Museums Board of Victoria v Maryann Martinek

[2011] ATMO 122

TRADE MARKS ACT 1995

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

Re:Oppositions by Museums Board of Victoria to registration of ten trade mark applications filed in the name of Maryann Martinek, being:

1289376 (30) SAM THE KOALA & Device
1314502 (16 & 28) SAM THE KOALA
1315075 (39 & 41) SAM THE KOALA
1315364 (9) SAM THE KOALA
1315805 (30) SAM THE KOALA & Device

1316545 (16) SAM THE KOALA –FRIENDSHIP WRAPPED IN

CHOCOLATE & Device

1316552 (30) SAM THE KOALA & Device
1320782 (30) SAM THE KOALA CAKES & BISCUITS & Device
1321352 (30) SAM THE KOALA CHOCOLATES & Device
1321573 (30) SAM THE KOALA & Device

Delegate:	Michael Kirov
Representation:	Opponent: Siobhán Ryan of Counsel, instructed by Griffith Hack, Patent & Trade Mark Attorneys Applicant: No appearance
Decision:	2011 ATMO 122 s 52 oppositions: Grounds under ss 41 and 43 considered – trade marks not capable of distinguishing the Applicant’s goods or services – trade marks contain a connotation likely to deceive or cause confusion–oppositions established and registration refused. Costs awarded against the Applicant.

Background

1. These are oppositions brought by Museums Board of Victoria (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of ten applications filed in the name of Maryann Martinek (“the Applicant”) for trade marks containing or consisting of the words “SAM THE KOALA”.

2. The words in question are a reference to an injured koala rescued from burnt bushland in Victoria around the time severe fires in that State shocked the country in February 2009.  Publication by a newspaper of a photo of the injured koala at the time aroused strong public sympathy and affection around Australia and many people keenly followed news of Sam’s progress in the days and weeks that followed.  The Applicant, who describes herself in her evidence as “a business woman”, claims no direct connection with any of these events, but asserts her right to exploit the name “Sam the Koala” commercially for a wide range of goods including chocolates, cakes, colouring books for children, toys, games, audio and video recordings and for services in the fields of tourism, exhibitions and education.  The Opponent is one of two parties (the other being the Victorian Department of Sustainability and Environment) who have objected to these and similar applications by Ms Martinek, essentially arguing that the trade marks in question are not capable of distinguishing her goods and services of interest and that her use of the marks is likely to deceive or cause confusion or would otherwise be contrary to law.

3. Details of the opposed applications are as follows:

Regn No. (Class)	Priority Date	Trade Mark	Specification
1289376 (30)	13.03.09	Class: 30 Chocolates
1314502 (16 & 28)	11.08.09	SAM THE KOALA	Class: 16 Books for colouring purposes Class: 28 Tactile educational toys (playthings)
1315075 (39 & 41)	14.08.09	SAM THE KOALA	Class: 39 Provision of information relating to tourism; sightseeing (tourism) Class: 41 Electronic publication of information on a wide range of topics, including online and over a global computer network; weblog (blog) services (online publication of journals or diaries); childbirth education and training; conducting of exhibitions for educational purposes; provision of children's' educational services through play groups
1315364 (9)	16.08.09	SAM THE KOALA	Class: 9 Recorded media, including pre-recorded video cassettes, video tapes, digital video discs, digital versatile discs, compact discs, laser video discs, CD-ROM discs, floppy disks, phonograph records, audio tapes, audio cassettes, magnetic data carriers and optical data carriers; pre-recorded media featuring audio and/or visual content capturing experiences of visitors to zoos, animal parks and amusement parks and of attendees at live shows; pre-recorded media featuring entertainment, music, dancing and singing performances, educational content and/or recorded shows; pre-recorded media featuring content relating to fitness, health, animal welfare, veterinary practice, wildlife, ecosystems, habitats, the environment, conservation, biodiversity, rehabilitation, zoology and/or botany; electronic and multimedia publications, including newsletters and magazines which are downloadable or sold and distributed online, the aforesaid publications excluding publications relating specifically to politics; films including motion picture films featuring entertainment, music, dancing and singing performances, educational content, recorded shows and/or content relating to animal welfare, veterinary practice, fitness, health, wildlife, ecosystems, habitats, the environment, conservation, biodiversity, rehabilitation, zoology and botany; racks, cases and containers for recorded media; games in this class, including video games, computer games and downloadable games
1315805 (30)	19.08.09	Class: 30 Chocolates; liqueur chocolates; marshmallow filled chocolates; milk chocolates
1316545 (16)	23.08.09	Class: 16 Packages for chocolates
1316552 (30)	23.08.09	Class: 30 Chocolates; liqueur chocolates; marshmallow filled chocolates; milk chocolates
1320782 (30)	15.09.09	Class: 30 Cakes; edible decorations for cakes; biscuits with an iced topping
1321352 (30)	17.09.09	Class: 30 Chocolates
1321573 (30)	19.09.09	Class: 30 Chocolates

1. I will refer hereafter to the goods and services covered by the ten opposed applications collectively as “the Goods and Services” and to the ten opposed trade marks as “the Trade Marks”.

2. Following acceptance of the applications for registration the Opponent filed Notices of Opposition to application 1289376 on 18 January 2010 and to the remaining nine applications on 3 May 2010 (hereafter referred to collectively as “the Notices”).

3. The parties served Evidence in Support and Evidence in Answer as follows:

   Evidence in Support

   ▪ Statutory Declaration by Liza Dale-Hallett made 21 June 2010, with Exhibits

   LDH-1to LDH-7 (“Dale-Hallett 1”)

   ▪ Statutory Declaration by Liza Dale-Hallett made 2 August 2010, with Exhibits

   LDH-1 to LDH-8 (“Dale-Hallett 2”)

   (Dale-Hallett 1 relates to application 1289376 only and Dale-Hallett 2 to the other nine opposed applications.  The two declarations are essentially identical, however, with the sole difference being the inclusion in Dale-Hallett 2 of a photograph taken on 11 February 2009 at the Southern Ash Wildlife Shelter (“the SAWS Photograph”) said to be relevant to the oppositions to applications 1316545 and 1316552 based on copyright in the photograph.)

