MGM Grand Hotel LLC v Surfside Eststates Pty Limited
[2010] ATMO 13
•10 February 2010
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by MGM GRAND HOTEL, LLC to registration of trade mark application 1055565(41, 43) - studio 54 nightclub - filed in the name of SURFSIDE ESTATES PTY. LIMITED.
Delegate: John Spence Representation: Opponent: Mr. Brett Lewis, Solicitor, of Davies Collison Cave, Patent and Trade Mark Attorneys (Melbourne office)
Applicant: Mr.Wayne Clark of Surfside Estates Pty. Limited (self-acting)Decision: 2010 ATMO 13
Section 52 Opposition – Sections 42(b) and 60 pressed – the effect of overseas reputation considered – the nature of reputation discussed – “contrary to law” considered – grounds of opposition dismissed – no costs awarded.Background
On 16 May 2005 an application for registration of the trade mark “studio 54 nightclub” (as a word mark) was filed under No. 1055565 in Class 41 (in respect of “Entertainment services including pub, cabaret, nightclub and theatre restaurant entertainment services”) and Class 43 (in respect of “The provision of food and drink prepared for consumption including such services supplied in pubs, cabaret venues, nightclubs and theatre restaurants”) in the name of Surfside Estates Pty. Limited (“the Applicant”). Following examination the application was accepted for possible registration on 18 October 2005 and the advertisement of acceptance in respect of same took place in the Australian Official Journal of Trade Marks dated 3 November 2005.
Pursuant to the provisions of Section 52 of the Trade Marks Act, 1995 (“the Act”), on 3 February 2006 the U.S. company MGM Grand Hotel, LLC (“the Opponent”) filed a notice of opposition to the granting of registration in respect of the Applicant’s trade mark. Subsequently evidence in support was filed by the Opponent by covering letter dated 2 July 2007. No evidence in answer was filed by the Applicant.
No request for a hearing having been made by either party within the prescribed period, by official correspondence dated 19 February 2008 the parties were informed that this matter would be referred to a Delegate of the Registrar for a decision on the written record. Accordingly I have been delegated to determine this Opposition and without a formal hearing taking place. My decision in this matter now follows.
The Written Record
In this instance, the written record comprises:
· Notice of Opposition dated 3rd February 2006;
· Evidence in Support, comprising:
- Statutory Declaration of Thomas A. Peterman in his capacity as Senior Vice-president and General Counsel of MGM Grand Hotel LL.C and made on 30th May 2007 (“the Peterman Declaration”);
- Statutory Declaration of Brett Lewis, Partner of Davies Collison Cave, made on 31st May 2007 together with the Exhibits BL-1 to BL-12 inclusive (“the Lewis Declaration”);
· Written Submissions prepared by Davies Collison Cave on behalf of the Opponent and lodged by covering e-mail dated 11th February 2008;
and
· Correspondence between the Registrar of Trade Marks and the respective parties.
The Opponent is represented by the firm of Davies Collison Cave, Patent and Trade Mark Attorneys (Melbourne office). The Applicant does not have legal representation and it is self-acting in this matter.
Grounds of Opposition
The Notice of Opposition dated 3rd February 2006 nominated eight grounds on which the opposition is based. However, in the Opponent’s written Submissions (at page 3), it is specifically indicated that only the grounds as provided in Sections 42 (b) and 60 of the Act are being pursued. Accordingly, for purposes of considering the matter and of issuing this decision, I have confined myself to the grounds of opposition as argued under Sections 42 (b) and 60 and I find that the other grounds, not being pressed or pursued by the Opponent, have not been established.
The Opponent bears the onus of establishing that the Applicant should be refused registration, and in discharging that onus it is the ordinary or civil standard of the balance of probabilities which applies (see Pfizer Inc. v. Karam (2006) 70 IPR 599).
The Evidence
The Opponent lodged and served its Evidence in Support on 1st June 2007. In summary, the Opponent’s evidence indicates that the Opponent is recorded as the registered owner of the trade mark “STUDIO 54” in the United States of America and the European Community (Exhibits “BL-8” and “BL-9” to the Lewis Declaration). The Opponent does not presently hold registrations in Australia in respect of the “STUDIO 54” trade mark but it has filed applications under nos. 1111711 and 1111712 and those applications continue to remain pending (Exhibit “BL-1” to the Lewis Declaration).
