESPONDENT
JUDGE:
KENNY J
DATE OF ORDER:
24 SEPTEMBER 2004
WHERE MADE:
MELBOURNE
THE COURT ORDERS THAT:
1.Frances Shand Kydd, who is deceased, cease to be named as a party to the proceeding; and the proceeding be in the name of the remaining applicants.
2.The decision of the delegate of the Registrar of Trade Marks made on 31 May…
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
AGLC
McCorquodale v Masterson [2004] FCA 1247
Case
[2004] FCA 1247
Decision Date
CaseChat Overview and Summary
McCorquodale v Masterson is a case where the applicant sought to have the will of Princess Diana varied to allow certain trademark applications and licensing activities to occur, while the respondent opposed this application. The central legal issues involved whether the proposed trademarks would deceive or cause confusion and whether they would benefit charity rather than commercial organizations. The court examined whether the proposed marks carried connotations that would lead consumers to believe they were endorsed by the Estate or Memorial Fund of Princess Diana. The court found that the marks did not carry such connotations and thus could not be opposed on the grounds of deception or confusion.
The court's reasoning emphasized the importance of determining the rights of the parties as of the date of the application. It noted that the application should be accepted unless there were grounds for rejecting it. The court also highlighted that the Registrar's decision was not presumed to be correct but that weight would be given to the Registrar's opinion. Ultimately, the court found that the proposed trademarks did not carry connotations of endorsement by the Estate or Memorial Fund, and thus the application for registration should be refused. The respondent was ordered to pay the applicants' costs of and incidental to the proceeding.
Orders
Orders of the court
1. Frances Shand Kydd, who is deceased, cease to be named as a party to the proceeding; and the proceeding be in the name of the remaining applicants.
2. The decision of the delegate of the Registrar of Trade Marks made on 31 May 2001 be reversed.
3. The applicants’ opposition to the opposed trade mark be allowed.
4. The respondent’s application for registration be refused.
5. The respondent pay the applicants’ costs of and incidental to the proceeding.
Background
Background to the litigation
The respondent, who is apparently a resident of Tulsa, Oklahoma, in the United States of America, originally filed a notice of appearance that indicated that she was represented in these proceedings by a well-known firm of solicitors with offices in Melbourne. Prior to trial, however, these solicitors gave notice that they ceased to act on the respondent’s behalf. The respondent has not since retained lawyers to represent her in the proceedings. The applicants have served orders and other relevant documents on the respondent pursuant to orders for substituted service. The respondent did not appear at the trial; and the applicants were content to rely, for the most part, on their written submissions filed prior to trial. They also relied on the affidavits of Andrew Purkis sworn on 29 October 2002, the Hon. Lady Elizabeth Sarah Lavinia McCorquodale sworn on 19 November 2002, Tony Mitchell sworn on 20 December 2002, and Christopher John Round affirmed on 13 November 2003 and 24 November 2003, including the exhibits to these affidavits. The respondent filed no evidence or written submissions in answer to the applicants; and, of course, none of the applicant’s deponents were subject to cross-examination.factual background Since her marriage to His Royal Highness, the Prince of Wales, the late Diana Princess of Wales, has been a very widely known figure throughout the world. As a member of the Royal Family and spouse of the heir to the British Crown, she became one of the most famous and widely recognised individuals of modern times. Even from the time of her courtship and engagement, she was commonly referred to in the global media as “Diana”. Although the title “The Princess of Wales” was bestowed upon her at her marriage, the media continued to refer to the Princess as simply “Diana”. Following her divorce in July 1996, the Princess remained a member of the Royal Family with the official title “Diana, Princess of Wales”. Throughout her marriage, Princess Diana took on the patronage of a number of charitable causes and supported others as president or in some other capacity. At one stage, she supported over 100 charities in this way. She continued this charitable work after her divorce and, prior to her death, she was linked with a number of charitable causes, including the Landmine Survivors Network, The Leprosy Mission, the English National Ballet, The National Aids Trust, The Red Cross, various hospitals and the homeless. Prior to her involvement, some of these causes had been little known, but, following her involvement, they attained a very high public profile. Two such examples are the Landmine Survivors Network and the cause of homeless people. Following the death of the Princess in August 1997, there was an unprecedented outpouring of public grief, principally in the United Kingdom, but also in other countries. The Diana, Princess of Wales’ Memorial Fund was established shortly after her death, on 4 September 1997, with the object of perpetuating the Princess’ memory and to receive and distribute monies that were donated by members of the public. The Fund is regulated by a Declaration of Trust and is registered as a UK charity.
