NCL Corporation Ltd v Norwegian Brand Ltd

[2022] ATMO 181

TRADE MARKS ACT 1995

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

Re:Oppositions by NCL Corporation Ltd to extension of protection to International Registration numbers 1273316 (Australian trade mark number 1847335) (classes 16, 35, 38, 39, 43) – NORWEGIAN.COM JOHAN LUDVIG RUNEBERG FINLANDS'S NATIONAL POET with device and 1273904 (Australian trade mark number 1847336) (classes 16, 35, 38, 39, 43) – NORWEGIAN.COM with device – both held by Norwegian Brand Ltd

Delegate:	Nicholas Barbey
Representation:	Opponent: Clive Elliott KC of counsel instructed by Kate Duckworth Intellectual Property Limited Holder: Siobhán Ryan SC of counsel instructed by Davies Collison Cave Pty Ltd
Decision:	2022 ATMO 181 Trade Marks Regulations 1995 (Cth) – regulation 17A.33 oppositions – grounds of opposition pursued under sections 44, 58 and 60 of the Trade Marks Act 1995 (Cth) – none established – protection to be extended

Background

1. This decision concerns oppositions brought by NCL Corporation Ltd (‘Opponent’) to the extension of protection to the following International Registrations Designating Australia (‘IRDAs’):

   Trade Mark:  (‘35 Mark’)

   Application No.:              1847335

   International Registration:        1273316

   Owner:  Norwegian Brand Ltd               (‘Holder’)

   Priority Date:  20 January 2017

   Specification:[1]                  Class 16: (including) brochures; periodicals

   [1] An indicative specification is provided. The full specification of each IRDA appears in Annexure A to this decision.

   Class 35: (including) advertising; business management; retail services, in-flight sales services and internet sales services for tobacco, cosmetics, clothing, watches, wine and liquor, jewelry and sunglasses

   Class 38: (including) telecommunications; electronic transmission of news and data for ticket sale

   Class 39: (including) airline services; travel services; air transport services; courier services

   Class 43: (including) services for providing food and drink; temporary accommodation; accommodation booking agency services

   (‘Claimed GS’)

   Trade Mark:  (‘36 Mark’)

   Application No.:              1847336

   International Registration:        1273904

   Owner:  Holder

   Priority Date:  20 January 2017

   Specification:  Claimed GS

2. The acceptance of each IRDA was advertised on 11 December 2018. The Opponent filed notices of intention to oppose the extension of protection on 9 February 2019 followed by Statements of Grounds and Particulars (‘SGPs’), later rectified, on 8 March 2019. The Holder filed notices of intention to defend on 7 June 2019.

3. Evidence in Support (‘EIS’) was filed by the Opponent and the Holder filed Evidence in Answer (‘EIA’). In turn, the Opponent filed Evidence in Reply (‘EIR’) and an oral hearing was requested. Submissions were filed by the Opponent on 8 June 2022 (‘Opponent’s Submissions’) and by the Holder on 15 June 2022 (‘Holder’s Submissions’).

4. As a delegate of the Registrar of Trade Marks, I heard this matter by video conference on 17 June 2022. Clive Elliott KC of counsel presented submissions on the Opponent’s behalf and Siobhán Ryan SC of counsel presented submissions on behalf of the Holder.

5. Due to a technological issue encountered on the day, the Opponent requested an opportunity to file supplementary submissions after the hearing had finished. I granted this request and the Opponent filed submissions on 7 July 2022 (‘Opponent’s Supplementary Submissions’). In reply, the Holder filed submissions on 14 July 2022.

Grounds of opposition, onus and standard of proof

1. Regulation 17A.34 of the Trade Mark Regulations 1995 (Cth) (‘Regulations’) provides that the extension of protection may be opposed on any of the grounds on which an IRDA may be rejected and also on the grounds set out in ss 58 to 61 and 62A of the Trade Marks Act 1995 (Cth) (‘Act’).

2. The SGPs nominated grounds of opposition under ss 44, 58, 58A, 59 and 60 of the Act. However, only ss 44, 58 and 60 were pressed in written submissions and at the hearing. As such, I treat the grounds under ss 58A and 59 as abandoned.

3. To be successful, the Opponent bears the onus of establishing at least one of the grounds.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 20 January 2017 (‘Relevant Date’), being both the filing and priority date of the IRDAs.

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ) (‘Food Channel’).

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

Evidence

1. The following declarations were filed in respect of both oppositions:

EIS

• Declaration made on 9 December 2019 by Daniel Farkas (Executive Vice President, General Counsel and Assistant Secretary of the Opponent) with Exhibits DF-1 to DF-11 (‘Farkas Declaration’).

EIA

• Declaration made on 30 April 2021 by Christoffer Sundby (Chairman of the Board of the Holder) with Exhibits 1 to 20 (‘Sundby Declaration’).

EIR

• Declaration made on 29 June 2021 by Lincoln Vidal (Vice President and Assistant General Counsel of the Opponent) with Exhibits LV-1 to LV-6 (‘Vidal Declaration’).