   Evidence in Answer

   ▪ Statutory Declaration by Mary-Ann[1] Martinek made 4 July 2010, with Annexures

   MM-STK_EIS1 to MM-STK_EIS4 (“Martinek 1”)

   ▪ Statutory Declaration by Mary-Ann Martinek made 3 November 2010, with Annexures MM-STKSTKC_EIA1 to MM-STKSTKC_EIA6 (“Martinek 2”)

   ▪ Statutory Declaration by Mary-Ann Martinek made 23 February 2011, with Annexures MM-EOT1 to MM-EOT6 (“Martinek 3”)

   (Martinek 1 and Martinek 3 relate to application 1289376 only, while Martinek 2 relates to all ten opposed applications.)

   [1] While nothing turns on this, I mention that although Ms Martinek appears to have filed the ten opposed applications with her given name spelled as “Maryann”, she made her three declarations in these proceedings spelling her name as “Mary-Ann”.

4. I heard the matter as delegate of the Registrar of Trade Marks on 19 September 2011 in Melbourne.  Siobhán Ryan of Counsel, instructed by Griffith Hack, Patent & Trade Mark Attorneys, appeared for the Opponent and also tendered written submissions.  She was accompanied by Peter Waldie of the Opponent.  The Applicant did not appear, nor was she represented, at the hearing and she did not file any written submissions.

   Grounds of Opposition

5. The Notices list a number of specific grounds corresponding to various provisions of the Act. However at the hearing Ms Ryan confirmed the Opponent would only be pressing the grounds based on ss 41, 42(b) and 43 of the Act. The s 41 and s 43 grounds are discussed below. As will become apparent, I have not found it necessary in this decision to consider the Opponent’s s 42(b) ground. I treat the remaining grounds listed in the Notices as abandoned. Of course should this decision be appealed, it would always remain open to the Opponent to plead any ground it chose in proceedings before the Court.

   Standard of Proof and Onus

6. As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 595, the relevant dates at which the rights of the Applicant are to be determined are the respective filing dates of the opposed applications.  Application 1289376 (“the Earliest Application”) has the earliest filing date, being 13 March 2009 (“the Earliest Priority Date”).  The remaining nine applications were filed in August and September 2009.

7. I proceed on the basis that the Opponent bears the initial onus of establishing one or more of the grounds of opposition pressed at the hearing on the balance of probabilities[2].  As discussed further in paragraph 36 below, nevertheless, if the Opponent establishes a prima facie case pursuant to s 41(3) of the Act the onus then shifts to the Applicant to establish, on the balance of probabilities, that either ss 41(5) or (6) should apply.

   [2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].

   The Evidence

8. Liza Dale-Hallett is Senior Curator of the Sustainable Futures, History & Technology Department of the Opponent.  She explains that on 1 February 2009 an injured koala was found in burnt bushland on Samson Road, Mirboo North, some 150 kilometres south east of Melbourne, by firefighters from the Victorian Department of Sustainability and Environment (“the DSE”) and the Country Fire Authority (“the CFA”).  At the time a DSE firefighter named Mark Pardew took a photograph of the injured koala receiving water from the drink bottle of a CFA firefighter (“the Pardew photograph”).  Members of Wildlife Rescue and Protection Inc (“WRAPS”), a specially trained volunteer group who assist in wildlife rescue, were subsequently alerted to the koala’s plight on 4 February but were not provided with details of her location until 6 February, when she was again found and placed in the care of the Southern Ash Wildlife Shelter (“SAWS”).  As apparently often happens with rescued wildlife, the koala assumed the name given to her by her rescuers, Sam, which was based on the name of the road next to where she was found.

9. The day following Sam’s rescue, 7 February 2009, has since entered the national consciousness and become known as “Black Saturday”, being the day extremely severe bushfires ravaged Victoria with the loss of more than 150 lives.  In the following days and weeks, Ms Dale-Hallett relates, “Sam the Koala” became very well known around Australia and beyond following publication of the Pardew photograph in the Herald Sun newspaper on 10 February, when the true extent of the bushfires was just becoming known.

10. Exhibits LDH-1 to Dale-Hallett 1 and Dale-Hallett 2 show the Pardew photograph:

    Photographer - Mark Pardew
    © State of Victoria, Department of Sustainability and Environment 2009
    Provided courtesy of the Department of Sustainability and Environment

11. As Ms Dale-Hallett further explains[3]:

    The publication of Sam's image just days after the shocking news of Black Saturday, touched millions of people.  Sam became a symbol of hope and resilience amidst the loss and trauma of Australia's worst bushfires on record.  Sam's image also gave prominence to the impact of the bushfires on native animals, and the important role of wildlife rescue.

    Mark Pardew's image of Sam featured on the front page of the Herald-Sun Newspaper on 10 February, 2009.  The image was subsequently picked up by media outlets around the world.  In addition to local and national media outlets, interest came from Asia, Italy, USA, Japan, United Kingdom, Germany, China and Sweden.  Sam's story was featured on numerous national and international shows, including the NBC, Ellen De Generes, and television programs in the United Kingdom, France, Germany and China.

    The media and public attention was very intense.  Sam quickly established a strong web presence and soon became the most famous koala in the world.  A host of websites, blogs and wiki were created to track her progress.  Her rescue video is a YouTube sensation.  She even has a Facebook page with over 60,000 fans.

    Sam's media success generated a huge public response in the form of letters, emails and offers of assistance.  While much of this was welcome, the wildlife volunteers were soon avalanched by over 30,000 emails.  SAWS created a 'Sam the Koala' website to help manage the overwhelming public interest and to provide accurate information about Sam and her recovery.  Unfortunately, Sam succumbed to chlamydiosis and was euthanized on 6 August, 2009.

    [3] Dale-Hallett 1, paragraphs 8 to 11; Dale-Hallett 2, paragraphs 8 to 10 and paragraph 12.

