Meredith Corporation v Better Pets and Gardens Pty Ltd
[2008] ATMO 88
•30 October 2008
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Meredith Corporation to registration of trade mark application 1088368(1, 5, 6, 11, 19, 20, 21, 31) - BETTER PETS AND GARDENS - filed in the name of Better Pets and Gardens Pty Ltd.
Delegate: | Alison Windsor |
Representation: | Opponent: Stephen Burley of counsel instructed by Gilbert & Tobin, lawyers Applicant: Siobhan Ryan of counsel instructed by Hotchkin Hanly Lawyers |
Decision: | 2008 ATMO 88 Section 52 opposition: trade marks not substantially identical or deceptively similar – grounds under s60 and para 42(b) not established; s59 not established as sufficient evidence provided to allow inference of intention to use at the relevant date; s43 not established as no relevant connotation within the mark; Costs awarded against opponent. |
Background
Better Pets and Gardens Pty Ltd (“the applicant”) filed an application to register a trade mark, current details of which are shown below:
Application number: 1088368
Filing date: 30 November 2005
Goods/services claims: Class 1: Nitrogenous fertilisers; phosphates (fertilisers); manures; mulch and fertilizer mixes, fertilizer predominating
Class 5:Lotions for veterinary purposes; medicines for veterinary purposes; biological agents (bacterial, fungal or other fungicides, weedkillers, herbicides, insecticides, parasiticides, pesticides); pesticides
Class 6:Cages for birds and animals, of metal (structures)
Class 11:Aquarium aerating apparatus; aquarium filters; aquarium filtration apparatus; aquarium heaters; aquarium lights
Class 19:Aquarium gravel; aquarium sand
Class 20:Beds for household pets; boxes (nesting -) for household pets; cushions (pet -); household pets (nesting boxes for -); kennels for household pets; nesting boxes for household pets; pet cushions
Class 21:Cages for household pets; covers for cages for household pets; litter boxes (trays) for pets; pets (cages for household -)
Class 31:Foodstuffs for animals; living plants; fish, live; pet food; mulch and fertilizer mixes, mulch predominating; straw mulch; flowers, natural
Trade Mark:
The application was examined as required by the provisions of section 31 of the Trade Marks Act 1995 (“the Act”) and in due course advertised as accepted for possible registration.
On 30 June 2006, Meredith Corporation (“the opponent”) filed a notice of opposition (“the notice”) in the broadest possible terms. Thence followed service of evidence in support, in answer, and in reply. The opponent then requested to be heard on the matter. However, before a hearing date was decided upon, the applicant requested and was granted permission to file and serve further evidence. The opponent was subsequently granted the same opportunity and also filed and served further evidence.
The matter came before me, as a delegate of the Registrar, in Canberra on 26 June 2008. At the hearing, the opponent was represented by Stephen Burley of counsel, instructed by Gilbert & Tobin lawyers. The applicant was represented by Siobhan Ryan, also of counsel, and instructed by Hotchkin Hanley lawyers.
The Evidence
Evidence in support
The opponent’s evidence in support consists of a Statutory Declaration made by John S Zieser who is Vice President, Corporate Development, of the opponent company. The declaration includes Exhibits JSZ-1 to JSZ-8, as well as confidential Exhibits A and B. Mr Zieser firstly makes reference to a number of trade marks the opponent company has registered in Australia. Details of these are shown in the table following.