EIS

10.  According to the Farkas Declaration, the Opponent operates ‘the internationally well-known cruise line NORWEGIAN CRUISE LINE’.[4] It initially commenced operations in 1966 under the name ‘Norwegian Caribbean Line’. Since that time, Mr Farkas claims that ‘Norwegian’ has been continuously used by the Opponent ‘in relation to cruise line and related goods and services’.[5] The Opponent’s ‘current name NORWEGIAN CRUISE LINE was adopted over 30 years ago in 1987’ and the ‘NCL’ acronym is derived from same.[6]

[4] Farkas Declaration, [3].

[5] Ibid [4].

[6] Ibid [3]–[4].

11.  Mr Farkas declares that Norwegian Cruise Line is ‘one of the world's leading cruise lines, in terms of its global customer base, global sales and market share, multinational cruise operations, as well as international recognition and awards’.[7] The Opponent’s fleet consists of 17 cruise ships with over 50,000 berths and it intends to launch another 6 cruise ships by 2027. Mr Farkas states that ‘the cruise line travels around the globe to at least 330 destinations worldwide’.[8]

[7] Ibid [5].

[8] Ibid [7].

12.  The Farkas Declaration details the total number of bookings and guests on the Opponent’s ‘NORWEGIAN cruise ships’ as well as the Opponent’s estimated annual turnover and advertising figures. The figures disclosed are substantial. In Mr Farkas’ opinion, they reflect the continuous growth of Norwegian Cruise Line and the extensive international reputation associated with it. Similarly, reference is made to numerous awards that have been bestowed on Norwegian Cruise Line as further illustrating its international reputation.

13.  According to the Farkas Declaration, Norwegian Cruise Line has partnered with various airlines to create an ‘Air Sea Program’ which ‘offers cruise packages inclusive of flight bookings and airfare payments to its guests or customers, to facilitate convenient travelling for its guests, to ports of embarkation and from disembarkation to their desired destinations’.[9] The ‘Air Sea Program’ is said to constitute ‘a significant component of [the Opponent’s] business and the services it offers to the public’.[10]

[9] Ibid [20].

[10] Ibid.

14.  The Farkas Declaration explains that ‘the NORWEGIAN CRUISE LINE is the main official name and trade mark through which [the Opponent’s] business is operated worldwide’.[11] Furthermore, it contends that ‘Norwegian’ solus has become a trade mark that is used to distinguish the Opponent and its services. Mr Farkas points out that ‘Norwegian’ constitutes the ‘dominant element of its trade name’ and the name of each cruise ship in the Opponent’s fleet features ‘Norwegian’ (e.g., ‘Norwegian Breakaway’ and ‘Norwegian Sun’). Reference is also made to the Opponent’s global trade mark portfolio which contains numerous registrations that incorporate the word ‘Norwegian’ together with the fact that Wikipedia mentions Norwegian Cruise Line is ‘also known in short as Norwegian’.[12]

[11] Ibid [22].

[12] Ibid [24].

15.  According to the Farkas Declaration, the Australian public are likely to have engaged with Norwegian Cruise Line either as passengers who ‘board and travel on NORWEGIAN ships in Australia’ or as passengers who ‘travel to destinations outside of Australia and board there and then travel on NORWEGIAN ships’.[13] The Australian public are also likely to have been exposed to the prominent ‘Norwegian’ branding on the cruise ships when they are docked in Australian ports. Mr Farkas highlights that the Opponent directly advertises Norwegian Cruise Line’s services within Australia and its website, (‘Website’), has also been accessed by Australian consumers. On this basis, Mr Farkas contends that the Opponent ‘has built strong goodwill and reputation in the trade mark NORWEGIAN’.[14]

EIA

[13] Ibid [30].

[14] Ibid [45].

16.  The Sundby Declaration describes the Holder as being ‘a Norwegian low-cost airline and Norway's largest airline’.[15] The Holder first considered ‘expanding its flight routes to Australia in November 2016’.[16]

[15] Sundby Declaration, [5].

[16] Ibid [15]–[20].

17.  Mr Sundby explains that the Holder and the Opponent are, respectively, the owners of 72 and 96 registered trade marks worldwide that contain ‘Norwegian’. Despite these contemporaneous registrations, Mr Sundby is ‘not aware of any instances of confusion between [the 35 Mark and 36 Mark] and the Opponent’s Marks that contain the word NORWEGIAN’.[17]

[17] Ibid [25].

18.  The Sundby Declaration addresses whether airline service providers also operate cruises or vice versa. Mr Sundby’s investigations revealed that none of the world’s top 100 airlines in 2017 matched the ‘top 10 Mega-ship Ocean Cruise Lines’ of 2017.[18] Instead, his research indicates that when an airline offers a cruise package or bundle, the cruise component is typically operated by a third party.

EIR

[18] Ibid [28].