12. The name “Sam the Koala” remained in the public consciousness even after the death of the rescued koala.  As Ms Dale-Hallett explains[4]:

    Victorian native animals are protected by the Victorian Wildlife Act (1975) which is administered through DSE.  After Sam's death, DSE transferred her body into the custody and care of [the Opponent].  [The Opponent] is authorised under the Museums Act (1983) to act as an official repository for specimens of native animals which may have special scientific, cultural or historical significance.

    A primary role of [the Opponent] is to research the history of Victoria, its people, lands and animals.

    [The Opponent] uses a variety of means to publicise and promote its research, exhibitions and collections.  In addition to selective advertisements for its exhibitions and public events, the bulk of publicity is secured through free editorials and media interviews.

    [4] Dale-Hallett 1, paragraphs 12 to 14; Dale-Hallett 2, paragraphs 13 to 15.

13. Ms Dale-Hallett goes on to relate the various activities the Opponent has undertaken to preserve Sam’s legacy, including display at Museum Victoria of what the Opponent says is Sam’s body[5], an audio-visual display at the museum of stills and moving pictures of Sam at SAWS during her rehabilitation, display of materials used in wildlife rescue, pages dedicated to Sam on its “Collections Online” website, production of information sheets for the public about Sam and wildlife rescue and plans for “future souvenirs…that offer Museum Victoria visitors opportunities to collect a memento of their visit to see Sam the Koala”.  She notes that as at the time her declarations were made in 2010[6]:

    Sam the Koala is now part of the State Heritage Collection and will be on permanent display at Museum Victoria.  Sam will remain part of the State Heritage Collection in perpetuity.  As a part of the State Heritage Collection at Museum Victoria, Sam the Koala and her story represent an iconic cultural and historic symbol of a significant moment in Victoria’s history and the collective memory of the Black Saturday bushfires.  She is known publicly throughout Victoria, Australia and the world as Sam the Koala.

    Sam the Koala also forms part of the larger Victorian Bushfires Collection and, as such, future collection acquisitions, public programs and exhibitions will be developed around Sam the Koala.  Sam’s placement in Melbourne Museum will preserve her story, and her extraordinary role in providing a source of hope to those devastated by the February 2009 bushfires.  She will also play an important role in educating the community about issues relating to koalas, changes in habitat, the impact of fire on wildlife and the role of wildlife rescue.

    The Victorian Bushfires Collection is an active research project within which Sam the Koala is an iconic theme.  The community interest in Sam and the associated stories will continue to emerge over the coming years and decades as communities recover from the devastation of the 2009 bushfires and seek to understand and interpret the impact these fires had on their communities, landscapes, habitats and wildlife.

    [5] As to which see paragraphs 21 and 22 below.

    [6] Dale-Hallett 1, paragraphs 23 to 25; Dale-Hallett 2, paragraphs 24 to 26.

14. As regards “future souvenirs” in particular, Ms Dale-Hallett exhibits “samples of merchandising of Phar Lap” (being goods falling within Classes 9 and 16) and states:

    Phar Lap is a national and international icon, much loved and with an important place in the history of Australian racing.  Now at Melbourne Museum, Phar Lap and associated memorabilia remain among the most popular of the Museum’s exhibits.  I anticipate that Sam the Koala will have a power and value as strong as Phar Lap.  There is a strong likelihood that [the Opponent] will advertise, promote and sell memorabilia related to SAM THE KOALA in the future.  That memorabilia may well encompass the goods covered by the [opposed applications].

15. Turning to the Applicant’s evidence, Martinek 1 was served and filed in relation to the Earliest Application only.  It is essentially wholly reproduced (including its Exhibits) in Martinek 2, which was itself served and filed in relation to all ten opposed applications.  Martinek 1 is thus effectively redundant.  That said, neither Martinek 1 nor Martinek 2 appears to be of obvious relevance to the oppositions, although they do contain some background to the Applicant’s employment history and business ventures as at 2001 and a history of her trade mark and business name applications/registrations as of 2001.  Martinek 2 also refers to two articles published in August 2009 in the Herald Sun newspaper which apparently reflected poorly on the Applicant’s applying to register trade marks featuring the name Sam the Koala and intention to exploit them for private commercial gain.  The Applicant successfully complained to the Australian Press Council regarding certain aspects of the articles (unrelated to her trade mark applications) and exhibits the Council’s adjudication in this regard.

16. The two declarations do also exhibit the results of searches of the online databases of IP Australia and the Australian Securities & Investments Commission on the words “phar (Part word) AND lap (Part word)”.  In relation to these searches the Applicant states in Martinek 1 that[7]:

    The evidence in support related to Pharlap is insufficient to establish that private Australian citizens have not trademarked famous animals or used them in connection to registered business names, goods or services.  I did a basic search of Pharlap on ASIC.gov.au in business names and on IPAustralia.gov.au in trademarks.  [The Opponent] opposed a Pharlap trademark registration TM934500 in 2004 (Classes 16, 18, 21, 25, 28 and Class 41 where “Museum services” were applied for) but did not oppose TM1279477 (Class 33 wines) registered in 2009. (sic)[8]

    [7] Martinek 1, paragraph 5.

    [8] I mention that my own search of the Trade Marks Register indicates there is only one current registration for the trade mark PHAR LAP (covering “Foodstuffs for animals” in Class 31) and one for the trade mark PHAR-LAP (covering “Wines” in Class 33). “Registration” 934500 PHAR LAP referred to by the Applicant was an application by Racing Victoria Limited to which IP Australia objected under s 41(5) of the Act but which was eventually accepted when any goods or services it covered “relating to the former famous thoroughbred race horse known as Phar Lap” were specifically excluded. The application was subsequently withdrawn (without ever achieving registration) when it was opposed by the Museums Board of Victoria.

1. The Applicant further states in Martinek 2[9]:

   Sam the Koala the Melbourne Museum Exhibit is not a living legend she was an extraordinary example of the “Dianna Effect” which is how the future of news platforms will operate across a wide and popular spectrum of social networking sites like YouTube and Twitter.  PHARLAP who is a Living Legend has been registered as trademarks and as registered business names which established that private Australian citizens have trademarked famous animals or used them in connection to registered business names, goods or services.  (sic)

   [9] Martinek 2, paragraph 7.