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
KENNY J
In making the application to have the will of the Princess varied in order to allow these trade mark applications and licensing activities to occur, the Estate had three major concerns. These concerns were to ensure that: (1) wherever possible, charity rather than commercial organisations benefited from the Princess’ memory; (2) consumers were not misled into purchasing products bearing her name which were not authorised by the Estate; and (3) in the words of the Lady Sarah McCorquodale, “her name [was] not besmirched by tasteless and inappropriate exploitation of her name and reputation”.the delegate’s decision Since the respondent did not appear at the hearing of the application in this Court, it may assist to summarise the delegate’s reasons for dismissing the opposition. Before the delegate, the Estate relied unsuccessfully on ss 41, 43, 55, 58 and 60 of the Act. At the hearing before the delegate, the opponents (who are the applicants in this Court) relied on the statutory declarations of Sebastian Matthew White Hughes dated 12 July 2000 and 8 March 2001, Andrew Charles Dobson dated 11 July 2000 and the Lady Sarah McCorquodale dated 12 July 2000. Ms Masterson relied on a statutory declaration of Lt Colonel Kenneth Grapes dated 6 February 2001. In considering the grounds of opposition, the delegate held that, in order to succeed on the s 43 ground, the opponents were required to show that there was a connotation in the proposed mark or in one of its parts; and because of this, the trade mark was likely, when in use, to deceive or cause confusion. Relying on TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc (2000) 100 FCR 358 (“TGI Friday’s”), the delegate observed that “the connotation must be in the mark itself and cannot be determined as the result of external considerations, such as reputation”: Masterson at 271. Following this analysis, the delegate held, at 272, that:There is no evidence to suggest that a person in Australia would necessarily associate roses, or the “Princess of Wales” rose in particular, with the Princess. Even so, I am reasonably satisfied that the overall impression of the mark, limited to live roses, is one that evokes a memory of Princess Diana. …Accordingly, I find that the trade mark does carry a connotation of the late Princess. The delegate referred to Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 (“Woolworths”) and distinguished Radio Corporation Pty Ltd v Disney (1937) 57 CLR 448 (“Radio Corporation v Disney”) and Sabrina Trade Mark (1959) 29 AOJP 1988 (“Sabrina Trade Mark”). The delegate observed, at 273: There is a complete lack of evidence of commercialisation of [the Princess’] name during her lifetime. This tends to confirm what I think is general knowledge, that members of the Royal Family do not allow their names to be commercialised. There is nothing in the evidence that satisfies me that the Estate or Memorial Fund changed this position, at least as it existed in Australia, before the priority date. …The opponents submitted that, in the present case, it is clear that the Estate of the Princess, as the exclusive owner of all intellectual property related to the Princess, had carried out large-scale licensing of intellectual property rights relating to Princess Diana through the Memorial Fund. However, neither the opponents nor the declarants have provided any basis for this assertion and I am not satisfied that their asserted exclusive right exists. Even if it does, the Estate would still need to establish that the mark itself incorporates a connotation that the product to which it is applied has some sponsorship or approval by the Estate or the Memorial Fund. Again, there is no evidence before me that indicates that any person in Australia would assume that the trade mark connoted such sponsorship or approval. The newspaper articles … merely show that an Australian reader might be aware that a Memorial Fund had been established, and that endorsed products might be available. However, this is not sufficient for me to find that the mark in question will give rise to a connotation of connection, sponsorship, approval or endorsement by the Estate or Memorial Fund … .…With regard to the internet searches, there is no indication that any of the searches identify sites which mention the Estate or Memorial Fund. Where sites do contain such references, … no details are provided of actual visits by Australians. It is not open to me to assume that a reasonable number of visitors to the site were Australians … . In relation to the books, there is no mention at all of any apparent connection to the Estate or Memorial Fund. The fact that there have been sales of authorised products in Australia is of no real assistance in the present case. The evidence indicates neither how nor whether these products were identified as “official”, nor what constitutes the “well known trade marks of the Princess”. Further, it is not apparent on the face of the evidence that any of the products were available in Australia, with or without an official endorsement, before the priority date.
Ratio Decidendi
Legal Principle Established
Established by:
KENNY J
Finally, the delegate rejected the opponents’ submissions concerning ss 41 and 55. In connection with s 41, the delegate held that the proposed mark had the requisite degree of inherent adaptation to distinguish. There was, so the delegate found, a sufficient amount of getup in the total mark and the phrase to ensure that other traders were not likely to desire to use it. The delegate held that s 55 could only be utilised where a ground had been made out and, as no ground had been made out, he had no discretion to refuse to register the trade mark. consideration In applications for registration of a trade mark, the rights of the parties are to be determined as at the date of the application: see Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 595 per Kitto J. The Registrar must accept the application unless satisfied that there are grounds for rejecting it: see s 33(1); also Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 56 per Branson J. In Woolworths at 376, French J discussed the nature of an appeal to this Court from a decision of the Registrar, observing at 376:The jurisdiction conferred upon this Court to entertain an appeal from the Registrar is of the same character as that formerly conferred upon the High Court under s 45 of the Trade Marks Act 1905 (UK) (the 1905 Act) and s 51 of the 1955 Act. Being an “appeal” from an administrative decision it is an exercise of the original jurisdiction of the Court: [Jafferjee v Scarlett (1937) 57 CLR 115]. Dixon J said of the jurisdiction of the High Court in that case (at 126):‘the nature of the jurisdiction under s 76 of the Constitution and the terms of the subsection alike show that the court is to determine judicially whether the application should succeed on the merits, and not whether an administrative officer has lawfully discharged his duties. Of course weight will be given to the registrar’s opinion as that of a skilled and experienced person.’…If there were any doubt the provisions of s 197 and its statutory antecedents authorising the Court to receive evidence and to examine and cross-examine witnesses, inter alia, make plain that in exercising its jurisdiction on appeal from the Registrar, it is to determine the question of acceptance of the application on its merits. In Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 … Branson J, while noting that neither the 1955 nor the 1995 Acts contain an equivalent to s 44(2) of the 1905 Act, said (at 59 …):‘Section 197 of the Act, like s 115A of the 1955 Act, discloses, in my view, a clear intention that the established practice of an appeal of this kind being conducted as a rehearing is to be maintained.’There is therefore no presumption in favour of the correctness of the Registrar’s decision save that weight will be given to the Registrar’s opinion as that of a skilled and experienced person. But the Court on appeal from the Registrar must, in determining the question of acceptance of the application, apply to it the same legal criteria that the Registrar is required to adopt. That is to say the application must be accepted unless the Court is satisfied that it has not been made in accordance with the Act or that there are grounds for rejecting it. If the matter is left in doubt, then the application should be accepted. That is consistent with the possibility, adverted to earlier, that after a contested opposition registration may eventually be refused. Weight can be given to the Registrar’s opinion without compromising the duty of the Court to construe the relevant legal criteria.