19.  The Vidal Declaration responds to the Sundby Declaration. In the Opponent’s view, the Holder is properly characterised as an airline travel service provider and the IRDAs designate goods and services which ‘go far beyond [the Holder’s] airline travel services’.[19]

[19] Vidal Declaration, [5].

20.  The Vidal Declaration provides examples of airline and cruise ship services being ‘offered under the same or similar brand’.[20] Mr Vidal states that the Virgin Group ‘funds the airlines Virgin Atlantic and Virgin Australia, as well as the cruise line Virgin Voyages, all under the "Virgin" brand’.[21] Mr Vidal also declares that ‘cruise lines and airlines often enter into formal collaborations to provide travellers with both services, wherein customers can purchase both airline and cruise line services in one place’.[22]

[20] Ibid [8].

[21] Ibid.

[22] Ibid [10].

21.  The Vidal Declaration clarifies that the Opponent’s and the Holder’s trade mark registrations do not peacefully coexist and this is particularly the case in Australia. To this end, Mr Vidal highlights that the IRDAs have been raised as grounds for rejecting several of the Opponent’s international registrations for which protection in Australia has been sought.[23]

[23] See, eg, international registration numbers 1502366 (Australian trade mark number 2056859) for ‘NORWEGIAN OMBRA’, 1500789 (Australian trade mark number 2053983) for ‘NORWEGIAN VIVA’, 1500888 (Australian trade mark number 2054000) for ‘NORWEGIAN BELLA’.

Discussion

22. Section 44 of the Act relevantly provides:

Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

...
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a) it is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

23.  To establish this ground, the Opponent must identify at least one trade mark which satisfies the following requirements:

1. it is in the name of a person other than the Holder;

2. it has a priority date which is earlier than the priority date of the IRDAs;

3. it is substantially identical with, or deceptively similar to, the 35 Mark and the 36 Mark; and

4. it is in respect of goods and/or services which are either similar and/or closely related to the Claimed GS.

24.  The SGPs identified Australian trade mark registration 1617618, detailed below, as underpinning this ground:

Trade Mark:  (‘Opponent’s Mark’)

Registration no.:   1617618

Owner:  NCL US IP Co 2 LLC

Priority Date:  16 April 2014

Specification:        Class 39: transportation services in this class; services involved in the transport of travellers including transport by ship; services involved in the organisation and arrangements of cruises; travel agency services; passenger transport; sightseeing; pleasure boat transport and arranging of tours

25.  At the outset, I note that the 36 Mark is wholly contained in the 35 Mark. As such, the following discussion will undertake a comparison between the Opponent’s Mark and the 36 Mark. If the Opponent’s Mark is not found to be at least deceptively similar to the 36 Mark, logic dictates that the 35 Mark is also not substantially identical with, or deceptively similar to, the Opponent’s Mark by virtue of its additional differences.

26.  The Opponent’s Mark is registered by a person other than the Holder and has a priority date earlier than 20 January 2017. Requirements (i) and (ii) at [23] of this decision are satisfied. In relation to requirement (iii), the test for ‘substantial identity’ was articulated by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[24]

[24] [1963] HCA 66, [12] (‘Shell’).

27.  The Full Federal Court in Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd observed that:

A side-by-side comparison of two marks is a studied comparison. It highlights the differences between the marks just as much as it shows their sameness, in order to reach a conclusion as to whether the two marks are, in fact, substantially identical.[25]

[25] [2020] FCAFC 186, [98] (Middleton, Yates and Lee JJ).

28.  The trade marks are reproduced below:

Opponent’s Mark 36 Mark

29.  The Opponent claims that substantial identity exists because ‘NORWEGIAN’ forms the essential feature of each trade mark.[26] It contends that the additional elements present in each trade mark do not nullify or alter this outcome. By contrast, the Holder highlights that ‘Norwegian’ is the only common element and this is descriptive of ‘a person or thing which emanates from, or is otherwise associated with, Norway’.[27] As ‘mere descriptive elements’ are unlikely to constitute an essential feature of a trade mark,[28] the Holder asserts that a total impression of resemblance does not emerge from a comparison of the trade marks.

[26] Opponent’s Submissions, [26].

[27] Holder’s Submissions, [19].

[28] See, eg, Pham Global Pty Ltd v Insight Clinical Imaging PtyLtd [2017] FCAFC 83, [52] (Greenwood, Jagot and Beach JJ).

30.  In my assessment, a studied comparison of the trade marks reveals clear differences. Notably, the Opponent’s Mark includes the underlined acronym ‘NCL’ encased within an irregular border. This prominent element is not descriptive of the relevant services and plainly forms an essential feature of the Opponent’s Mark. Further differences include the airplane device depicted in the 36 Mark and the particular orientation of the Opponent’s Mark wherein the word elements are not depicted as a single continuous line of text. The absence of the ‘NCL’ element in the 36 Mark combined with the aforesaid differences result in a total impression of dissimilarity emerging from a side by side comparison of the trade marks. As such, the 36 Mark and the Opponent’s Mark are not substantially identical.