2. Martinek 1 and 2 also exhibit Issue 8 (2010) of the Australasian Journal of Herpetology, the entire 64 pages of which is taken up with an article entitled “Sam the Scam: Sam the Koala is an imposter!”  The article in question essentially confirms, on the face of it, that the name Sam the Koala quickly became well known following the Black Saturday bushfires as a result of worldwide newspaper and YouTube® coverage in mid-February 2009 (as stated by Ms Dale-Hallett), but alleges:

   …the video depicted was carefully planned and executed and not an unexpected and random act of kindness caught on film as alleged by [a CFA employee] and agents.  It was in fact a bootleg of at least two similar acts both predating the making of this video and known to all or most people actively promoting “Sam the Koala”.  The depicted Koala had been “planted” for the express purpose of making the pre-planned video and associated photos and was [the CFA employee’s] second attempt at making a famous “bear” named “Sam”.  The origin of the idea goes back at least as far as 2003 and probably further.  The stuffed Koala at the [Melbourne] Museum, now identified as “Sam the Koala”, is female and not the same koala depicted in the original video and photos.  It is therefore an imposter and fraud.

3. It is convenient to here note that I agree with Ms Ryan’s assessment of this particular evidence in her written submissions, namely that:

   The majority of the evidence of the Applicant is irrelevant.  It concerns a theory that the Sam the Koala currently on display at the Melbourne Museum is not the same Sam the Koala originally photographed during the Bushfires.  While the Opponent does not accept that theory, whether it is true or not is entirely irrelevant to any issue open for determination by the Registrar.  This matter concerns the fame of the name “Sam the Koala”, not who Sam the Koala is.

   That part of the Applicant’s evidence which is relevant, reinforces that, in February 2009, Sam the Koala became a famous name to millions of Australians and a name strongly associated with the Bushfires and, more importantly, associated with certain bodies linked to the care of a koala called “Sam the Koala”.  Those bodies do not include and are not affiliated or associated with the Applicant.

4. Martinek 3 only relates to the opposition to the Earliest Application.  It outlines the process the Applicant went through under the Freedom of Information Act 1982 to obtain “all documentation” held by the DSE that related to, or mentioned, “Sam the Koala”.  The documentation eventually received is exhibited with the declaration.  Again, I am unable to see how any of this documentation might assist the Applicant.  Indeed, as Ms Ryan pointed out at the hearing, amongst the DSE documents exhibited is a copy of an email dated 15 April 2009 from The Herald & Weekly Times Pty Limited[10] to the DSE indicating the DSE was making significant profits from the Pardew photograph from at least March 2009, $300,000.00 of which were donated to the CFA.  The email in question states in part:

   I am pleased to report that to the end of March 2009, the sale of Sam the Koala photographs has raised $485,782.96 (inc GST).  This figure does not include any sales made in April.  Sales continued this month and I will update you shortly.

   Please can you advise where payments over and above $300,000.00 should be made.  In respect of the $300,000.00, we have received a request directly from the CFA to pay their funds to Volunteer Fire Brigades Victoria Black Saturday Volunteer Recovery Fund.

   However, we require instructions from DSE as regards payment to other organisations.

   [10] The Herald & Weekly Times Pty Limited is the publisher of the (Melbourne) Herald Sun.

5. Ms Ryan also drew my attention to a copy of an email dated 11 August 2009 from the DSE to the Herald Sun newspaper exhibited with Martinek 3 which indicates the DSE was then allowing use of the Pardew photograph and related video for non-profit and charitable purposes.  This email states in part:

   As the image of Sam the Koala with [a CFA employee] was taken by a DSE contractor [Mark Pardew], DSE owns the copyright in the video and photographic images.  DSE has allowed the use of the image under licence in the past for non-profit or charitable purposes but has not been consulted in this case.

6. I mention in passing that the Pardew photograph appears on the face of it to have been substantially reproduced in the trade mark subject of the Earliest Application.  The fact that the Applicant does not have the copyright owner’s permission for this formed part of the basis of Ms Ryan’s submission that use of the photograph in this manner would be contrary to law[11]. As indicated earlier, however, I have not found it necessary to consider the Opponent’s s 42(b) ground of opposition in detail in this decision.

   [11] Ms Ryan also submitted that use of the trade mark in question as a whole as at the Earliest Priority Date would be in breach ss 52 and 53(c) of the Trade Practices Act 1974.

   Discussion

   Museums Board of Victoria v Martinek [2011] ATMO 65

7. Before discussing the ground of opposition based on s 41 of the Act it is relevant to mention that the Opponent has already successfully opposed two other applications by Ms Martinek for trade marks featuring the name Sam the Koala based on this section of the Act. These were applications 1286158 SAM THE KOALA filed on 20 February 2009 covering “Chocolates” in Class 30 and 1290731 for the mark shown below, which was filed on 20 March 2009 covering “Books for colouring purposes” in Class 16:

1. Dale-Hallett 1 and both Martinek 1 and 2 were also relied upon by the parties before the Registrar’s delegate on that occasion and in fact constituted all of the evidence in the earlier oppositions.

2. Based upon that evidence the Registrar’s delegate, in passages highlighted by Ms Ryan at the hearing before me, considered in her decision of 20 July 2011[12] that:

   The opponent has made a convincing case that, at the time Ms Martinek filed her trade mark applications featuring ‘Sam the Koala’ (in February and March 2009), that name already significantly lacked capacity to distinguish her goods from those of other traders.  The tragic circumstances of Victoria’s Black Saturday wildfires, which led to the plight of ‘Sam the Koala’ being thrust into the media spotlight, meant that her fame arose almost instantaneously from the publication of that first striking photograph.  This result occurred quite in isolation from the question of whether later publicity featured the same koala or if a different ‘body double’ was used, as Ms Martinek has suggested.  The name ‘Sam the Koala’, associated with the koala in the photograph from its first publication, became from that point a potent idea in the public mind.  And as Mr Cordiner [the Opponent’s Counsel] aptly put it, she became an icon of hope and an important focus for the outpouring of public grief and charity in the aftermath of the dreadful events which claimed so many lives.