The history of the “STUDIO 54” trade mark has its beginnings from 26th April 1977 when a nightclub and discotheque bearing that name commenced business in the city of New York, U.S.A. on the site of a former CBS television studio. That venue, located just off Eighth Avenue on 54th Street (at 254 West 54th Street, between Broadway and Eighth Avenue), acquired a high degree of fame, notoriety and celebrity status and it attracted considerable attention and popular appeal. It has been described as “the most notorious nightclub in history”. During its heyday, the “STUDIO 54” club played a formative role in the growth of disco music and nightclub culture in general. It became an iconic New York landmark and it is regarded as being synonymous with the hedonistic, indulgent and extravagant lifestyle of the rich and famous during the so-called “swinging Seventies”. The flamboyant owner of the “STUDIO 54” nightclub Steve Rubell and his business partner Ian Schrager became cult figures.
Famous for the celebrities and personalities who frequented it, the “STUDIO 54” nightclub operated over a period of approximately eighteen months until its closure on 4th February 1980 after the owners were convicted of tax evasion and sent to prison. The club was purchased by Mark Fleishmann, a New York City developer and restaurant owner, in 1980 and it reopened for business on 12th September 1981. Celebrities continued to frequent the club, though the level of sensationalism was far toned down from its original levels. This second incarnation closed in March 1986. In the late 1980’s and early 1990’s the venue was known as The Ritz and it hosted rock concerts. After becoming a strip club for a few years, the venue finally reopened with much fanfare in 1994. However the club again went into bankruptcy and it closed the following year. In 1998 the site was acquired by the Roundabout Theater Company and it was renamed “The Roundabout Theater at Studio 54”.The second floor of the theatre is still used as a nightclub on weeks when plays are not being staged. When it does so, the venue operates under the name “Upstairs at Studio 54”.
In 1997 the Opponent acquired the existing rights in the “STUDIO 54” name, trade mark and business from the owners of the New York nightclub and it began construction of a “STUDIO 54” facility inside the MGM Grand Hotel and Casino in Las Vegas, Nevada. That new venue in its resurrected form opened for business in December 1997. Designed to be a replica of the original club, it has since become one of the most popular dance venues in Las Vegas..
The “STUDIO 54” nightclub in New York has provided the subject-matter for other works. In 1998 that venue was depicted in the film “54”, which was released by Miramax Film Corporation. That motion picture has had widespread circulation in Australia and it is well-known in this country where it remains readily available in video shops and outlets. The New York venue was the model for the club which featured in the movie The Last Days of Disco, and it was parodied (as Studio 69) in the movie Austin Powers in Goldmember. It has also been the subject of a book by Anthony Haden Guest entitled The Last Party: Studio 54, Disco, and the Culture of the Night.
In relation to the “STUDIO 54” venue in Las Vegas, since opening that nightclub to the public in 1997 the Opponent has continuously used the “STUDIO 54” trade mark in connection with nightclub services and entertainment services. That trade mark is promoted in print and broadcast media and through the Opponent’s web-site on the Internet which is accessible throughout the U.S.A. and around the world. Use of the “STUDIO 54” trade mark is made by means of the providing of nightclub services, the operation of the web-site, and the selling and distribution of clothing, souvenirs and other promotional products.
In addition to the “STUDIO 54” nightclub in Las Vegas, the Opponent has opened other venues in Berlin (Germany), Vienna (Austria) and Prague (Czechoslovakia). In Germany, the “STUDIO 54” trade mark has been the subject of a legal dispute and Court proceedings (Exhibits “BL-4” to “BL-7” inclusive to the Lewis Declaration). Those proceedings were apparently determined in favour of the Opponent.
The Applicant has not filed or served any evidence in answer, despite being given the opportunity to do so. In turn, the Opponent has not filed or served any evidence in reply.
Submissions
Written submissions (undated but received on 11th February 2008) setting out arguments in support of the Opponent’s position have been prepared by Davies Collison Cave and filed and served in these proceedings. For its part, the Applicant has made no written submissions.
The Opponent asserts inter alia the following, namely:
(i)that every person staying at the MGM Grand Hotel in Las Vegas is exposed to the marketing materials of the “STUDIO 54” nightclub and is likely to have visited that venue. During the period from 2000 to May, 2007 there have been approximately 1,618 reservations at the Opponent’s hotel by Australian guests, and during the period from 2005 to May, 2007 approximately 2,520 Australian guests have visited the hotel or the casino of the Opponent;
(ii)that an investigation report prepared for the Opponent (see Exhibit “BL-3” to the Lewis Declaration) has failed to locate a business being conducted by the Applicant under the “studio 54 nightclub” trade mark;
and
(iii)that the Opponent claims to have acquired an “extensive reputation” in Australia in relation to the “STUDIO 54” trade mark such that the Applicant’s use of the “studio 54 nightclub” mark would be perceived as being associated with or authorised by the Opponent and would thereby be likely to lead to confusion in the market-place.