31. Section 10 of the Act provides that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. The assessment of deceptive similarity was explained by Windeyer J in Shell:

The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[29]

[29] Shell (n 24) [13].

32.  The Full Federal Court in Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd stated:

The notional consumer’s imperfect recollection of the registered mark is central to the test for deceptive similarity. The authorities make clear it is the imperfect recollection of the mark as registered, not any knowledge about the actual use of the mark, or any reputation associated with the mark.[30]

[30] [2022] FCAFC 157, [77] (Yates, Abraham and Rofe JJ) (emphasis added).

33.  The Opponent emphasised that, aside from ‘.com’, the 36 Mark is devoid of any other audible element.[31] The crux of the Opponent’s deceptive similarity argument thus falls squarely on the presence of ‘Norwegian’ in each trade mark. It opined that ‘geographical names are commonly used [by travel providers] and commonly act as badges of origin’[32] with reference being made to Singapore Airlines and Thai Airways as typifying this.[33] The consequence of this, so the argument goes, is that consumers would be conditioned to perceive ‘Norwegian’ as indicating the ‘services of a particular provider’ as opposed to referencing where the services might have some trade connection to.[34] Indeed, the Opponent stressed that the commercial reality is ‘neither of the parties trade exclusively in Norway’.[35] Given this alleged conditioning, the Opponent submits that it is ‘entirely plausible’ that consumers will knowingly identify and refer to both trade marks as simply ‘Norwegian’.[36]

[31] Opponent’s Submissions, [28], [70]–[72].

[32] Ibid [39].

[33] Other travel providers referenced at [26] of the Farkas Declaration include Air China, Malaysia Airlines, Scandinavian Airlines, Air New Zealand, British Airways, Japan Airlines, Fiji Airways, Swiss Airlines, Air Asia, Air France, Hong Kong Airlines and American Airlines.

[34] Opponent’s Submissions, [74].

[35] Ibid [75]. According to the Opponent, it is ‘based in and operates out of Miami’ and the Holder ‘operates through subsidiaries throughout Europe’.

[36] Ibid [26].

34.  Conversely, the Holder maintained that the only resemblance between the trade marks is limited to a non-distinctive element. It reiterated that ‘Norwegian’ is ‘a well-known geographical place name’ which ought to be discounted for comparative purposes.[37] To bolster its position, reliance was placed on several office decisions wherein trade marks sharing a common geographical name or non-distinctive expression had been found to not be deceptively similar.[38] Attention was also drawn to the presence of the airplane jet-stream in the 36 Mark which, in the Holder’s opinion, ‘conveys a sense of movement’.[39] When considered in their entirety, the Holder contends that the trade marks are not deceptively similar.

[37] Holder’s Submissions, [35].

[38] See, eg, Team Building Holdings Pty Ltd v Noosa Brewing Co Pty Ltd [2020] ATMO 167; Barossa Valley Estate Pty Ltd v Australian Vintage Limited [2015] ATMO 70; Watches of Switzerland Pty Ltd v Mappin & Webb Limited [2015] ATMO 23; Cars on Demand IP Pty Ltd v Cars on Demand Limited [2014] ATMO 87.

[39] Holder’s Submissions, [31(iv)].

35.  Evidently, the Opponent’s prospects of establishing deceptive similarity hinge on what weight should be attributed to ‘Norwegian’. It is, after all, the only element shared by the trade marks. Central to this consideration is the inherent nature of the word ‘Norwegian’. In the context of transport and travel services, ‘Norwegian’ has a clear primary meaning insofar as it denotes the country Norway, its inhabitants and/or their language.[40] As a matter of general knowledge, ordinary consumers would be cognisant of this. It follows that consumers are unlikely to apprehend ‘Norwegian’ as operating as a badge of origin. Rather, ‘Norwegian’ would be perceived as describing, for example, where the services originate from. The Opponent’s allegation that consumers are conditioned by travel providers adopting name formats consisting of ‘[geographical name] + [mode of transport]’, such that they would have a predisposition to identify geographical names as badges of origin, rises no higher than a bare assertion. If anything, this proposition merely underscores the likelihood of ‘Norwegian’ being understood for its geographical significance given most travel providers listed by the Opponent are flag carrier airlines.    

[40] Macquarie Dictionary (online at 8 September 2022) ‘Norwegian’ (def 1) may be defined as ‘of or relating to Norway, its inhabitants, or their language’.

36.  Accordingly, ‘Norwegian’ is non-distinctive in relation to transport and travel services. For that reason, I do not consider it to be an essential feature of either trade mark. Be that as it may, ‘Norwegian’ should not be completely ignored when assessing deceptive similarity.[41] Instead, ‘Norwegian’ should be afforded less weight for the purposes of comparison and it remains that consideration must be given to the general effect of the trade marks as wholes.[42] To this end, the 36 Mark is comprised of three elements – namely, ‘Norwegian’, the airplane device and the domain name indicia ‘.com’. In my estimation, no element stands out as the essential feature. The identity of the 36 Mark resides in the combination of the elements and it is the overall impression gleaned from same which is relevant. Likewise, the Opponent’s Mark is comprised of three elements – namely, ‘Norwegian’, the term ‘Cruise Lines’ and the ‘NCL’ element. While the NCL element constitutes an essential feature of the Opponent’s Mark, consideration must still be given to the impression conveyed by the Opponent’s Mark as a whole.

