Museums Board of Victoria v Maryann Martinek

[2011] ATMO 65

TRADE MARKS ACT 1995

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

Re:Opposition by Museums Board of Victoria to registration of trade mark applications 1286158(30), 1290731(16) - SAM THE KOALA, SAM THE KOALA and KOALA DEVICE - filed in the name of Maryann Martinek.

Delegate:

Claudia Murray

Representation:

Opponent: Mr Tom Cordiner of counsel, instructed by Griffith Hack, Patents and Trade Mark Attorneys, Melbourne.

Applicant: Ms Maryann Martinek represented herself.

Decision:

2011 ATMO 65

Section 52 oppositions - oppositions successful under section 41 - ‘Sam the Koala’ as a famous name not capable of distinguishing in terms of subsection 41(3) - evidence of use or other circumstances in terms of subsection 41(5) not provided – registration refused – costs awarded against applicant.

Background

1. Maryann Martinek (‘the applicant’) filed trade mark applications 1286158 and 1290731, on 20 February 2009 and 20 March 2009 respectively, for the following trade marks:

SAM THE KOALA
1286158	1290731

1. No grounds of rejection under the Trade Marks Act 1995 (‘the Act’) were raised against the applications during examination. They were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks in June and July 2009. 1286158 is in respect of ‘chocolates’ in class 30 of the International (Nice) Classification of Goods and Services and 1290731 covers ‘Books for colouring purposes’ in class 16.

2. After obtaining extensions of time to do so, Museums Board of Victoria (‘the opponent’) filed notices of opposition to registration of the trade marks. Nineteen grounds of opposition were listed in each notice.

3. The same evidence in support and answer was duly served and filed for both oppositions, after which the applicant served and filed further evidence. On 17 November 2010, the opponent requested a hearing. I heard both matters, as a delegate of the Registrar of Trade Marks, on 11 March 2011 in Melbourne[1]. Mr Tom Cordiner of counsel, instructed by Griffith Hack, Patents and Trade Mark Attorneys, Melbourne, represented the opponent. Ms Maryann Martinek represented herself.

   [1] A third trade mark, number 1289376, which had been travelling with the subject oppositions and in respect of which the same evidence had previously been filed, was also set down to be heard at the same hearing. However, Ms Martinek successfully applied to serve and file another round of further evidence in relation to that opposition, which meant that its substantive hearing had to be postponed.

Evidence

1. The evidence for this opposition comprises:

Evidence in Support

ØStatutory declaration of Liza Dale-Hallett, with Exhibits LDH-1 to LDH-7, dated 21 June 2010.

Evidence in Answer

ØStatutory declaration of Mary-Ann Martinek, with Exhibits MM-STK_EIS1 to MM-STK_EIS4, dated 4 July 2010.

Further Evidence (Applicant)

ØStatutory declaration of Mary-Ann Martinek, with Exhibits MM-STKSTKC_EIA1 to MM-STKSTKC_EIA6, dated 3 November 2010.

1. Ms Liza Dale-Hallett is the Senior Curator of the Sustainable Futures, History & Technology Department of the opponent. It is convenient to reproduce part of her declaration here as, despite Ms Martinek’s arguments to the contrary, I believe it reflects the generally accepted history of ‘Sam the Koala’, subject of both Ms Martinek’s trade mark applications:

   Sam the Koala was discovered in burnt bushland on Samson Road, Mirboo North 150 kilometres south east of Melbourne Victoria, on 1 February 2009.

   Mark Pardew, a firefighter employed by the Victorian Department of Sustainability and Environment (DSE) took a photograph of Sam receiving water from the drink bottle of Country Fire Authority firefighter David Tree ("the Photograph"). Attached and marked as Exhibit LDH-1 is a copy of the Photograph.

   Members of Wildlife Rescue and Protection Inc (WRAP), a specially trained volunteer group, who assist in wildlife rescue, were first alerted to Sam's plight on 4 February 2009 but were not provided with her location details until 6 February 2009. WRAP immediately activated local members to rescue her on 6 February 2009, the day before Black Saturday. Sam was placed in the care of the Southern Ash Wildlife Shelter (SAWS) at Rawson.

   As with most rescued wildlife, Sam assumed the name given to her by her rescuers, which name was based on the place where she was rescued, being Samson Road, Mirboo North.