The Law
Section 60
In this instance, the priority date of the relevant application is 16 May 2005 while the date of commencement of the Opposition proceedings is 3 February 2006. Accordingly, the wording of Section 60 as it relevantly applies to this Opposition (namely, in the form which existed prior to the amendments that took effect as from 23rd October 2006) provides that registration of a trade mark may be opposed on the ground that the mark is substantially identical with, or deceptively similar to, a trade mark that had acquired a prior reputation in Australia and that, because of that earlier trade mark’s reputation, the use of the mark being applied for would be likely to deceive or cause confusion. So, the necessary elements which are required to be satisfied and made out under this section are:
i.the trade mark being applied for must be substantially identical with, or deceptively similar to, the trade mark of the opposing party;
ii.the opposing mark must have acquired a prior reputation;
iii.that reputation must exist in Australia;
and
iv.because of the earlier reputation of the opposing trade mark, the use of the mark being applied for would be likely to deceive or cause confusion.
There are certain elements or indicia which apply in relation to Section 60 and which should be borne in mind. Section 60 focuses on reputation. That Section is concerned with whether the use of the trade mark in respect of which registration is sought would be likely to deceive or cause confusion by reason of the reputation in Australia of another trade mark. In the words of Justice Gyles:
Section 60 depends upon the Opponent’s mark having acquired a reputation in Australia by virtue of which the use of the trade mark applied for would be likely to deceive or cause confusion because of the deceptive similarity between them. (Pfizer Products Inc. v. Karam (2006) 70 IPR 599 at 607).
Further, the relevant determination to be made under Section 60 relates to the trade mark as it is actually used. Whereas, by contrast, under Section 44 both trade marks must be considered as being in “notional fair use”, Section 60 requires consideration of the actual manner in which the earlier trade mark has been used, a notional use being postulated only for the applicant’s trade mark (see Shanahan’s Australian Law of Trade marks and Passing Off, 4th edition, 2008, paragraph 50.2420 at page 403). So, in relation to Section 60, it is the actual manner of use of the opponent’s mark and the notional use of the applicant’s mark to which due regard must be given. Again, under Section 60 account may be taken of any peculiarity in the actual manner of use of the opponent’s trade mark likely to increase or decrease the risk of confusion (see Shanahan, op. cit., paragraph 50.2420 at page 403).
Section 42(b)
Section 42(b) of the Act provides that an application for registration of a trade mark must be rejected if its use would be contrary to law. The scope and extent of the operation and effect of this provision in proceedings before the Registrar have been questioned. In Advantage-Rent-A-car Inc. v. Advantage Car Rental Pty. Limited (No. 2) (2001) AIPC 91-724, issue was taken as to the appropriateness of the Registrar determining issues of law outside the area of his or her expertise, namely trade marks. It was submitted that it was not within the competence of the Registrar to determine at the stage of opposition proceedings whether a mark would be contrary to law if it involved issues beyond those provisions set out in the Act. Justice Madgwick found that the idea that “contrary to law” in the context of judicial proceedings means contrary to laws which are easy for the Registrar to determine or which are “clear cut”, rather than contrary to all laws, is not sustainable.
So, for purposes of Section 42(b), there is no reason why some legislation should be able to be relied upon before the Registrar and other legislation should not. Moreover, for this ground to be established it must be shown that the use of the trade mark in question would, not could, be contrary to law. Evidence is required to support assertions that use of the trade mark by persons other than the opponent would lead to deception or confusion in any instance, and evidence of mere wonderment “does not necessarily rise to the level required to satisfy s 42(b)” (see Red Hat Inc. v. Martinek (2002) 56 IPR 292).
These, then, are the relevant statutory provisions which form the two grounds of opposition on which the Opponent relies.
Reasons
Evidence in Support
I experience certain difficulties with the Evidence in Support as filed and served by the Opponent and I find that evidence to be problematic in several important respects and subject to limitations and aspects of weakness.
In relation to the Peterman Declaration, while (at paragraphs 4 and 5) it is indicated that the original “STUDIO 54” nightclub in New York operated from April, 1977 until February, 1980 and that the rights to the name were acquired by the Opponent in 1997, the evidence fails to offer any explanation as to what happened to the “STUDIO 54” name during the intervening period of seventeen years prior to that name being acquired by the Opponent. As well, the evidence is silent as to the circumstances whereby that acquisition came about. Yet at the same time the Opponent seeks to argue that there is a continuity of use and reputation in respect of the “STUDIO 54” trade mark and to rely on that continuity.
In paragraph 7, reliance is placed on the Internet use of the “STUDIO 54” trade mark by the Opponent utilising its website address of This evidence is not compelling and it carries limited weight. In Ward Group Pty. Limited v. Brodie & Stone Plc (2005) AIPC 92-087 Justice Merkel decided that “the use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded”.