[41] See, eg, Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ); Re Broadhead's Application (1950) 67 RPC 209, 215 (Evershed MR).

[42] See, eg, Food Channel (n 2) [92]; Clark v Sharp (1898) 15 RPC 141, 146 (Byrne J).

37.  Undeniably, ‘Norwegian’ is an element of each trade mark but the similarity ends there. The additional elements present in each trade mark import self-evident visual, aural and conceptual dissimilarities. It is true that each dissimilarity, considered in isolation, may not constitute a material difference between the trade marks. However, when considered in their entirety, these differences contribute to a sufficiently different overall impression being conveyed by the respective trade marks. In this regard, I agree with the Holder that Stephen J’s observations in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd are apposite:

There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. … As his Lordship said [in Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39], the possibility of blunders by members of the public will always be present when names consist of descriptive words - "So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be." The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.[43]

[43] [1978] HCA 11, [22] (emphasis added).

38.  Although these observations were made in respect of a claim to exclusivity in the descriptive expression ‘building information centre’, they have equal force to the current matter. As prefaced in the Holder’s Submissions, ‘this is a dispute between two players in the travel industry which both, for historical reasons, chose corporate names and trade marks that incorporate the word “Norwegian”’.[44] This strikes at the heart of the issue. Both parties adopted ‘Norwegian’ as part of their respective trade marks because it aptly describes their Norwegian origins. Whether this connection remains with the passage of time is beside the point. Any confusion that may arise between the 36 Mark and the Opponent’s Mark would inevitably stem from the mutual selection of ‘an eloquently descriptive trade name’ and not because of any deceptive similarity between the trade marks within the meaning of the Act.

[44] Holder’s Submissions, [1] (emphasis added).

39.  In coming to the above conclusion, I have considered the type of consumers and nature of the services alleged to be in conflict. The Opponent asserts that the potential for deception or confusion is accentuated because travel services are ‘not necessarily an expensive service’ that consumers would ‘spend a long time on’.[45] Unsurprisingly, the Holder contends that consumers ‘are likely to exert greater care when selecting travel, tours and accommodation products because of the price and expectation factors’.[46] There is merit in both positions advanced and the reality likely falls somewhere between the two. However, I do not accept that the services in question are at such a low price point that consumers would fail to exercise any discernment and proceed to select the services based on no more than the non-distinctive ‘Norwegian’ element.

[45] Opponent’s Submissions, [48].

[46] Holder’s Submissions, [28].

40.  For the above reasons, I am satisfied that there is no real and tangible danger of confusion between the 36 Mark and the Opponent’s Mark. Even allowing for imperfect recollection, the trade marks are readily distinguished when the descriptive significance of ‘Norwegian’ is accounted for and each trade mark is considered as a whole. It follows that the 35 Mark is also not substantially identical with, or deceptively similar to, the Trade Mark.

41. The s 44 ground of opposition has not been established.

Section 60

42. Section 60 of the Act relevantly provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

43.  To establish this ground of opposition, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the 35 Mark and the 36 Mark would be likely to deceive or cause confusion.

1. The SGPs identified the Opponent’s Mark together with the plain words ‘Norwegian Cruise Line’ (‘NCL Mark’) and ‘Norwegian’ (‘Word Mark’) as the bases for this ground of opposition. Each trade mark is particularised as having acquired a reputation in Australia ‘in relation to cruise line and related goods & services’. As a preliminary observation, I note that each trade mark must be considered and treated separately for the purposes of s 60 of the Act.[47] As such, evidence of use which establishes that a reputation exists for a trade mark comprised of a word and logo will not automatically establish that a reputation also exists for the word or logo independently.

   [47] See, eg, Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [89] (O'Bryan J); Qantas Airways Limited v Edwards [2016] FCA 729, [160] (Yates J).

Reputation

1. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[48] Her Honour quoted with approval the following statement of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ... .[49]

   [48] [2000] FCA 1335, [81] (‘McCormick’).

   [49] [1992] FCA 159, [118] (‘ConAgra’).

46.  Further, Kenny J observed in McCormick that:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[50]

[50] McCormick (n 48) [86].

47.  The reputation in the other trade mark(s) must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[51] Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[52]

[51] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

[52] ConAgra (n 49) [77].

48.  In the current matter, the reputation is particularised as being ‘in relation to cruise line and related goods & services’. There are numerous cruise line options which cater for various experiences ranging from brief weekend trips through to extended around the world tours. The target audience for such cruises naturally varies according to factors such as duration, price and/or destinations. Similarly, certain cruise line options are geared towards particular demographics such as senior citizen cruises, family friendly cruises or singles cruises.  In my opinion, the relevant market would therefore encompass most of the adult population.