   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.

   Sam the Koala at Melbourne Museum

   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 Museum Victoria. Museum Victoria 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 Museum Victoria is to research the history of Victoria, its people, lands and animals…

   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.[2]

   [2] Statutory declaration of Liza Dale-Hallett, dated 21 June 2010, paras 4-13, 23-24.

2. Exhibit LDH-1 to Ms Dale Hallett’s declaration shows a version of the very evocative photograph:

   Photographer – Mark Pardew

   © State of Victoria, Department of Sustainability and Environment 2009

   Provided courtesy of the Department of Sustainability and Environment

3. Ms Martinek’s evidence contains a number of exhibits which she clearly felt to be self explanatory, as there is very little elaboration about them in her declarations. It must be said, however, that despite careful consideration, the relevance of several of these exhibits to the oppositions at hand has proved somewhat elusive to me. An issue which her declaration does cover in some detail is the claim that the stuffed koala body now being exhibited by the opponent as ‘Sam the Koala’ was not in fact the koala originally made famous by the photograph shown above. Ms Martinek’s Exhibit MM-STK_EIS2 is Issue 8 (2010) of the Australasian Journal of Herpetology, entitled ‘Sam the Scam: Sam the Koala is an imposter!’ The journal article alleges that the koala originally (and famously) photographed was clearly a male (apparently known as ‘Bob’). It further alleges that, in the course of developing an upbeat publicity and fundraising story intended to divert public attention away from the failures of the Country Fire Authority in the aftermath of the Black Saturday fires, various parties conspired to pass off another (female) koala, ‘Sam’, as the star of the photo.

Grounds of opposition

1. In his summary of submissions provided prior to the hearing, Mr Cordiner indicated that the grounds of opposition to be pursued against both applications were only those under sections 41 and 42(b) of the Act. For completeness, I note that none of the other grounds listed in the notices of opposition have been made out, although they would, of course, be available to the opponent once again in the event of an appeal to the Court from my decision. I will deal with the grounds in the order that they were dealt with by the opponent.

Section 41 - Trade mark not distinguishing applicant’s goods or services

The legislation

1. Section 41 of the Act deals with a trade mark’s capacity to distinguish an applicant’s goods or services. The section relevantly provides:

   (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).

Submissions

1. Mr Cordiner firstly drew my attention to the provisions of subsection 41(3), which requires the decision maker to ‘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.’ Quoting the well-known test, he said that the question is:

   …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.[3]

   [3] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514; [1965] ALR 344 at 346 per Kitto J.

2. Mr Cordiner submitted that, while the opponent agreed the applicant’s trade marks had some inherent capacity to distinguish, the circumstances surrounding the name ‘Sam the Koala’ meant that this inherent capacity was insufficient for the trade marks to be acceptable for registration under subsection 41(3). Instead, the trade marks could only prove acceptable if the provisions of subsection 41(5) were satisfied. He relied upon the findings of Sundberg J in Chocolaterie Guylian N.V. v Registrar of Trade Marks[4] in support of this point. Despite that case having dealt with an apparently quite different sort of trade mark, being a three-dimensional seahorse shape used in relation to chocolates, Mr Cordiner submitted that some of the principles which were applied there could be equally well applied to the name ‘Sam the Koala’. He argued:

   As can be seen in the Guylian case, a mark may lack inherent adaptability to distinguish even though the mark is not descriptive of the goods in respect 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…  As recognised in IPAustralia’s Trade Marks Office Manual of Practice and Procedure (the Manual) at [Part 22] para 18.2 [‘Name of a person’]:

   …

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

   The above applies directly to the Hat Mark [trade mark 1290731] which is sought to be registered in class 16 in respect of “books for colour[ing] purposes”.  Clearly “Sam the Koala” would be likely subject matter for authors and, in particular, children’s books and colouring-in books.  Indeed, the Opponent has prepared and is at present preparing various pieces of literature which might fall within that description and has done so previously for the famous race horse, Phar Lap.[5] 

   As to the other [trade mark 1286158] sought to be registered in respect of “chocolates”, the context in which Sam the Koala became famous is very important.  His [sic] fame arose by reason of the 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 public 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 fire fighters 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 Sam the Koala and the image of the koala drinking from the fireman’s water bottle in connection with the sale of chocolates for fundraising in respect of the Bushfires or, more specifically, fire affected wildlife.