Trade Mark No. | Trade Mark | Goods/Service claims |
| 89110 1 November 1946 | Class 16: A monthly magazine publication | |
| 318943 8 June 1978 | BETTER HOMES AND GARDENS | Class 16: Periodic publication |
| 516601 9 August 1989 | BETTER HOMES AND GARDENS | Class 16: Books and periodical publications |
| 748411 11 November 1997 | BETTER HOMES AND GARDENS | Class 41: Entertainment services, being the production of a television show |
| 983807 5 January 2004 | BETTER HOMES AND GARDENS | Class 9: Computer hardware, firmware and software, including software in the field of home design, home plans, home maintenance and improvement, interior design and home decoration Class 41: Providing on-line electronic publications (not downloadable), dealing with gardening and plants, food and cooking, home maintenance and improvement, interior design and home decoration, craft, travel, property investment and general domestic issues related to home life, lifestyle and recreation |
Mr Zieser says the opponent’s trade mark has been used in Australia in relation to a magazine since 1978. The magazine has a circulation within Australia of over 200,000 per month. As well as this magazine, the trade mark has been promoted via production of other special publications, such as “Better Homes and Gardens Diabetic Living”.
In addition to the magazine, the opponent has used its trade mark in relation to a television program which was first broadcast nationally in Australia in January 1995. The program has been televised since that time throughout, and is currently viewed by approximately 1.2 million viewers each week.
Mr Zieser says the television program has been extensively promoted through national competitions with in-store point of sale and/or catalogue promotions. These promotions have been connected with many very well-known retailers and brands over the years, as well as with popular and well known festivals and exhibitions such as the Sydney Royal Easter Show and the National Craft and Quilt Fair. The television program is also promoted in the opponent’s magazine, as well as in major Australian newspapers and magazines.
Mr Zieser is of the opinion that as a result of the popularity of the television program and its extensive promotion in the publications he referred to, the program is one of Australia’s most popular television programs. It has won a number of industry awards, including the Logie awards for four years running – 1996 to 1999.
Since December 2003, the opponent has also used the trade mark in Australia in relation to computer software and related goods. On-line publications have been available via the opponent’s websites since 1996, and Mr Zieser estimates that the current website ( receives approximately 1.3 million page views per month.
The sales figures provided at Confidential Exhibit A amount to many millions of dollars annually for an unspecified range of goods and services offered or provided under the trade mark. Confidential Exhibit B provides figures for revenue received from the sale of advertising sold in the opponent’s magazine in the years 2004 to 2006. These figures are in the tens of millions of dollars per annum.
Mr Zieser also gives his opinion that because the television program features many segments and articles in relation to gardens, gardening and pets, and because he considers the trade mark to be a famous one in Australia, there is a strong likelihood of Australian consumers associating the applicant’s trade mark with the opponent’s business.
Evidence in answer
The applicant’s evidence in answer consists of a Statutory Declaration made by Stuart Stonehouse, sole director of the applicant company. The declaration incorporates Exhibits SS-1 to SS-7.
Mr Stonehouse says he has been involved with the use of the applicant’s trade mark since October 2006.[1] He says the applicant has franchised stores at four locations in Perth, though no indication of the dates at which these franchises were initiated is given. Each of the franchisees is authorised to use the trade mark in respect of its business. The applicant however, conducts television, radio and print advertising on behalf of all authorised users. Exhibits to the declaration demonstrate examples of the trade mark in use on business cards and stationery, on shop signage and on staff clothing. A schedule of television and print advertising shows that in 2006, albeit after the priority date, the applicant had broad coverage for its trade mark in well known publications and on well known television shows, at least in the state of Western Australia. Mr Stonehouse did not provide any sales or revenue figures of any kind.
[1] Note the priority date for the application, and therefore the relevant date for the purposes of this opposition is 30 November 2005.
Evidence in Reply
The opponent’s evidence in reply consists of a Statutory Declaration made by Nicholas David Keynes, Project Director of Newspoll Market Research. Newspoll is a company which provides quantitative market research and consultancy services, including syndicated and customised studies and opinion polls for clients from both the commercial and public sectors.
Mr Keynes declaration is provided to support and explain the results of an on-line survey of 1212 Australian adults conducted over the period 21 to 25 June 2007. After describing the methodology of the survey, Mr Keynes gives a brief summary of the results, and his opinion that the results of the survey demonstrate that the opponent’s trade mark is an extremely well known brand and that therefore the following results are significant:
- the opponent’s brand is the name or thing with which consumers are most likely to associate the applicant’s trade mark and
- a significant majority of people believe there is at least a possibility that the two brands would be connected.