In paragraph 8, reference is made to the “extensive use” by the Opponent of the “STUDIO 54” trade mark in relation to nightclub services. However the only use of that mark in the relevant sense which is established by the Opponent is in respect of its one site or premises being the nightclub which is conducted in conjunction with the MGM Grand Hotel located at Las Vegas, Nevada, in the U.S.A. . Generally, there is no evidence as to the extent, volume or value of the Opponent’s use of its “STUDIO 54” mark: there are no figures of turnover or profits, there is no evidence of advertising and promotional expenditure, and there is no indication (other than indirectly) as to the actual level of use. Rather, the evidence is generalised and it is expressed in broad terms. In particular, there is no evidence of any business activity having been conducted in Australia directly by the Opponent or of any such activity being contemplated by the Opponent.
In paragraphs 9 and 10, reference is made to the possible numbers of Australian guests who have stayed at the MGM Grand Hotel. However it must be said that the numbers which are provided are slight and that they constitute a relatively insignificant proportion of the Australian population. Moreover those Australian guests or attendees who are referred to are linked to the hotel or the casino of the Opponent and not to the “STUDIO 54” nightclub. There is nothing to indicate or substantiate the existence of any correlation between the making of a reservation or a visit to the MGM Grand Hotel or its casino and the use of the “STUDIO 54” facility or venue. Indeed there is nothing to support the inference that those Australian guests who may have stayed at the Opponent’s hotel or visited its casino would have any familiarity in relation to the “STUDIO 54” nightclub or would have retained any recollection whatsoever of that venue after their visit. Simply put, there are no supporting statements or corroborating materials in evidence from any relevant member of the Australian public so that the effect of this part of the evidence is conjectural in nature.
In relation to paragraph 11, whether or not it is true that every guest at the Opponent’s hotel has been exposed to the “STUDIO 54” name and marketing materials, it by no means follows that all such guests have visited the “STUDIO 54” nightclub or have retained a recollection of that name. Presumably even those guests who attended the “STUDIO 54” venue would, over time, experience a diminished and fading memory of that venue and of the significance of the “STUDIO 54” name.
In paragraph 12, the Opponent claims to have acquired an “extensive reputation’ in respect of the “STUDIO 54” trade mark in Australia. However , whatever the situation might be in Las Vegas or in the U.S.A. (or indeed elsewhere throughout the world), there is nothing in the evidence which establishes the existence of any reputation either directly or at all in Australia in relation to the “STUDIO 54” name and in favour of the Opponent. The Opponent has no office, outlet or address in Australia, it operates no place of business here, and it conducts no business activities directly in this country. The available evidence goes to establish the reputation of the Opponent in relation to the “STUDIO 54” trade mark in the U.S.A. only (and arguably in Germany, Austria and Czechoslovakia), and not in Australia.
Also in paragraph 12, the Opponent refers to “the previous owners” of the “STUDIO 54” trade mark. Therein lies a problem, in that in the present instance there is arguably not one reputation but two separate and distinct reputations which are likely to be involved. Arguably, for at least some portion (and perhaps the majority) of those Australians who could be said to be familiar with the “STUDIO 54” name, that expression would serve to signify and identify a connection with the original New York nightclub and an association with the subject-matter of the “54” movie rather than with the business of the Opponent (which is conducted in Las Vegas) so that the respective reputations are likely to be separate, antithetical and contradictory in nature.
In relation to the Lewis Declaration, the Exhibit “BL-3” comprises a copy of an investigation report dated 24th May 2006 and prepared by Rumore Associates. I find that report to be incomplete and inconclusive, and for the following reasons. The report was prepared almost three years ago, and it has not been updated. The report does not serve to constitute evidence of an abandonment of the “studio 54 nightclub” trade mark by the Applicant or to establish in any substantive or probative manner the intention of the Applicant in relation to that mark. It is inconclusive as to the issue of whether or not the Applicant continues to retain an intention to use the mark. The report establishes little more than that as at 24th May 2006 the Applicant was no longer conducting its “studio 54 nightclub” business at the former premises located at Raptis Plaza, Cavill Mall, Surfers Paradise, Queensland. However nightclubs, restaurants and similar enterprises are by repute typically transient in nature and it is not unknown for them to go out of business at one location and then later to re-establish themselves at a different location. There is no evidence provided, either in the Rumore report or elsewhere, of a company search having been conducted or of the findings of such a search. In the absence of that information, I must presume that the Applicant company Surfside Estates Pty. Limited continues to exist and that it retains an intention to use the “studio54 nightclub” trade mark.