   Ms Martinek may indeed be correct in suggesting that the kind of enduring fame associated with last century’s Melbourne Cup winning racehorse Phar Lap may be quite different from that which was instantly imparted upon ‘Sam the Koala’ by the global media.  However, just because today a name can become ‘world famous’ so very much faster than was ever possible in pre-internet times, and even if that fame may later dissolve with equal rapidity, at the mercy of the ebb and flow of media attention, these differences do not make such fame any less real when it occurs.  In the present cases, the opponent’s evidence has established that the surrounding circumstances of the emergence of the name ‘Sam the Koala’ created a very strong likelihood that, at the time the trade mark applications were filed, various other persons might also have thought of that name and wanted to use it on goods similar to the applicant’s goods, in a manner which might have infringed those trade marks, if they became registered.  Further, the evidence specifically identifies various parties, in addition to the opponent, who all played an early part in the koala’s story, and hence would have had a particularly strong interest in doing just that.  The opponent, as custodian of the State Heritage Collection was, even before Sam’s untimely death, always a likely future custodian for a ‘Sam the Koala’ museum exhibit.  It has described in its evidence the actions already taken in connection with the exhibit, and its proposals for a variety of future uses of the name, such as on museum memorabilia.  The Victorian Department of Sustainability, the Country Fire Authority and Wildlife Rescue and Protection Inc might all also have wished, without improper motives, to use their connection with the name ‘Sam the Koala’ for fundraising, educational, or other trading purposes.  The applicant’s specific goods of interest here, colouring books and chocolates, are, as Mr Cordiner pointed out, ideally suited for all such activities.

   Having weighed into the balance all the circumstances of these oppositions, I find that the opponent has met the onus upon it in terms of its ground of opposition under section 41. I have been persuaded that both the applicant’s trade marks lack sufficient capacity to distinguish her goods in terms of subsection 41(3) of the Act – trade mark 1286158 being simply the name ‘Sam the Koala’ solus, and 1290731 being the name with a koala device which clearly reinforces the significance of that name (See E. & J. Gallo Winery v Lion Nathan Australia Pty Limited (2010) 86 IPR 224 at [69]). However, I do agree with the opponent that the trade marks do not fall into that category of marks under subsection 41(6) as having no capacity to distinguish the applicant’s goods whatsoever. Therefore, the onus now falls upon the applicant to satisfy me in terms of subsection 41(5) that, because of her use, or intended use of the trade marks, or any other relevant circumstances, the trade marks are in fact capable of distinguishing her goods from those of other traders.

   [12] Museums Board of Victoria v Martinek [2011] ATMO 65, per Hearing Officer Claudia Murray at [21] to [23].

3. As to whether Ms Martinek had discharged this s 41(5) onus on the evidence before her, the delegate concluded (at [24]):

   Ms Martinek referred in her evidence and submissions to the media attention which she experienced in August 2009.  She argued that, in the course of branding her a ‘colourful character’, this attention actually represented ‘free marketing’, effectively establishing her ownership of the trade marks.  I disagree with this assessment.  If anything, this outburst of negative reporting reinforces the opponent’s argument that the public should have a common right to use the name ‘Sam the Koala’.  The media, in typical ‘over the top’ fashion, was merely reflecting a general public unease that a claim to exclusive trade mark ownership of the name by any single trader was somehow inappropriate and unacceptable.  Ms Martinek also referred in her submissions at the hearing to her use of the name ‘Sam the Koala’ on the internet, particularly on social networking sites, and her intention to apply the name to chocolates and colouring books sometime in the future.  However, as Mr Cordiner quickly pointed out, such submissions did not represent the kind of documented evidence in declaratory form necessary for the provisions of subsection 41(5) to be satisfied in this instance.

4. While acknowledging that I was not bound by the decision in the earlier oppositions, Ms Ryan submitted that it would be appropriate to find the delegate’s conclusion with respect to the s 41 issue persuasive because:

   ·     It would be in the interests of comity to do so;

   ·     With the exception of Martinek 3, (which, as indicated in paragraphs 23 and 24 above, if anything favours the Opponent’s case), the identical evidence was before me as was before the delegate; and

   ·     In reaching her decision the delegate had had, in addition to the Applicant’s evidence, the benefit of the Applicant’s presence and submissions at the hearing.

5. With that as background I turn now to a consideration of the Opponent’s s 41 ground of opposition, bearing in mind the wide range of the Goods and Services covered by the ten currently opposed applications.

   Section 41

6. The ground based on s 41 of the Act is indicated in the Notices as follows:

   The [Trade Marks are] not capable of distinguishing the Applicant’s goods or services from the goods or services of other persons[13].

   [13] I note s 6 of the Act states “‘person’ includes a body of persons, whether incorporated or not.”

7. Section 41 is reproduced below:

   Trade mark not distinguishing applicant's goods or services

   41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1:  For applicant and predecessor in title see section 6.

   Note 2:  If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

   (2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

   Note:  For goods of a person and services of a person see section 6.

   (3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   (4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

   (a) the Registrar is to consider whether, because of the combined effect of the following:

   (i)   the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
   (ii)  the use, or intended use, of the trade mark by the applicant;
   (iii) any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

   (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
   (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

   Note 1:  For goods of a person and services of a person see section 6.

   Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

   (6) If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

   (a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
   (b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

   Note 1:  Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)  the time of production of goods or of the rendering of services.

   Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

   The operation of Section 41

8. The operation of s 41 was analysed by Branson J in the leading case of Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 (“Blount”) as follows (at 504):

   Subsections (3)–(6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the registrar first to ``take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons'’. Having taken such matter into account, it is theoretically open to the registrar to conclude:

   (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

   (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

9. In accordance with Branson J’s above analysis the first issue which arises for consideration is therefore that under s 41(3), namely “the extent to which the [Trade Marks are] inherently adapted to distinguish [the Goods and Services] from the goods or services of other persons”. Before turning to this enquiry, however, it is convenient to say something about which party bears the onus of establishing the various matters specified in s 41.

