Metro-Goldwyn-Mayer Studios Inc v Andrea Margaret Higgs

[2007] ATMO 44

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Metro-Goldwyn-Mayer Studios Inc. to registration of trade mark application 1043616(25, 35) - twentysomething - filed in the name of Andrea Margaret Higgs.

Delegate:

Debrett Lyons

Representation:

Opponent: Trevor Stevens of Davies Collison Cave, Patent and Trade Mark Attorneys

Applicant: No appearance

Decision:

2007 ATMO 44

s. 52 opposition – s. 43: no connotation likely to deceive or confuse ; s. 60: trade marks not deceptively similar. Opposition unsuccessful.

Background

1. Andrea Margaret Higgs (‘the applicant’) filed a trade mark application number 1043616 (‘the application’) on 28 February 2005.  Details of the application are set out below.

   Priority Date:                 28 February 2005

   Goods/ Services :      Class: 25   Clothing

   Class:  35  Retail service

   Trade Mark :  twentysomething

   (‘the trade mark’)

2. Metro-Goldwyn-Mayer Studios Inc (‘the opponent’) filed a Notice of Opposition to registration of the trade mark on 6 December 2005. Thereafter evidence in support was duly filed and served on the applicant according to the provisions in the Trade Mark Regulations 1995 (‘the Regulations’).  The applicant did not file evidence in answer nor did it provide written submissions.

3. Both parties were invited to be heard and the matter came before me, Debrett Lyons, a delegate of the Registrar of Trade Marks, on 15 May, 2007 in Sydney.  At the Hearing, the opponent was represented by Trevor Stevens of Davies Collison Cave, Patent and Trade Mark Attorneys.  The applicant did not make an appearance and did not provide any written submissions.

   Grounds of Opposition

4. The Notice of Opposition listed 8 grounds of opposition but at the Hearing, the opponent relied only on sections 43 and 60 of the Trade Marks Act 1995 (‘the Act’).  The opponent also sought an award of costs if it was successful.

   The Evidence

5. The evidence filed and served in accordance with the Act and Regulations is set out in the table below.

Declarant	Date  Declared	Known As	Exhibits
Evidence in Support
Michael B. Moore	31 August 2006	Moore	A  -  J

Submissions and Reasoning

1. I will first examine the claim based on section 60.

Section 60

1. Section 60, in its unamended form relevant to this opposition, stated:

   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) 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.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For priority date see section 12.

2. It is for the opponent to point to a trade mark, whether registered or in common law use, which is:

   ·either substantially identical with, or deceptively similar to, the trade mark in the application;  and

   ·which, before the priority date, has acquired a reputation in Australia; such that

   ·use of the applicant’s trade mark would lead to deception or confusion.

3. The opponent claims a reputation in Australia in the unregistered trade mark ‘thirtysomething’.  The trade marks to be compared are therefore ‘thirtysomething’ and ‘twentysomething’.  The opponent does not argue that the trade marks are substantially identical.  Instead it submits that they are deceptively similar and it refers to the well-known case of Australian Woollen Mills Ltd v F. S. Walton & Co. Ltd (1937) 58 CLR 641 where at page 658 it was said that:

   In deciding this question, the marks ought not, of course, to be   compared side by side. An attempt should be made to estimate the            effect or impression produced on the mind of potential consumers             by the mark….

4. The evidence before me is that the opponent first used the name ‘thirtysomething’ in the United States in 1987 as the name of a television series featuring the interwoven lives of 7 young adults.  The original series comprised 85 episodes and ran in the United States between 1987– 1991.  The series was later syndicated and re-run (Moore paras. 10-15).  The series enjoyed wide popularity in the United States and elsewhere.

5. Broadcasting of the series in Australia occurred between 1987- 2002.  Revenue derived from Australian license fees totalled over $AU3,000,000 (Moore para.. 22).

6. The opponent has licensed the use of the name ‘thirtysomething’ on goods such as clothes and jewellery, but not in Australia (Moore para. 23).

7. The first question seems to me to be whether the opponent has used the name ‘thirtysomething’ as a trade mark in Australia.  There has been no merchandising activity in Australia and the use of the name consists exclsively of its use as the name of a television series.

8. In Musidor BV v. Robert William Tansing (1994) 29 IPR 203, the Full Federal Court Gummow and Heerey JJ; Davies J dissenting) said:

   We accept the submission for the respondent that the words "The Rolling Stones" are not used for the purpose of indicating a connection in the course of trade between him and the discs or any other goods in respect of which the trade marks are registered.  Rather, they are used here to identify a recording made many years ago of a live performance by those persons in the United States, which has been reproduced and embodied in the discs manufactured by the respondent.  That is not a trade mark use by the respondent.