In paragraph 12, the Exhibit “BL-10” bears out the apparent dichotomy between the two separate and distinct reputations (namely, the reputation in the original “STUDIO 54” nightclub in New York and including the reputation engendered as the result of the depiction of that venue in the motion picture “54” on the one hand and on the other hand the separate and distinguishable reputation in the subsequent and transported “STUDIO 54” venue which is part of the MGM Mirage LLC premises located at the MGM Grand hotel in Las Vegas). The annexed articles drawn from the Australian media and extracted from The Sydney Morning Herald, Cleo and The Australian Women’s Weekly refer specifically to the New York nightclub. Most of the references contained in this Exhibit are to the “STUDIO 54” nightclub and discotheque in New York or to the movie “54” which depicts that venue (Exhibit “BL-10” and especially the article entitled “Studio 54 Timeline” which makes no reference whatsoever to the MGM Grand Hotel).
So, there are arguably not one but two “STUDIO 54” nightclubs and each can be said to have a distinct, separate and individual character and persona. In relation to Australia, there exists the real likelihood that, insofar as there can be said to exist a section of the public which is familiar with the expression “STUDIO 54”, a substantial proportion of such persons would reasonably be expected to associate the “STUDIO 54” name and trade mark not with the business conducted by the Opponent and the reputation of that business but rather with the original New York nightclub, a separate and distinct entity. Indeed there exists the real likelihood that for those Australians who are familiar with the “STUDIO 54” name the dominant and prevailing association evoked by the expression “STUDIO 54”, even many years after it ceased to exist, is with the New York nightclub rather than the later Las Vegas embodiment and successor venue of the Opponent.
In brief, then, the evidence in support of the Opponent manifests a number of shortcomings, deficiencies and limitations which must be borne in mind.
Comparison of the Marks
There are differences between the respective trade marks, but those differences are slight in nature. The Applicant’s trade mark appears in uniform lettering which is rendered in lower case, and it includes the additional descriptive word “nightclub”. The Opponent’s trade mark is in upper case. With both marks, the essential feature is the expression “STUDIO 54” and that expression is shared in common by those marks. Taken at face value, the respective marks clearly correspond and they possess a high degree of similarity one to the other.
I accept the analysis which has been provided by Mr. Lewis in his written submissions as to the interpretation of the expressions “substantially identical with” and “deceptively similar to” and the oft-quoted authorities and statements on which he has sought to rely in this regard[1]. Further, I accept that the respective marks are substantially identical. Having reached this finding (that is, that the respective trade marks so nearly resemble each other as to be substantially identical), there is no need for me to consider whether the second requirement of “deceptively similar” has been made out in this instance. That being said, there continues to remain a problem for the Opponent. The element of resemblance and similarity between the two marks is undoubted: what is missing in the present instance is the prospect that the Applicant’s mark will in fact deceive or cause confusion.
Reputation
[1] Those relevant authorities are Justice Windeyer in Shell Company (Australia) Limited v. Esso Standard Oil (Australia) Limited (1961) 109 CLR 407, Justice Kitto in Southern Cross Refrigerating Company v. Toowoomba Foundry Pty Limited (1954) 91 CLR 592 at 594-5, Justice French in Registrar of Trade marks v. Woolworths Limited (1999) FCA 1020 at paragraph 50, Justice Mason in Berlei Hestia Industries Limited v. The Bali Company Inc. (1973) 129 CLR 353 at 362, Justices Dixon and McTiernan in Australian Woollen Mills Limited v. F.S. Walton & Company Limited (1937) 58 CLR 641 at 658, Justice Parker in Re Application by the Pianotist Company Limited (1906) 23 RPC 774 at 777 and Lord Justice Luxmoore in Aristoc Limited v. Rysta Limited (1943) 60 RPC 87 at 108, and see Shanahan, op. cit., at paragraphs 30.1005 and 30.1505 to 30.1510 inclusive.
One of the requisite elements of Section 60 which the Opponent must satisfy is that its “STUDIO 54” trade mark had acquired a reputation in Australia before the priority date of the Applicant’s “studio 54 night club” trade mark. In this regard, the primary line of reasoning on which the Opponent relies relates to the existence of so-called “spillover” reputation. In other words, in respect of the “STUDIO 54” trade mark the Opponent in essence argues that it has established a reputation which is international in character and which is so well-known and so extensively associated with the Opponent that that reputation can be said to have “spilled over” into Australia and thereby extends to include this country even though there exists no established business and no direct goodwill in the requisite sense on the part of the Opponent in the relevant jurisdiction. The interpretation and meaning of the word “reputation” therefore assumes considerable significance.