49.  The Opponent claims that the Word Mark, the NCL Mark and the Opponent’s Mark (collectively ‘Nominated Marks’) had each acquired a reputation in Australia at the Relevant Date based on its international and local activities. Reliance was placed on the ‘high passenger numbers, large turnover, high advertising spend in Australia and internationally and the exposure the public has to the opponent’s trade marks when seeing the opponent’s imposing ships on the water’.[53] It was further pointed out that each of the Opponent’s ‘ships are prominently branded NORWEGIAN and are effectively floating billboards’.[54]

[53] Opponent’s Submissions, [96].

[54] Ibid [105].

50.  The Holder levelled several criticisms at the Opponent’s evidence. In its view, the evidence filed is largely irrelevant because most of it is dated after the Relevant Date or does not show use in Australia. Of the relevant evidence, the Holder emphasised that the ‘first year in which Norwegian Cruise Line ships berthed in Australia was 2017’.[55] The local exposure of the Opponent’s cruise ships thus amounts to, at best, 20 days given the Relevant Date is 20 January 2017. The Holder also took issue with the Australian booking numbers and disclosed advertising expenditure noting that the former is not significant and the latter remains unexplained in terms of how it was spent.

[55] Holder’s Submissions, [50(b)].

51.  In my assessment, the Holder’s criticisms are well founded. For the reasons which follow, the Opponent’s evidence fails to substantiate that any of the Nominated Marks had acquired a reputation in Australia before 20 January 2017. The majority of the Opponent’s evidence has limited probative value because it is undated[56] or postdates the Relevant Date.[57] This evidence does not assist the Opponent’s case.

[56] See, eg, Farkas Declaration, Exhibits DF-4, DF-9.

[57] See, eg, Farkas Declaration, Exhibits DF-1, DF-3, DF-5, DF-6, DF-8, DF-11.

52.  In relation to the evidence dated prior to the Relevant Date, this material generally demonstrates use of the acronym ‘NCL’ by itself or the NCL Mark in combination with a device. For example, Exhibit DF-1 to the Farkas Declaration reveals use of the following trade marks:

53.  Additionally, the Opponent’s evidence reveals that the NCL Mark and/or the Word Mark are rarely, if ever, used on their own. One argument pursued by the Opponent was that the name of each cruise ship in its fleet commences with ‘Norwegian’ and its ‘Norwegian’ branded ships constitutes use of the Word Mark.[58] This line of reasoning is not persuasive. I acknowledge that the name of each cruise ship in the Opponent’s fleet contains ‘Norwegian’ as the leading element. However, the evidence shows that the Opponent’s cruise ship naming convention is for ‘Norwegian’ to always be paired with, in the words of the Opponent, ‘some other evocative term’.[59] Having reviewed the cruise ship names,[60] the accompanying ‘evocative term’ retains at least an equal degree of emphasis and distinctiveness to ‘Norwegian’ in each example. It follows that the references to the cruise ship names do not demonstrate use of the Word Mark given the ‘evocative term’ substantially affects its identity.

[58] See, eg, Opponent’s Submissions, [86], [96].

[59] Opponent’s Submissions, [96].

[60] Farkas Declaration, [25] lists the cruise ships names as: ‘Norwegian Bliss’, ‘‘Norwegian Breakaway’, ‘Norwegian Dawn’, ‘Norwegian Encore’, ‘Norwegian Epic’, ‘Norwegian Escape’, ‘Norwegian Gem’, ‘Norwegian Getaway’, ‘Norwegian Jade’, ‘Norwegian Jewel’, ‘Norwegian Joy’, ‘Norwegian Pearl’, ‘Norwegian Sky’, ‘Norwegian Spirit’, ‘Norwegian Star’ and ‘Norwegian Sun’.

54.  Attention was also drawn to a Sydney Morning Herald article contained in the EIA.[61] In the Opponent’s view, this article provides clear evidence of the Word Mark being used as a trade mark in Australia before the Relevant Date.[62] I do not consider this material to be relevant given the article only mentions the ‘Norwegian Capricorn Line’ and the ‘Norwegian Star’. For similar reasons outlined above, neither of these marks constitute use of the Word Mark. For completeness, I note that the other articles contained in the EIA suffer the same issue.[63]

[61] Andrew Conway, ‘Cape Fear; Cruising’ (19 February 2000) Sydney Morning Herald contained in Exhibit 14A to the Sundby Declaration.

[62] Opponent’s Supplementary Submissions, [4].

[63] Sundby Declaration, Exhibit 14A. See, eg, Mike Smith, ‘Sail the wilder shores of PNG’ (10 February 2008) Sunday Telegraph which only mentions the ‘Norwegian Gem’; ‘Creative pricing for Caribbean’ (19 July 2003) The Advertiser which only mentions the ‘Norwegian Sun’.