9. In that case, the majority of the Full Federal Court held that the respondent’s use of the words ‘The Rolling Stones’ did not infringe the applicant’s trade mark registration as there was no trade mark usage of the term. The Court held that audio recordings bore other trade marks like ‘Apple’ or ‘Decca’ and these were the true source indicators of the goods.

10. By analogy, the television series name is just that. It is not an indicator of the trade source of the goods.  Had the opponent applied the name, or licensed others to apply the name, ‘thirtysomething’, to merchandised goods sold in Australia then I would have no hesitation in finding that there was use of the name as a trade mark in relation to those goods.   That is not the case.  Use of the name in Australia by the opponent was limited to the name of television series.  Under the Trade Marks Act 1955 that would not constitute trade mark use.  Under the current Act, there is no definitive authority as to whether it is trade mark use.  Nevertheless, the Courts appear to accept that the definition of a trade mark is substantially unchanged in the current legislation (see Philips v Remington (2000) 48 IPR 257 at 268).

11. The onus is on the opponent to establish its opposition. Since in my view it has been able to point to use of a trade mark in Australia with any certainty, it has not discharged the onus upon it. 

12. Lest I be wrong in that decision, the section 60 ground of opposition requires as a precondition that the two trade marks be deceptively similar.

13. Taken in the abstract, that is, taken out of their social and idiomatic contexts, the terms share a level of commonality - aurally, visually and in meaning.  That assessment however is one which ignores the inherent descriptive quality of both terms and the degree to which the terms have passed into the popular lexicon.

14. In my own observation of the world, expressions such as ‘twenty-something’, ‘thirty’-something’, ‘forty-something’ are in common usage.  I can not with absolute authority comment on the commonality of that usage at the priority date of the application, 28 February 2005, but I am more certain than not, at that time use of the applicant’s mark on clothing or in relation to retailing services in general would not be likely to deceive an ordinary Australian consumer into thinking that those goods or services emanated from the opponent.

15. Applying the test in the Australian Woollen Mills case, supra., I decide that the terms are not deceptively similar and accordingly the opponent’s section 60 ground of opposition must fail.

    Section 43 

    Trade mark likely to deceive or cause confusion

    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.

16. The opponent submits that the word ‘connotation’ in section 43 can be understood in one of two ways – either that there must be something inherent in the trade mark which is likely to deceive or cause confusion (perT.G.I. Friday’s Australia Pty Ltd v T.G.I. Friday’s Inc. (2000) 48 IPR 513), or, a connotation of sponsorship, endorsement, affiliation or connection with another entity may arise.

17. In support of that latter construction of section 43, the opponent referred me to the decision in Durkan v Twentieth Century Fox Film Corp (2000) 47 IPR 651, which concerned an application for the trade mark ‘Braveheart the Musical’ in the face of the opponent’s use and reputation in the word ‘Braveheart’. The Registrar’s delegate in that case found that the term ‘Braveheart’ was not known before the opponent adopted it for the name of its film.

18. There are parallels with the present case.  Moore attests that the opponent coined the name ‘thirtysomething’ (para. 5) and that the Oxford Online Dictionary carries an entry for the term and attributes its origin to the opponent (para. 27 ; Exhibit I).

19. What I do observe from that dictionary entry is that there is no suggestion that the term is a trade mark and every suggestion that by 1993 the term had entered into common parlance. To my mind that utterly distinguishes the present case from the Braveheart decision.

20. I prefer the construction of the Act which was offered by Spender J. in Winton Shire Council v Lomas (2002) 56 IPR 72 where his Honour said:

    Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s. 60.

21. I find that the section 43 ground of opposition also fails.

    Decision

22. Under section 55 of the Act, I decide that the grounds of opposition fail and so I direct that the application be registered one month from the date of this decision, provided that the sealing fee has been paid. 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 discontinued, or in the event of a decision from the Court, that the application be subject to its orders.

    Costs

23. The opponent sought its costs but the applicant, who is entitled to her costs, does not appear to have incurred any costs which are claimable under the regulations.  Should the applicant come to make a claim for costs, I order that they be assessed according to the published scale and upon proof that they were sustained.

    Debrett Lyons

    Hearing Officer

    Trade Marks Hearings

    6 August 2007