There can be no doubt that, for the Opponent to succeed, it must prove that as at the relevant date it had a reputation in Australia. There then arises the further question, namely whether for the Opponent to succeed it must also establish that it was carrying on business in Australia. In this instance, the evidence fails to establish the existence of any business in Australia on the part of the Opponent. The essential difficulty which is raised by the issue of reputation, specifically in a passing-off context but presumably of wider application, is well-described by Justice Hill (at first instance) in the case of ConAgra Inc. v. McCain Foods (Australia) Pty. Limited (1994) 22 IPR 175 at 185 as follows:
The rules as to passing off were, of course, formulated in simpler times when business was less internationally based, and when communications between countries in the form of advertising messages and travel were virtually non-existent. In times gone by, a company not carrying on business in the jurisdiction, not selling its goods there, might be presumed in any event to have had no reputation in the jurisdiction. With the advent of mass international communications, with television beaming from one country to another, with newspapers, magazines and journals being almost instantaneously available in countries other than the country of publication, there is much to be said for rethinking the basis of the action in passing off to the extent that it truly is confined to the existence of a business within the jurisdiction rather than the existence of a reputation in the jurisdiction.
However in ConAgra the finding ultimately reached was that the U.S. company failed in its action because it could not establish that it conducted any business in Australia under the “HEALTHY CHOICE” name. The essential difficulty in relation to this issue remains, that is, the differing perceptions as to the nature of the “property right” which trade mark law seeks to protect and the interconnection of the concepts of “goodwill” and “reputation”. It seems to be established that the existence of the stringent requirement of “goodwill” which was formerly a necessary element no longer needs to be made out in order to establish the existence of a “reputation” in the requisite sense. At the same time, the Courts will be reluctant to find the existence of a reputation in the circumstance where there is not able to be established the existence of any actual business in Australia.
The meaning of the expression “reputation” was considered by Justice Kenny in McCormick & Company Inc .v. McCormick (2000) AIPC 91-637 at 38,213-4 where, having considered the definitions which are provided in the Macquarie Dictionary, Her Honour expressed the view that in Section 60 the word “reputation” is apt to refer to “the recognition of the [trade mark] by the public generally”. Her Honour then went on to adopt the words of Justice Lockhart (in the Full Court) in ConAgra Inc. v. McCain Foods (Australia) Pty. Limited (1992) 23 IPR 193 at 234:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods [or services] of the overseas owner. . . .
In determining the nature and scope of the element of reputation in any given instance, the proper emphasis should be placed on the extent to which that reputation is likely to give rise to instances of confusion or deception occurring in the minds of members of the public (see the ConAgra case, op. cit. at pages 234-5, per Justice Lockhart).
As to the extent of reputation necessary to found an action, at least in passing-off, in Saville Perfumery Limited v. June Perfect Limited (1941) 58 RPC 147 at 176, Viscount Maugham said:
No doubt the plaintiff has to prove that to a substantial proportion of persons who are purchasers or probable purchasers of goods of the kind in question the name, mark or other symbol of origin indicates the goods of the plaintiff: but it is a mistake to think that all or almost all such purchasers must entertain that view.
This passage has been cited with approval by Justice Franki in Taco Company Australia Inc. v. Taco Bell Pty. Limited (1982) 42 ALR 177 at 190 and by Justice Hill (at first instance) in the ConAgra case (1991) 22 IPR 175 at 199.
In the context of an application under the Trade Marks Act, 1995 (as distinct from passing-off proceedings), similar considerations apply. It is stated that Section 60 envisages some substantial likelihood of deception or confusion and thus a more than minimal reputation for the prior trade mark (see Shanahan, op. cit., at paragraph 50.2400). It is commonly put that a “substantial” or “significant” number of persons must be likely to be deceived or confused, though the requirement that the deception or confusion should be amongst “a substantial number of persons” must be “properly and sensibly applied” (per Lord Upjohn in “Bali” Trade Mark [1969] RPC 272 at 496). In Kendall Company v. Mulsyn Paint and Chemicals (1963) 109 CLR 300 at 305, Justice Kitto stated that any substantial number of persons likely to be concerned in the purchasing of the goods must either infer that the goods have come from the same source or at least be caused to wonder whether that result might not be so. In that case, the opponent failed to establish a sufficient awareness of its trade mark in Australia. In Le Cordon Bleu BV v. Cordon Bleu International Limited (2001) 50 IPR 1, Justice Heerey observed:
What is “significant” or “substantial” will depend on the nature of the goods or services in question. For highly specialised products, awareness among a few thousand persons, or even less might be sufficient. . . .