   Onus under Section 41

10. It is well established that the onus with respect to s 41(3) of the Act falls upon an opponent. However if, after considering the s 41(3) issue, the Registrar (or her delegate) then concludes the mark in question is not to any extent inherently adapted to distinguish the relevant goods or services, or is left uncertain whether it is sufficiently adapted as to be capable of distinguishing them on that basis alone, the onus then shifts to the applicant to establish the matters specified in ss 41(6) or 41(5), as the case may be. As Kenny J put it in Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300[14]:

    [14] At [26] to [29] and at [40].

    [26] At the acceptance stage under s 33 of the Act and on appeal from such a decision, there is said to be a presumption of registrability: see Woolworths[15] at [24] per French J. This presumption arises from s 33, pursuant to which an application must be registered, unless the registrar is satisfied that there is a ground for rejecting it. In other words, as Sundberg J said in Chocolaterie Guylian[16] at [16], “a mark will be presumed registrable unless the registrar is satisfied, on the balance of probabilities, that a ground to reject it exists”.

    [15] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411.

    [16] Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 82 IPR 13.

    [27] There is also said to be a presumption of registrability at the opposition stage and in an appeal under s 56 (as here): see Pfizer Products Inc v Karam(2006) 237 ALR 787 ; 70 IPR 599 ; [2006] FCA 1663 at [8] (Pfizer Products) per Gyles J. For the reasons about to be stated, however, in the present case only the application of s 41(3) is to be considered with the presumption in mind.

    [28] I accept that, for the reasons explained by Sundberg J in Chocolaterie Guylian at [21], the effect of the presumption on s 41(3) is that, in considering whether a mark is capable of distinguishing the goods or services of the applicant from the goods or services of other persons, by reason of being “inherently adapted”, the mark is presumed to be sufficiently adapted unless the registrar is not so satisfied on the balance of probabilities. If the registrar is not so satisfied, then the registrar will be “unable to decide the question” (s 41(4)) whether the mark is capable of distinguishing on the basis of any inherent adaptation alone, and must proceed to consider s 41(5) or (6). The presumption has no part to play under either of these subsections because the applicant is required either to “satisfy” the registrar that the mark does or will distinguish in accordance with the criteria in s 41(5), or to “establish” that the mark does distinguish in accordance with the criterion in s 41(6).

    [29] Generally speaking, at the opposition stage and on appeal from a decision on an opposition, the opponent to the registration of the mark bears the onus of establishing a ground of opposition: Lomas v Winton Shire Council (2003) AIPC 91-839 ; [2002] FCAFC 413 at [36] (Lomas) and Torpedoes Sportswear[17] at [15]. The position is different under s 41(5) and (6) of the Act: see below.

    …

    [40] …[sections 41(5) and 41(6)] require the applicant for registration to “satisfy” the registrar (s 41(5)), or “establish” (s 41(6)), that the relevant criteria are met: compare Chocolaterie Guylian at [21]. As Branson J said in Blount at 56, referring to Rejfek v McElroy (1965) 112 CLR 517 at 521 ; [1966] ALR 270 at 272:

    Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities … That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

    Under s 41(5), the registrar must be persuaded by the applicant on the balance of probabilities that the trade mark does or will distinguish, having regard to the considerations in s 41(5)(a). The standard is the same under s 41(6), where the applicant must establish on the balance of probabilities that the mark does distinguish “because of the extent to which the applicant has used the trade mark before the filing date”.

    [17] Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 59 IPR 318.

    Consideration of the Trade Marks under s 41(3)

1. In the matter at hand the Opponent accepted, and I agree, that the Trade Marks contain at least some inherent adaptation to distinguish the Goods and Services, but nevertheless argued they were not sufficiently inherently adapted to distinguish them from the goods or services of other persons as to qualify for registration on that basis alone.

2. As regards inherent adaptation to distinguish, Ms Ryan highlighted in her submissions the well known words of Kitto J[18] in Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 (“Clark”), which concerned the claimed trade mark MICHIGAN, at 514:

   [T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

   [18] In effect paraphrasing the words of Lord Parker of Waddington in Re W & G du Cros Ltd’s Application (1913) 30 RPC 660 that Kitto J had earlier (at 514) quoted with approval.

3. She argued that the fact that the DSE had already exploited the name Sam the Koala through substantial sales of the Pardew photograph prior to the Earliest Priority Date showed the name lacked significant inherent adaptation to distinguish the Goods and Services.  Moreover, she argued, the activities of the Opponent in putting the koala’s body on public display and in producing related online and print materials after the Earliest Priority Date also demonstrated persons other than the Applicant were likely to want to use the name Sam the Koala “in a manner which would infringe a registered trade mark granted in respect of it”.  In this regard Ms Ryan noted Sundberg J had observed in Chocolaterie Guylian at [54] that:

   In assessing as at the priority date the “likelihood” that other traders will behave in a certain way in the future, evidence of how they have in fact come to behave will be relevant, although close attention should be paid to whether such rival behaviour has been “actuated only by proper motives”. In the absence of evidence of improper motive, however, it seems to me logical and appropriate that post priority date events should, where appropriate, be taken into account by decision makers in exercise of the “evaluative judgment” (see French J in Kenman Kandy[19] at [47]) required under s 41(3).

   [19] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 30.

4. Ms Ryan also highlighted that Chocolaterie Guylian, which concerned the inherent adaptation of a particular shape to distinguish chocolate, illustrated that:

   …a mark may lack inherent adaptation to distinguish even though the mark is not descriptive of the goods of which registration is sought.  Thus it is that famous names may also lack inherent adaptability to distinguish.  The ultimate question being the likelihood of other traders (including the famous icon, or entities approved, affiliated or sponsored by the famous icon) wanting to use the name as a mark (or a substantially identical or deceptively similar mark) in respect of the goods in question.

5. I mention in passing that Lindgren J also stressed in Kenman Kandy at [96] to [97] with respect to “the Clark line of authority” that Kitto J:

   does not purport to identify all the circumstances in which a mark will be (or, for that matter, will not be) inherently adapted to distinguish.  Clark Equipment establishes one negative test, the failing of which means that a mark is not inherently adapted to distinguish.