Further evidence
The applicant’s further evidence consists of a declaration made by Dr David H.B. Bednall, who is Associate Professor, Bowater School of Management & Marketing in the faculty of Business & Law at Deakin University. Dr Bednall says his current areas of research interests are in the area of consumer behaviour, the market research industry and communication.
Dr Bednall is critical of the survey, specifically of the wording of the questions. He is also critical of Mr Keynes’ conclusions about the significance of the results.
The Opponent’s further evidence was a second declaration by Mr Keynes in response to the Bednall declaration. It consists of a critique of Dr Bednall’s declaration and conclusions. I will discuss the survey and its importance and relevance later on in this decision.
Discussion
Despite the notice being couched in very broad terms, at the hearing the opponent advised it would be pursuing only the grounds of opposition relevant to subsection 42(b), section 43, section 59 and section 60. As no submissions were made in respect of any other grounds nominated on the notice, it is my decision that those other grounds have not been established.
I will consider each of these grounds separately, but not in numerical order.
Section 43 – trade mark likely to deceive or cause confusion
This section of the Act provides
43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
In its written submissions, the opponent referred me to the following words of Gyles J in Pfizer v Karam[2]:
‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question , rather than, for example deception by reason of similarity with other marks (TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc (2000) 100 FCR 358 at [43]; McCorquodale v Masterson[3] at [25]- [26]. Section 43 might well prevent the registration of HERBAGRA for classes of goods with no connection with herbal ingredients.
…
In my opinion, there is no relevant secondary meaning connoted by the mark HERBAGRA. An implication of sponsorship or association might qualify as such a secondary meaning or connotation, but I am not persuaded that the mark itself has that secondary meaning here.
[2] Pfizer Products Inc v Karam [2006] FCA 1663
[3] McCorquodale v Masterson [2004] FCA 1247
The opponent submitted the following (I have deleted the case references quoted):
Contrary to the facts in Pfizer in the present case, there is clear evidence of a meaning ascribed to the Opposed Mark being that it conveys an association and a connection with the Opponent’s marks. As a consequence there is a real tangible danger that in the use of the Opposed Mark there would be deception or confusion.
The probability of deception or confusion is finite and non-trivial … There must be a real tangible danger of its occurring. … The survey results demonstrate that such a danger is significant.
This comment is based upon the results of the survey which forms part of the content of the opponent’s evidence in reply. However, I am not inclined to put particular weight upon this survey, and I do not read into it the same importance that the opponent obviously does.
Firstly, the survey was run approximately 18 months after the filing date of the application. I do not consider this to definitively demonstrate the state of play at that relevant date. Secondly, the results show that slightly less than 20% of respondents made a direct association between the applicant’s and opponent’s trade marks, when considered in isolation. This is scarcely a demonstration of significant association between the trade marks.
The opponent submits that the results of the survey provide sound evidence of a meaning being ascribed to the applicant’s trade mark, and that particular meaning is a connection with the opponent’s brands. I do not see the survey results as supporting this claim so strongly. As less than 20% of respondents made the initial connection, even if the survey had been run at an appropriate time, I would still not consider it provided evidence of any likelihood of widespread deception and confusion.
More importantly, the decision in TGI Friday, above, makes it abundantly clear that the word “connotation” in section 43 refers to something which is contained within the trade mark itself, and does not refer to a comparison with another trader’s trade marks - that being a matter which is dealt with under the provisions of section 44 of the Act, a section which the opponent has chosen not to pursue in its submissions. The onus is on the opponent to make out any ground, and the evidence provided in respect of the section 43 ground does not meet this onus. The opponent has not established the ground of opposition in respect of section 43.