55.  Turning to the revenue, booking and advertising figures disclosed in the Farkas Declaration. It is apparent from the sheer size of the figures that the Opponent likely enjoyed a significant overseas reputation prior to the Relevant Date. Mr Farkas declares that the Opponent operates across multiple jurisdictions and has experienced continuous year on year growth in terms of bookings and revenue. The evidence shows that ‘Norwegian Cruise’ (in close proximity to an iteration of the Opponent’s Mark) was listed in a 2015 Brand Finance report as being one of the most valuable leisure brands in the world.[64] Similarly, numerous awards bestowed on Norwegian Cruise Line between 2008 to 2019 are listed in the Farkas Declaration.[65] These include consecutive ‘Europe’s Leading Cruise Line’, ‘North America’s Leading Cruise Line’ and ‘Caribbean’s Leading Cruise Line’ awards.

[64] Farkas Declaration, Exhibit DF-2.

[65] Ibid [16]–[17].

56.  However, a significant limitation of the Opponent’s evidence is that, once the undated and postdated material is excised, the remaining material does not provide sufficient contextualisation of the figures and awards in the Australian marketplace. As such, despite the sizeable figures disclosed, it is difficult to draw any firm conclusions as to the extent of the reputation that allegedly existed in Australia at the Relevant Date and it is unclear to which of the Nominated Marks this alleged reputation is attached to. For example, the estimated 2016 advertising expenditure in Australia is substantial. However, the Opponent has not explained how this expenditure was apportioned and there are no dated examples to demonstrate what was actually advertised. The same is true of the Website which was claimed to have been accessed by Australians prior to the Relevant Date. As the Holder opined, it is impossible to know what trade mark(s) appeared on the Website and in the advertising material circulated before the Relevant Date.[66] Similarly, the awards listed by Mr Farkas lack relevant particulars but many seemingly relate to specific cruise ships.[67] In the absence of any corroborative evidence, I am unable to infer that these cruise ships displayed any of the Nominated Marks. In this regard, the undated photographs of the Norwegian Jewel and Norwegian Star reproduced in the Farkas Declaration suggest that the Nominated Marks are not used on the exterior of the cruise ships.[68]

[66] Holder’s Submissions, [50(g)], [50(i)].

[67] See, eg, Farkas Declaration [17] wherein the awards listed include: ‘Cruise Critic - 2012 Best Cruise for Sea Days: Norwegian Epic’, ‘Yahoo Travel - Norwegian Breakaway Voted 2013 Best Cruise for Families’, ‘Cruise Critic - Best Ship for Value of Money (Mid-Size Category): Norwegian Sun’, ‘2015 - USA Today 10Best Readers' Choice Travel Award - Best Cruise Ship for Families: Norwegian Breakaway’, ‘UK Cruise Critic Choice Awards - Top 5 Best Overall (Large Ship Category): Norwegian Jade’.

[68] Farkas Declaration, [35].

57.  The limitations of the Opponent’s evidence are further compounded by the fact that it only commenced operations in and travel to Australia in 2017.[69] Given the Relevant Date is 20 January 2017, the evidence and submissions made regarding the public exposure of the cruise ships in Australian waters and passengers boarding ships from Australian ports are largely irrelevant. Further, there is some force in the Holder’s claim that the total number of Australian bookings in the years preceding the Relevant Date are not significant when compared to the relevant cruise line market. This is especially so given the total Australian bookings represent an extremely small percentage of Norwegian Cruise Line’s total overall estimated bookings for the corresponding years.[70]

[69] Ibid [13].

[70] Ibid [10], [33]. For example, at its highest, the total number of Australian bookings in 2016 constituted approximately 2.5% of Norwegian Cruise Line’s estimated total bookings on all of the Opponent’s ‘Norwegian’ ships in 2016.

58. As the relevant market for cruise line and related goods & services comprises most of the Australian adult population, I am not satisfied by the evidence before me that any of the Nominated Marks had acquired a reputation in Australia as at the Relevant Date amongst a significant or substantial number of Australian consumers. As such, consideration of s 60(b) is not required.

59. The s 60 ground of opposition has not been established.

Section 58

60. Section 58 of the Act relevantly provides:

Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

61.  The SGPs identified the Nominated Marks as supporting this ground of opposition. Specifically, the Opponent’s Mark is alleged to have been first used in Australia since at least February 2010. Meanwhile, the NCL Mark and the Word Mark are particularised as having been used since 1966.

62.  The notion of trade mark ownership was considered in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Federal Court said:

[O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant’s claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[71]

[71] [2018] FCAFC 6, [49] (Nicholas, Yates and Beach JJ) (emphasis added).