Turning to the evidence, in the present instance the Opponent relies on the following matters to establish the reputation of its “STUDIO 54” trade mark:
·the reputation and notoriety of the original “STUDIO 54” nightclub in New York;
·the fame of the movie “54” which depicted that nightclub;
·the subsequent establishment, conduct and operation of the “STUDIO 54” nightclub by the Opponent in conjunction with its premises known as the MGM Grand Hotel and located in Las Vegas, Nevada, U.S.A. ;
·the use and promotion of the trade mark “STUDIO 54” by the Opponent in connection with the said premises since 1997;
·the use of the “STUDIO 54” trade mark in print and broadcast media;
·the use of the “STUDIO 54” trade mark on the Internet and by means of the Opponent’s website;
·the use of the “STUDIO 54” trade mark through the sale and distribution of clothing, souvenirs and promotional items;
and
·the attendance of Australians as guests or visitors at the premises of the Opponent in Las Vegas and the exposure of those Australians to marketing materials featuring the “STUDIO 54” trade mark.
There is no evidence of any place of business being conducted in Australia by the Opponent. There is no evidence of any trade or actual sales being effected in the relevant jurisdiction by the Opponent. Indeed there is no evidence of any use of the “STUDIO 54” trade mark in the relevant sense in Australia by the Opponent who places reliance entirely on its reputation overseas. The reputation and notoriety which might be said to exist in Australia in respect of the original “STUDIO 54” nightclub or in relation to the “54” movie are not the same as the reputation of the Opponent in its subsequent and post-1997 “STUDIO 54” venue but rather they relate to a different use and a different reputation attaching to an entirely different business. It cannot properly or realistically be said that there exists a continuity of reputation between the two venues.
In relation to the use of the “STUDIO 54” trade mark in print and broadcasting media and in the form of advertising, there is no evidence of such conduct taking place in Australia. Moreover the extent to which reliance is properly able to be placed on such evidence has been the subject of judicial criticism. In Alain Bernadin et Compagnie v. Pavilion Properties Limited [1967] RPC 581 at 584 Justice Pennycuick stated:
On the other hand, I do not think that the mere sending into this country by a foreign trader of advertisements advertising his establishment abroad could fairly be treated as user in this country. No authority to this effect has been cited. If that were so, the range of the action of passing off would be extended far beyond anything which has hitherto been treated as its proper scope. That observation applies I think particularly to such establishments as hotels and even more to restaurants. It may well be that the owner of a foreign hotel or restaurant acquires in this country a reputation for the name of his hotel or restaurant in a wide sense, that the travel agents or other persons to whom he sends advertisements know of his establishment. Again he may acquire a reputation in a wide sense in the sense of returning travellers speaking highly of that establishment, but it seems to me that those matters, although they may represent reputation in some wide sense, fall far short of user in this country and are not sufficient to establish reputation in the sense material for the purpose of a passing off action. It is very clear that in such circumstances the foreign trader has not acquired anything which in law could be described as goodwill in this country.
That passage is cited favourably by Justice Lockhart in ConAgra, op. cit., at pages 208-9.
In relation to the Internet use of the “STUDIO 54” trade mark via the Opponent’s website, the approach taken in Ward Group Pty. Limited v. Brodie & Stone plc (2005) 64 IPR 1 has earlier been referred to (at para. 27 above). The decisions of Deutsche Telekom AG v. E! Entertainment Television Inc. [2006] ATMO 33 and The Shoe Studio Group Limited v. Wittner’s (Australia) Pty. Limited (2007) 74 IPR 578 provide further illustrations of the limited reliance which should be placed on the Internet use of trade marks. Accordingly, the existence of reference to the “STUDIO 54” trade mark on the website is of little assistance to the Opponent in this instance.
In relation to the Opponent’s use of the “STUDIO 54” trade mark through the sale and distribution of clothing, souvenirs and promotional items, there is no evidence of any such sales having taken place in Australia or of such goods and items being known in Australia.
The issue of Australian visitors to Las Vegas, the extent to which the existence of such persons might be said to substantiate the presence of a reputation in the “STUDIO 54” trade mark in Australia, and the weight which should be attached to such evidence is a vexed question. I take the view, at least in relation to the present matter, that such evidence should be treated with caution and should be afforded limited recognition. In this regard I concur with the concerns expressed by Justice Lockhart in the ConAgra case, op. cit., at pages 238-9, namely:
Evidence of this kind has considerable difficulty, it seems to me, as proof of reputation. It is not possible to assess how many travellers on short visits to the United States would have watched television either at all or at the times of the appellant’s advertising, or would have visited shops or supermarkets , whether in the frozen food section or elsewhere. One does not know how many of the travellers would have been interested in the appellant’s product itself, especially as it was not available for sale in Australia. . . .