6. Ms Ryan noted, too, the interplay between s 41 and s 43 in “famous name” cases, as discussed in the Australian Trade Marks Manual of Practice and Procedure at Part 22 Paragraph 18.2:

   Section 41 objections would generally only be required in those cases where the famous name could be considered to be descriptively relevant in relation to the subject matter of the goods or services to which the trade mark was being applied. This would most obviously be the case for publications in Class 16, electronic media in Class 9 and educational and entertainment services in Class 41.

   An application for Shane Warne in Class 16 covering publications would attract objections on the basis that the name Shane Warne was a reference to the subject matter of the goods and should legitimately be open for use by others in this way.

   Section 43 objections would also be relevant on the basis that the trade mark describes the goods as having the approval of Shane Warne when in fact they may not have any connection with him.

   Whether a section 41 objection is raised will depend on the fame or notoriety of the person or group in question. Foe instance, if the name relates to a person or group that others may wish to use as the subject matter for books, movies or other media, then it is unlikely to be considered inherently adapted to distinguish.

7. Ms Ryan submitted that the above quoted words in relation to s 41 were particularly apt as far as the “books for colouring purposes” (Class 16), “tactile educational toys” (Class 28), “provision of tourist information” (Class 39), “electronic publication of information and conducting exhibitions for educational purposes” (Class 41) and the “(pre)recorded media (Class 9) covered by applications 1314502, 1315075 and 1315364 were concerned.  I agree.  Other traders were likely as at the Earliest Priority Date, in my view and on the evidence before me, to have wanted to use the words “Sam the Koala” in relation to their similar goods or services in Classed 9, 16, 39 or 41 for, (to adopt Kitto J’s words in Clark), “the sake of the signification which they ordinarily possess”.

8. As regards the Applicant’s other goods of interest, including “chocolates”, “packages for chocolates” and “cakes” and “biscuits” and the like, Ms Ryan submitted that:

   …the context in which Sam the Koala became famous is very important.  His fame arose by reason of the Pardew photograph and as a survivor and icon of hope during and after the Bushfires.  There was, at that time and for a great deal of time thereafter, a significant outpouring of grief and charity arising by reason of the Bushfires.  Within days, Sam the Koala became a significant symbol of hope during that devastation and, in particular, a figure-head for the wildlife group who looked after koalas affected by fire, SAWS and the firefighters of those fires (including the CFA and DSE).  Given chocolate sales are a typical and well known tool for fundraising, it would be likely that those organisations and others would wish to use the words “Sam the Koala” and the images associated with the Pardew and SAWS photographs in connection with the sale of chocolates [and cakes, biscuits and the like] for fundraising in respect of the Bushfires or, more specifically, fire affected wildlife.

9. Again, I agree with this submission.  I do think, like Hearing Officer Murray in the earlier, similar oppositions between the parties, that[20]:

   …the opponent’s evidence has established that the surrounding circumstances of the emergence of the name ‘Sam the Koala’ created a very strong likelihood that, at the time the trade mark applications were filed, various other persons might also have thought of that name and wanted to use it on goods similar to the applicant’s goods, in a manner which might have infringed those trade marks, if they became registered.  Further, the evidence specifically identifies various parties, in addition to the opponent, who all played an early part in the koala’s story, and hence would have had a particularly strong interest in doing just that.

   [20] Museums Board of Victoria v Martinek [2011] ATMO 65, per Hearing Officer Claudia Murray at [22].

10. As a consequence, I find I am unable to decide whether the Trade Marks contain sufficient inherent adaptation to distinguish any of the Goods and Services from the similar goods or services of other traders as to qualify for registration on that basis alone.

    Consideration of the Trade Marks under s 41(5)

11. In these circumstances section 41(4) of the Act indicates s 41(5) applies with, as discussed earlier, the Applicant bearing the relevant onus of proof.

12. There is however no evidence before me of any actual use of the Trade Marks or of the Applicant’s future intended use, nor are there any “other circumstances” discernible from the Applicant’s evidence in terms of s 41(5)(a)(iii) of the Act, which might indicate any of the Trade Marks “does or will distinguish the designated goods or services from the goods or services of other persons”.

13. The Applicant has accordingly not established that the provisions of s 41(5) of the Act should be applied in her favour in relation to any of the Trade Marks. I thus find the Opponent’s s 41 ground of opposition is established.

    Section 43

14. As indicated in paragraph 42 above, there may be an overlap between s 41 and s 43 in “famous name” cases where the fame of the person, or in this case of a koala, is likely to suggest to the public that goods or services bearing the famous name have some affiliation or sponsorship or approval they may not in fact have. Ms Ryan argued that the name Sam the Koala was in this category.

15. The ground based on s 43 of the Act is indicated in the Notices as follows:

    The use of the [Trade Marks] in relation to [the Goods and Services] would be likely to deceive or cause confusion because of some connotation in the [Trade Marks] or in a sign contained in the [Trade Marks].

16. Section 43 is reproduced below:

    Trade mark likely to deceive or cause confusion

    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.

17. Referring to McCorquodale v Masterson[21] (“Diana’s Legacy”) in particular, Ms Ryan submitted there was a significant line of authority indicating s 43 might be invoked where, as Giles J put it in Pfizer Products Inc v Karam[22], the connotation contained within the trade mark was “an implication of sponsorship or association”.  She submitted that in the current oppositions “the following factors point to the opposed marks connoting sponsorship or approval of entities with which the Applicant has no association”:

    ·     The words “Sam the Koala” are singularly referable to the koala which became famous because of the Pardew photograph and her inspiring story of rescue and rehabilitation;

    ·     The association of “Sam the Koala” with volunteer organisations such as the CFA, WRAPS and SAWS;

    ·     The association of “Sam the Koala” with Government entities such as DSE and the [Opponent];

    ·     The appropriateness of the goods and services which are the subject of the opposed applications for exploitation for educational and charitable purposes;

    ·     That DSE had been selling copies of the Pardew photograph and permitting use of the image under licence for charitable and non-profit purposes since at least March 2009;

    ·     The precedent of the [Opponent’s] marketing of Pharlap memorabilia; and

    ·     The actual marketing of the “Sam the Koala” exhibition by the Opponent.