Section 59 – applicant not intending to use the trade mark
Section 59 of the Act provides:
Applicant not intending to use trade mark
59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
This is a difficult ground of opposition for the opponent to establish, as it requires the establishment of a negative. The opponent submitted that there was no proven use of the applicant’s trade mark on the goods claimed in any of its classes, and that if there was any use at all, then it was in respect of retail services. This, they considered, was sufficient proof that the applicant did not have any intention to use the trade mark in respect of goods. Evidence showing use on stationery, staff clothing and shop signage, they submitted, was similarly not use in respect of the goods claimed.
Again, I do not agree with the opponent’s arguments. The applicant’s intention to use the trade mark is initially demonstrated by the application for registration[4]. Section 27 relevantly allows (emphasis added):
[4] Aston v Harlee Manufacturing Co (1960) 103 CLR 391
Application—how made
27.(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:
(a) the person claims to be the owner of the trade mark; and
(b) one of the following applies:(i) the person is using or intends to use the trade mark in relation to the goods and/or services;
(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;
(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.
Note: For use see section 7.
As to whether the applicant’s current mode of use is actually “use”, in Brother Industries Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1490, Tamberlin J said:
54 Section 7(4) defines ‘use’ of a trade mark not only as the application of the mark to the product itself, but also the application of the mark to other items relating to the product, such as packaging, invoices, correspondence and advertisements: see Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd [1974] HCA 51; (1974) 131 CLR 592 at 600 (per Jacobs J); Angoves Pty Ltd v Johnson (1982)43 ALR 349 at 359-360 (per Deane J); Davison M, Johnston K and Kennedy P, Shanahan’s Australian Law of Trade Marks & Passing Off (3rd ed, Lawbook Co., 2003) at [2.145] and [2.230]. Sections 9(1)(b)(i), 9(1)(c)(ii) and 9(2) of the Act provide that a trade mark used on an invoice or attached to either the packaging in which the product is stored or transported is to be taken as being applied in relation to the goods. Accordingly, the use of the Sample Packaging or invoices displaying the mark in respect of the Sample Units is ‘use’ of a trade mark within s 7 of the Act.
The applicant has stated that it is using its trade mark in respect of sales of goods in four separate stores. It has provided examples of the trade mark in use on stationery, business cards, shop signage and staff clothing, and has attested to use of the trade mark as applied for in television and print media advertising. I am satisfied that this evidence shows “use” as envisaged by Section 7 of the Act, and is therefore appropriate use.
However, section 59 is taken to refer to the state of play at the date the notice was filed, in this case, 30 June 2006.[5] The earliest date provided in the applicant’s evidence of use is October 2006, shown on an advertising schedule as part of Exhibit SS-2 to the Stonehouse declaration. This date is some three months after the notice of opposition was filed.
[5] See Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft [2002] ATMO 51
That notwithstanding, I find that while the applicant has not demonstrated actual use at the date the notice of opposition was filed, neither has the opponent demonstrated there was a lack of intention to use the trade mark at that time. I am satisfied that the combination of the filing of the application and the demonstrated advertising of the applicant’s business dated October 2006 is sufficient for me to infer that where was an intention to use the trade mark at the date the notice was filed. The opponent has therefore not established the ground of opposition under the provisions of section 59.
Section 60 – Trade mark similar to trade mark with a reputation in Australia
The provisions of section 60 relevant to this opposition are those which were in force prior to the date of Royal Assent to the Trade Marks Amendment Act 2006 (Cth) on 23 October 2006. The section therefore relevantly provides the following:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.
Unless the trade marks in contention are found to be either substantially identical or deceptively similar, the provisions of section 60 cannot be applied. A comparison of the trade marks is my next step.
Substantial identity and deceptive similarity
When considering the similarity of trade marks for the purposes of section 60, the determination is the same as for a consideration under section 44. The question of any claimed reputation is, in general, not relevant to the comparison at this stage.