   [4] (2009) 82 IPR 13 at [77]

   [5] Dale-Hallett Declaration at [20].

3. In response, Ms Martinek pointed out that her trade marks had already been assessed as being capable of distinguishing her goods in terms of section 41, having been examined and accepted for possible registration, and that other subsequent applications for “Sam the Koala’ had been filed by a third party. She observed that:

   The Trade Marks Office has begun to accept this mark is a registrable mark and that it can be registered for different classes of goods and services under the Trademarks Act 1975 [sic] by as many people or businesses who wish to create a new product - providing the new mark is registrable and does not conflict with an earlier mark. Personally, the Applicant is pleased to promote an avalanche of small self employed traders taking up such a challenge to make/create/invent Australian goods and services they control and own as IP.

4. Ms Martinek vehemently and persuasively argued at the hearing that she had made no attempt to misappropriate the opponent’s goodwill or to act in ways that would cause any consumer confusion about the origin of ‘Sam the Koala’ goods. She observed that her application was filed very early in the history of the rise and rise to stardom of the koala (whether it was really Bob or Sam or possibly even a third unnamed marsupial) and well before its subsequent sad demise and ultimate fate as a ‘taxidermy exhibit’.

5. Ms Martinek also disputed whether ‘Sam the Koala was really famous in the traditional understanding of the term. She referred to the ‘mass hysteria of our modern society’ which she said has been dubbed the ‘Diana Effect’. Ms Martinek argued that ‘Sam the Koala the Melbourne Museum Exhibit’ was not a ‘living legend’ but an extraordinary example of the Diana Effect, created by news platforms operating ‘across a wide and popular spectrum of social networking sites like YouTube and Twitter.’ She said that the absence of any evidence that important public figures such as Prince William, the then Prime Minister Kevin Rudd or then Premier John Brumby had ever lined up to be photographed beside “Sam the Koala’ supported her argument that the koala was not a living legend. Picking up on the opponent’s reference to its promotional activities around an apparently very popular Phar Lap exhibit, Ms Martinek continued:

   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.[6]

   [6] Statutory declaration of Mary-Ann Martinek, dated 3 November 2010, paras 5-7.

1. In support of this somewhat confusing point about the capacity of dead animals to be living legends, Annexures MM-STKSTKC_EIA4 and MM-STKSTKC_EIA5 to Ms Martinek’s declaration list a number of Australian trade mark applications and registrations and business names featuring the name ‘Phar Lap’.

2. Finally, Ms Martinek described some particularly aggressive media attention which her trade mark applications had attracted, including slurs upon her reputation which were later retracted after she lodged a formal complaint with the Australian Press Council. She commented:

   The Applicant’s trademarks were promoted (albeit a bit negatively) in Australian print media and online news media in a surprising attack on the Applicant from 11 August 2009 onwards and it is likely that ‘this’ media conduct caused this Opponent to commence an action, however and regardless, it can be claimed that from 11 August 2009, the Applicant’s product marks in chocolates and colouring in books became firmly established in the minds of many Australians and to a worldwide audience. This has not been market tested so it is only a claim the Applicant makes without any proof, but on the balance of probabilities the claim is true. Any Google search will find a list of results for “Sam The Koala Chocolates” as being owned by the Applicant.

   The Applicant had been turned into a ‘colourful character’ by the mainstream News media in August 2009 and this ‘colourfulness’ was associated with Class 30 and Class 16. It was free marketing and established the marks as belonging to the Applicant and as being products the Applicant intended to make. The Applicant owns personal websites and SAM THE KOALA websites/ accounts on social networking, also there are websites/accounts that contain information about the Applicant’s projects, goals and interests in the Australian military veterans community.

Discussion

1. Ms Martinek is quite right to point out that her applications have already been tested once against the provisions of section 41, and not found wanting. By virtue of the provisions of section 57 (‘Registration may be opposed on same grounds as for rejection’), section 41 could have been raised as a ground for rejection when the trade marks were examined, but was not. Shanahan’s 4th edition discusses the interesting interplay between the presumption of registrability and the onus upon an opponent in cases such as this:

   It is difficult to establish any ground for opposition without evidence and where the ground for opposition is a ground for rejection, which was not sufficient to prevent acceptance of the application, the difficulty is compounded. The opponent must by evidence or other means displace the presumption of registrability.[7]

   [7] Shanahan’s Australian Law of Trade Marks and Passing Off 4^th ed, 2008 at [50.2005].