The most that one could conclude from this evidence, in my opinion, would be that some of the persons departing Australia for the United States or departing the United States for Australia, whether for short or long term visits, would be aware of the appellant’s frozen food products, but whether it would be a small or large number of the travellers is virtually impossible to assess. While some assistance to the appellant’s case is given by the evidence . . . it seems to me, at the end of the day, that the statistics of travel of persons between the two countries is a rather flimsy twig on which to support evidence of reputation of a truly worthwhile kind.
I note that in The Shoe Studio Group Limited v. Wittner’s (Australia) Pty. Limited, op. cit., at paras. 34 – 37 inclusive, in adopting the reasoning of Justice Lockhart, Hearing Officer Windsor rejected evidence as to statistics of travel between Australia and the U.S.A. . I incline to the view, at least in this instance, that those Australians who have visited the U.S.A. and the Opponent’s premises in Las Vegas as tourists (and indeed those Americans who may be visiting Australia) cannot be said to be typical of Australian consumers as a whole so that it is impossible to extrapolate the knowledge or the state of mind of those persons to the Australian population at large. In any event, there is no evidence before me as to what those Australian tourists might think in relation to the “STUDIO 54” trade mark.
In relation to the Opponent’s evidence generally, and paraphrasing the reasoning of Justice Hill (at first instance) in the ConAgra case (1991) 22 IPR 175 at 200, the problem is that while there is no doubt that there are persons in Australia who are aware of the “STUDIO 54” nightclub of the Opponent, I am unable to be satisfied on the evidence and on the balance of probabilities that there does exist in Australia a sufficiently substantial number of persons who are aware of the “STUDIO 54” name and trade mark and for whom that name could be said to have acquired a secondary meaning, that is to say, the meaning signifying the “STUDIO 54” nightclub owned and operated by the Opponent. The evidence does not, in my opinion, demonstrate the existence of a sufficient reputation in this country in respect of the “STUDIO 54” trade mark in favour of the Opponent as to satisfy the requirements of Section 60. There is evidence of an extensive reputation in respect of the “STUDIO 54” trade mark and in favour of the Opponent, but that reputation is limited to the U.S.A. and to the conduct and operation of its MGM Grand Hotel business. The Opponent has not established, at least to my satisfaction, that its reputation in respect of the “STUDIO 54” trade mark extends to Australia. Accordingly, it follows that the Opponent’s ground of opposition founded on Section 60 on this basis must fail.
Contrary To Law
The Opponent has also raised the ground of “contrary to law” as provided in Section 42(b) of the Act. Specifically, this ground raises the issues of passing-off, misleading or deceptive conduct pursuant to Section 52 of the Trade Practices Act, 1974 (Cth.), and false or misleading representations under Section 53 of that legislation (together with possible breaches of the corresponding provisions of the Fair Trading Acts in each State).
The law of passing-off does not apply in this instance because the threshold test of the need for a sufficient level of reputation in the jurisdiction has not been made out. Moreover, there is no misrepresentation and there is no damage, so that the fundamental elements of passing-off are not made out.
In relation to the present matter, my finding is that the ground of opposition relating to the submission that use of the applicant’s trade mark would be contrary to Sections 52 and 53 of the Trade Practices Act is not made out. Simply stated, Section 52 (which prohibits a corporation from engaging in misleading or deceptive conduct) and Section 53 (which prevents a corporation from falsely representing that it or its services have specific sponsorship, approval or affiliation) would be contravened if, in offering its services, the Applicant were to represent either directly or indirectly an association between itself and the Opponent when such representation is false. The evidence does not show that the Applicant has engaged in any such conduct or that any such misrepresentation has been made. Nor am I satisfied that adequate evidence has been provided to establish, either by fact or by inference, that a not insignificant number of persons in the Australian community have been misled or are likely to be misled.
Accordingly, the ground of objection pursuant to Section 42(b) of the Trade Marks Act fails, and the Opponent has not shown that use of the Applicant’s trade mark would to be contrary to law.
DECISION
In order to succeed, the Opponent only has to make out one of its grounds of opposition. In this instance, the Opponent has not been able to establish its case in relation to any ground or to discharge the onus which it bears. Accordingly, my decision is that the Opposition fails and that the trade mark application No. 1055565 may proceed to registration upon expiry of the appeal period. Should the Registrar be served with a notice of appeal within the prescribed time, I direct that registration shall not occur until the appeal has been decided or discontinued.
COSTS
The Opponent has sought an award of costs in its favour if it were to be successful. The Applicant has not sought an order for costs. The Opponent having been unsuccessful, I make no order as to costs.
John Spence
Hearing Officer
Trade Mark Hearings Section
10 February 2009
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