The accepted test for determining whether two trade marks are substantially identical requires that the two trade marks should “be compared side by side, their similarities and differences noted, and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison”[6].
[6] Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415
A side by side comparison of the applicant’s trade mark with those registered by the opponent results in the appearance of some similarities (common use of the words BETTER and GARDENS) and some differences (the additional words and a tick device (ü) within the applicant’s trade mark, as well as the arrangement of the words within the trade mark). The total impression of the two trade marks when viewed side by side is one of dissimilarity. It is clear the two trade marks are not substantially the same, despite the common elements. I am satisfied that the two trade marks are not substantially identical.
Unlike “substantially identical”, the term “deceptively similar” is defined in the legislation, at section 10:
Definition of deceptively similar
10. For the purposes of this Act, 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.
Deceptive similarity requires a different test. Quoting again from the Shell case, supra,
A different comparison must be made … The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar on of trade mark law. It is between, on the one hand, the impression based on recollection of the [opponent’s] mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the [applicant’s trade mark].
Justice French, in his often quoted decision in Woolworths Metro[7] specified that a mere possibility of confusion is insufficient to demonstrate that one trade mark is deceptively similar to another. He said there must be a real tangible danger of deception or confusion occurring, and that confusion is likely to be shown if the result of a trademark’s use is that a number of persons are caused to wonder about whether two products, or closely related products and services come from the same source.
[7] Registrar of Trade Marks v WoolworthsLtd (1999) 45 IPR 411
The opponent noted that the question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application, basing the eventual question of confusion upon what the applicant can do if its registration is obtained, not what it is currently doing. This is a reference to the matter of “notional use” which has been judicially discussed in many instances.
In SAP v Sapient[8], French, Heerey and Lindgren JJ commented
It is important in referring to authority in cases such as the present to bear in mind the distinction between the roles played by the term “deceptively similar” in registration and opposition proceedings on the one hand and in infringement proceedings on the other. In the former class of case, the risk of deception or confusion is to be assessed having regard to the notional use of the proposed mark in a normal and fair manner for all of the goods or services to be covered by the registration: see Coldstream Refrigerators Ltd v Aircrafts Pty Ltd (1950) 20 AOJP 1491 at 1496 per Dixon J; Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 121 ALR 191 at 228 (FCA/FC) per Gummow J.
[8] Sap Australia Pty Ltd and Another v Sapient Australia Pty Ltd (1999) 169 ALR 1
The matter of notional use is important in this case, because it is not at all clear that the applicant had used its trade mark prior to the relevant date for this opposition, which is 30 November 2005, the filing date.[9] However, in considering whether or not the trade marks being compared are deceptively similar, I am able to look at what the situation would be, assuming the applicant were to use its trade mark in respect of all the goods for which it has filed its claim.
[9] Refer to discussion of the ground under s 59, and the dates provided in the applicant’s evidence of use.
The opponent submitted that the use to which the applicant could put its trade mark, should it be registered, would result in the primary words BETTER PETS AND GARDENS being “blazoned on the products”. This combination of words, the opponent said, “is immediately evocative of the combination of words BETTER HOMES AND GARDENS which has acquired an extremely broad degree of recognition within Australia”.
I am satisfied that the opponent’s trade marks do have extremely broad recognition within Australia in respect of magazines and a television show. However, I am not satisfied that when considering the issue from the point of view of the notional use of the applicant’s trade mark vis-a-vis the demonstrated use of the opponent’s trade mark, there is a likelihood of deception or confusion.
While there is some likelihood that the applicant’s use of its trade mark could result in the kind of labelling the opponent surmises is likely to occur, it is equally likely that the label could be expected to include the whole trade mark, not only that portion of the label which the opponent considers to be most likely to conflict with its own trade mark. Use of the trade mark as a whole, in my opinion, makes the likelihood of confusion much less.