2. Subsections 41(5) and (6) of the Act focus upon evidence of trade mark use. However, if a trade mark is determined to be inherently adapted to distinguish an applicant’s goods or services, then it is acceptable for registration under subsection 41(3), without reference to the later subsections of section 41. The manner in which section 41 operates in conjunction with the presumption of registrability was examined closely by Branson J in the Oregon case. After examining the interaction of the subsections, she found:

   The above examination of subsections (3) to (6) of s 41 of the Act demonstrates that the section limits the scope of operation of s 33(1) of the Act so far as the question of capacity to distinguish is concerned. Subsection (4) has the effect that unless the Registrar, having taken 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, is able to answer positively the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, then he or she must apply the provisions of either subsection (5) or (6). Subsection (5) has the effect that an application must be rejected pursuant to s 41(2) unless the Registrar is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant. Subsection (6) has the effect that an application must be rejected pursuant to s 41(2) unless the applicant establishes that because of its use of the trade mark, the trade mark does distinguish the designated goods or services as being those of the applicant. The applicant will so "establish" by placing before the decision maker material upon which he or she is persuaded, on the balance of probabilities, that, because of its use of the trade mark, the trade mark does distinguish its goods and services from those of other persons.

   It is thus not the case, as might otherwise be concluded from the terms of s 33(1), that if the Registrar is uncertain whether a trade mark is capable of distinguishing the applicant's goods or services from the goods or services of other persons then he or she must accept the application. The question of whether or not a trade mark is to be taken for the purposes of s 41(2) as capable or not capable of distinguishing the designated goods or services from the goods or services of other persons is governed entirely by s 41(3) to (6). The effect of such subsections is that a trade mark is not to be taken as capable of distinguishing the goods or services of an applicant from the goods or services of other persons unless the Registrar is satisfied of certain matters or the applicant establishes a certain matter, in the sense discussed above.[8]

   [8] Blount v Registrar of Trade Marks (1998) 83 FCR 50, 40 IPR 498 (the Oregon case) (at [20] to [49]).

3. So, in the context of opposition, the onus on the opponent to make its case upon the balance of probabilities,[9] translates to the opponent being required to persuade me that the applicant’s trade marks are, on their face, in some way deficient in their capability to distinguish the applicant’s goods from the goods of other persons. Under those circumstances, the onus shifts back to the applicant, who must then demonstrate, by means of evidence or other circumstances, that the trade marks actually do or will distinguish her goods.

   [9] Pfizer Products Inc v Karam (2006) 70 IPR 599; Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 82 IPR 13 (at [22] to [26]).

4. 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 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.

5. 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,[10] 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.

   [10] See Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 595 per Kitto J.

6. 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.[11] 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.

   [11] See E. & J. Gallo Winery v Lion Nathan Australia Pty Limited, [2010] HCA 15 (19 May 2010), at 69.

7. 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.

8. To conclude, I find that, despite Ms Martinek’s undoubtedly genuine intentions at the time she filed her applications to simply adopt as her trade mark an attractive name which was at that time enjoying what she interpreted as only the most fleeting and ephemeral of media attention, the reality of the situation has been proved to be otherwise. Under the circumstances, the opponent has made out its ground of opposition under section 41 against both the applicant’s trade marks.

Other grounds of opposition

1. Mr Cordiner also pressed grounds of opposition under subsection 42(b) against both trade mark applications. However, there is no need to explore them further here, as the opponent has succeeded under section 41. As with the outstanding grounds originally listed in the notices of opposition, the additional grounds of opposition under section 42 would be again available to the opponent in the event of an appeal from this decision.

Decision

1. Subsection 55(1) of the Act provides:

   (1)      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.

2. As discussed above, the onus is upon an opponent to establish one or more of its grounds of opposition, according to the balance of probabilities. The opponent has met the onus upon it, in terms of the ground of opposition argued under section 41. I therefore refuse to register trade mark numbers 1286158 and 1290731.

Costs

1. The opponent has sought its costs in this matter and it is usual for costs to follow the event. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant.

Claudia Murray

Hearing Officer

Trade Marks Hearings

20 July 2011