    [21] (2004) 63 IPR 582. Ms Ryan also referred me to Twentieth Century Fox Film Corp v South Australian Brewing Co Ltd (1996) 34 IPR 225 (DUFF BEER), Durkan v Twentieth Century Fox Film Corp (2000) 47 IPR 651 (BRAVEHEART THE MUSICAL), Amalgamated Television Services Pty Ltd v Clissold (2000) 52 IPR 207 (HOME & AWAY) and Marc Chagall Committee v Elite Wines & Spirits (2007) 73 IPR 552 (MARC CHAGALL).

    [22] (2006) 70 IPR 599, at [55].

18. Ms Ryan argued the situation in the present oppositions was similar to that in Diana’s Legacy.  Indeed, the Applicant herself maintained in Martinek 2 (at paragraph 7) that the publicity and instant fame surrounding Sam the Koala was “an extraordinary example of the ‘Dianna Effect’” (sic).  In Diana’s Legacy, Ms Ryan said, there was evidence that Princess Diana did not use her name for endorsement during her lifetime but that, as Kenny J put it at [9], “an unprecedented outpouring of public grief” upon her death led to the establishment of a charitable memorial fund. In holding the s 43 ground of opposition was established and refusing registration, her Honour said[23]:

    As we have seen, the authorities recognise that, in circumstances such as these, the sponsorship or endorsement of the proprietor of the intellectual property in the name or image of a celebrity may well be implied. Whether or not it does is a matter of fact and degree. As I have said, I am satisfied that the words “Diana’s Legacy in Roses”, together with the stylised “D”, directly and immediately connote the late Princess Diana. The practice of licensing names and likenesses of celebrities, such as the late Princess, is now well recognised in the community. Although the Princess did not in her lifetime derive any personal profit from the use of her name and image, she plainly used (or permitted the use of) her name and image for the fundraising activities of the charitable causes that she supported. As already found, before the priority date, a relevantly significant sector of consumers knew of the fund and its licensing and charitable activities. The goods to which the impugned mark would apply have a real connection in the public mind with the late Princess. In all the circumstances, I find that the impugned mark would not only directly and immediately connote the late Princess, the impugned mark would also bespeak an association with the fund and the estate of the late Princess. There is a real likelihood that consumers would understand that goods bearing the impugned mark are in some way sponsored or approved by the fund or the Princess’ estate, even if they were ignorant about the specific details of the arrangements. The likelihood of this misunderstanding is sufficient to create a likelihood of confusion and deception in Australia, by reason of the connotation of the mark.

    [23] (2006) 70 IPR 599, at [60].

19. As far as the present oppositions are concerned, Ms Ryan submitted that the connotation, or “secondary signification” as she put it, of the name Sam the Koala was “the role that this koala assumed as a symbol of hope and ‘an important focus for the outpouring of public grief and charity in the aftermath of [the Bushfires][24].’  She highlighted the fact that there were a number of obvious entities such as the Opponent, the DSE, the CFA, WRAPS and SAWS which might be expected to use their connection with Sam the Koala for fundraising, educational or other trading purposes.  Indeed, the Applicant’s own evidence showed the DSE was trading in the Pardew photograph from at least March 2009 and making significant profits which were donated to the CFA and elsewhere.

    [24] Museums Board of Victoria v Martinek [2011] ATMO 65 at [21].

20. Ms Ryan also stressed that at a minimum s 43 only required that relevant consumers be “confused” in the sense of being “caused to wonder” whether the Goods and Services bearing the Trade Marks were in some way associated with an entity directly connected with the famous rescued koala. As Hearing Officer Thompson put it in Marc Chagall Committee v Elite Wines & Spirits (2007) 73 IPR 552 at [17]:

    I note too that confusion involves an indefiniteness of mind which might not result in deception.  Thus, I am to consider whether a person is likely to be caused to wonder whether there is a connection between the Estate of the late artist and the goods of this opposed application by use of his name on those goods.

21. Nor did it matter, stressed Ms Ryan, that consumers might be “ignorant about the specific details of the arrangements”[25] for any sponsorship or licensing agreements, or not know who the specific beneficiary or beneficiaries might be.

    [25] Diana’s Legacy at [60].

22. I am in broad agreement with Ms Ryan’s submissions with respect to the Opponent’s s 43 ground. On the evidence before me I am satisfied a significant number of people would, in view of the notoriety of the name Sam the Koala as at the Earliest Priority Date, have been caused to wonder whether or not there was some connection between the Goods and Services bearing the Trade Marks and an entity or entities involved with the koala’s discovery, rescue, rehabilitation or subsequent exhibition.

23. I accordingly find the Opponent has established its s 43 ground of opposition.

    Decision

24. Section 55 of the Act provides:

    Unless the proceedings are discontinued or dismissed, the Registrar
    must, at the end, decide:

    (a)  to refuse to register the trade mark; or
                  (b)  to register the trade mark (with or without conditions or  limitations) in respect of the goods and/or services then
      specified in the application;

    having regard to the extent (if any) to which any ground on which the
    application was opposed has been established.
    Note: For limitations see section 6.

25. I have found that the Trade Marks are not sufficiently inherently adapted to distinguish the Goods and Services from the goods or services of others. I have further found that the Applicant has not made out a case for application of s 41(5) of the Act and that the words “SAM THE KOALA” have a connotation such that use of the Trade Marks would be likely to deceive or cause confusion . I accordingly refuse to register the ten opposed trade mark applications.

    Costs

26. In the event the oppositions were successful Ms Ryan made a claim for costs on the Opponent’s behalf.  As there is nothing before me suggesting that the general rule should not be followed I award costs against the Applicant in accordance with Schedule 8 of the Trade Mark Regulations 1995, with costs for the second to tenth of the ten oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.

    Michael Kirov
    Hearing Officer
    Trade Marks Hearings
    8 December 2011