While the trade marks do include some of the same words, the applicant’s trade mark puts completely different weight on the similar components, thereby resulting in customers being likely to see the trade mark differently. The most prominent word within the applicant’s trade mark is the word BETTER, which covers at least 50% of the area of the trade mark as a whole. The remaining words are much smaller and less noticeable within the whole. It is my opinion that these differences minimize the likelihood of a person seeing the applicant’s trade mark assuming it is likely to be at all related to trade marks owned by the opponent.
In addition, the similarity between the applicant’s and the opponent’s range of goods and services is far from close. The opponent sells a magazine, and broadcasts a television show. It also claims provision of various pieces of computer software and on-line electronic publications. The television show, the magazine and the on-line and electronic publications certainly deal with subjects relevant to homes, domestic life including pets, lifestyle and recreation.
The applicant is in the business of operating retail stores which sell a range of goods for gardens and for pets, and its trade mark application covers only these goods. Despite the applicant selling the kinds of goods which may be referred to in the opponent’s magazines and television shows, I am not satisfied that there is any real tangible danger of significant deception or confusion occurring between these trade marks when they are both used in their respective markets. I am therefore satisfied that the trade marks are not deceptively similar.
In order to establish grounds of opposition under the provisions of section 60, the opponent must demonstrate that at the priority date of the opposed application:
there was a substantially identical or deceptively similar trade mark
which had acquired a reputation in Australia
amongst a significant section of the public
such that use of the applicant’s trade mark would be likely to deceive or cause confusion.
The requirement for an appropriate degree of similarity between the trade marks is a threshold test for the application of section 60. As I have found the trade marks not to be deceptively similar, the ground of opposition in respect of this section of the Act cannot be established.
Section 42 – Use contrary to law
Section 42(b) of the Act provides:
42 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.
In respect of this ground of opposition, the opponent is relying on the provisions of sections 52 and 53 of the Trade Practices Act 1974 (“TPA”). The results of the survey, the opponent said, indicate that there is a real likelihood that persons would understand the opposed trade mark to convey a connection with the opponent by way of sponsorship or approval or trade affiliation.
Section 52 of the TPA provides:
·a corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Section 53 is a much larger section, and deals with the matter of false representations of goods and services, in respect of, inter alia, standards, qualities, sponsorship, approval or affiliation. It relevantly provides:
A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services – …
(c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;
(d) represent that the corporation has a sponsorship, approval or affiliation it does not have
For a ground of opposition to be established under the provisions of subsection 42, the opponent must show that the applicant’s use of its trade mark would, not could, be contrary to law[10].
[10] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 at 31
In the case of S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd [(1998) 43 IPR 581 the Full Federal Court at 587–588 summarized the principles applied in determining whether a breach of section 52 has occurred in the following words:
Section 52 creates what Fox J in Brown v Jam Factory Pty Limited (1981) 53 FLR 340 at 348 referred to as "a norm of conduct". Where that "norm" is not observed, a cause of action may arise under s 82 of the Act in a person who suffers loss or damage thereby.
Section 52 operates in a variety of situations. It may not be limited to cases where the conduct complained of is a misrepresentation although that is the normal case which presents itself: Henjo Investments Pty Limited v Collins Marrickville Pty Limited (1988) 79 ALR 83 at 93 per Lockhart J.
Where the conduct claimed to be misleading or deceptive involves what is said to be a misrepresentation a number of principles applicable are well established. These were summarised in Equity Access Pty Limited v Westpac Banking Corporation (1990) ATPR 40-994 at 50,950-1 in a passage which has been followed in many cases and which was applied by the learned primary judge. We would restate the applicable principles relevant to the present case as follows:
1. There will be no contravention of s 52 unless the error or misconception which occurs results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 at 199-200 per Gibbs CJ and at 209-211 per Mason J; Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 2 FCR 82 at 91; Tobacco Institute of Australia v Australian Federation of Consumer Organisations (1993) ATPR 41-199 and cf Argy v Blunts & Lane Cove Real Estate Pty Limited (1990) 26 FCR 112 at 132.
2. Conduct will be misleading and deceptive if it leads into error: Parkdale at 198.
3. Conduct will be likely to mislead or deceive if there is a "real or not remote chance or possibility" of misleading or deceiving regardless of whether it is less or more than 50%: Global Sportsman at 87.
4. Conduct causing confusion or uncertainty in the sense that members of the public might have cause to wonder whether the two products or services might have come from the same source is not necessarily misleading and deceptive conduct: Parkdale at 200; Bridge Stockbrokers Ltd v Bridges (1984) 57 ALR 401 at 413 per Lockhart J; Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177.
5. In a case such as the present an applicant must establish that it has acquired the relevant reputation in the name or get-up such that the name or get-up has become distinctive of the applicant's business or products: Sheraton Corporation of America v Sheraton Motels Ltd [1964] RPC 202; BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 12 ALR 363.
6. Conduct may be misleading or deceptive or likely to mislead or deceive notwithstanding that the corporation said to engage in that conduct acted honestly and reasonably and did not intend to mislead or deceive: Parkdale at 197 per Gibbs CJ; Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 223 per Stephen J; Global Sportsman at 88. Logically, a finding that conduct had been intentionally engaged upon will be irrelevant in determining whether that conduct is misleading or deceptive. It may perhaps be imagined that conduct engaged upon with the intent to mislead or deceive may fail in its purpose and not be found misleading or deceptive. Nevertheless, where the intention to mislead or deceive is found, it logically would be likely that a court would more easily find that the conduct was misleading or deceptive: cf Australian Home Loans Ltd v Phillips (1998) ATPR 41-626 and New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 86 ALR 549 at 558. It is unnecessary in the present case to consider the question whether a finding of intention to mislead or deceive can have relevance in other ways to issues such as remedies.
7. In many cases it will be necessary to consider the class of persons to whom the representation was directed: Parkdale at 199 and Taco Bell at 202. To the extent that it is here necessary so to do that must be the class of persons interested in purchasing magazines concerned with triathlon sport.
8. There is no proposition of law to the effect that intervention from erroneous assumption between conduct and misconception destroys the necessary chain of causation with the consequence that the conduct cannot be regarded as likely to mislead or deceive: Taco at 200; Campomar Sociedad Limitada v Nike International Ltd (1998) 156 ALR 316 at 344-5.
9. The test of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective one for the Court to determine. It is ultimately a question of fact.
Given that I have found the trade marks under consideration here not to be deceptively similar, I consider it unlikely that any more than a small number of the relevant members of the public might, at most, be given cause to wonder whether the applicant’s goods were sourced from the opponent. That possibility does not necessarily point to misleading and deceptive conduct (see the reference above to the Parkdale case). I am not satisfied that the applicant’s use of its trade mark would breach section 52 of the TPA.
In respect of section 53, there is nothing before me that points to the kind of connection in the mind of the relevant buying public between these two parties which would allow an inference of sponsorship, approval or some kind of affiliation with the opponent. I am satisfied that while the opponent certainly has a reputation in respect of its trade marks, there is nothing in the evidence before me to suggest any significant portion of the buying public would assume the applicant’s goods were connected in any way with the opponent, its magazine or its television show. I am not satisfied that the applicant’s use of its trade mark would breach section 53 of the TPA.
Failure to establish that the applicant would be in breach of either of sections 52 or 53 of the Trade Practices Act means the ground of opposition relevant to section 42 of the Act has not been made out.
Decision
The opponent has not established any ground of opposition in respect of this opposition and thus the opposition is unsuccessful. Application 1088368 may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration shall not occur until either the appeal has been discontinued or, in the event of a decision from the Court, that the application be subject to that order.
Costs
The applicant having been successful is entitled to its costs which I award against the opponent, Meredith Corporation.
Alison Windsor
Hearings Officer
Trade Marks and Designs Hearings
30 October 2008
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