63.  To succeed under this ground of opposition, the Opponent must establish the following requirements:

1. the trade mark/s relied upon by the Opponent is/are at least substantially identical with the 35 Mark and the 36 Mark;[72]

1. the Claimed GS are the ‘same kind of thing’ as the goods or services for which the trade mark/s relied upon by the Opponent has/have been used;[73] and

2. a person other than the Holder has the earlier claim to ownership based on use in Australia of the trade mark/s relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register or (b) any actual use of the 35 Mark or the 36 Mark in Australia by the Holder.[74]

   [72] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

   [73] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

   [74] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

64.  For the reasons already stated,[75] I do not consider the Opponent’s Mark to be substantially identical with the 35 Mark or the 36 Mark.

[75] See discussion at [30] and [40] of this decision.

1. Turning to the NCL Mark and the Word Mark, both parties essentially relied on their s 44 submissions in relation to whether either of these marks is substantially identical with the 35 Mark or the 36 Mark.[76] For reference, the relevant marks are reproduced below:

   [76] Opponent’s Submissions, [89]–[90]; Holder’s Submissions, [64].

NCL Mark & Word Mark	35 Mark & 36 Mark
NORWEGIAN
NORWEGIAN CRUISE LINE

66.  I do not consider the 35 Mark to be substantially identical with the NCL Mark or the Word Mark. It is clear that each mark shares a commonality in the word ‘Norwegian’. However, the 35 Mark differs markedly in terms of its presentation and additional features such as the prominent portrait of Johan Ludvig Runeberg which appears on the tail of the airplane. The respective marks contain significant differences which are unlikely to go unnoticed on a side by side comparison. As such, a total impression of resemblance does not emerge from the relevant comparison.

67.  As regards to the 36 Mark, I do not consider this trade mark to be substantially identical with the Word Mark. Both marks obviously share the common word ‘Norwegian’ and, by default, it is the essential feature of the Word Mark. I note that the suffix ‘.com’ in the 36 Mark simply indicates a domain name and this does not constitute an essential feature of same. However, the 36 Mark is comprised of more than just the word ‘Norwegian’ and the suffix ‘.com’ given it also contains a prominent stylised airplane device with a trailing jet-stream. The size and placement of this device is likely to strike the eye particularly given the curved elongated nature of the jet-stream. Crucially, the device is not an illustration of the word ‘Norwegian’.[77] In my opinion, the trailing jet-stream is comparable to the ‘distinctive tail’ considered in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd[78] wherein the trade marks below were found not to be substantially identical:

[77] Cf E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [69] (French CJ, Gummow, Crennan and Bell JJ).

[78] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

Wicked Tail Mark New Wicked Mark

68.  In determining that the trade marks were not substantially identical, the Full Federal Court said:

Having regard to the presentation of the two marks, including the distinctive tail on the “D” of the Wicked Tail Mark and the font and block characteristics of the New Wicked Mark, we do not consider them to be substantially identical.[79]

[79] Ibid [162].

1. In my assessment, the presence of the airplane device with a trailing jet-stream contributes to a total impression of dissimilarity emerging from a side by side comparison of the 36 Mark and the Word Mark when regard is given to their essential features.

70.  For similar reasons, I do not consider the 36 Mark to be substantially identical with the NCL Mark. In my opinion, the identity of NCL Mark resides in the mark as a whole because no component can be reasonably characterised as its essential feature. Put another way, ‘Norwegian’ and ‘Cruise Line’ are equally non-distinctive in the context of cruise line services. As each component is central to the identity of the NCL Mark, the absence of ‘CRUISE LINE’ in the 36 Mark together with the presence of the airplane device necessarily results in a total impression of dissimilarity emerging from a side by side comparison of the respective marks.

71.  Consequently, I do not consider any of the Nominated Marks to be substantially identical with the 35 Mark or the 36 Mark. Given all three requirements outlined at [63] of this decision must be satisfied in order to establish this ground of opposition, it is not necessary to consider the remaining requirements.

72. The s 58 ground of opposition has not been established.

Decision

73.  Regulation 17A.34N(1) of the Regulations provides:

Decision on opposition
(1)  Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)  to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)  to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

74.  The Opponent has not established a ground of opposition. Accordingly, protection of the IRDAs may be extended to Australia one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that protection of the IRDA(s) subject to the appeal shall not occur until that appeal has been withdrawn or discontinued and that the disposition of the IRDA(s) be in accordance with the court’s order or direction.

75.  If there is no appeal, the International Bureau will be notified of this decision.[80]

[80] Regulations reg 17A.34N(2)

Costs

76. Both parties sought an award of costs. Costs usually follow the event. Accordingly, in respect of international registration number 1273316 (Australian trade mark number 1847335), I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Regulations.

77.  In respect of international registration number 1273904 (Australian trade mark number 1847336), I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[81]

[81] [2001] ATMO 78.

Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
13 October 2022

Annexure A

Application Number:                  1847335

International Registration:        1273316

Specification:  Class 16: brochures; entrance cards, tickets and boarding cards in printed form, printed matter; travel and in-flight magazines; periodicals

Class 35: advertising; business management; business administration; office functions; organization, performing and monitoring of sales promotion incentive programs, frequent flyer programs and customer loyalty programs; retail services, in-flight sales services and internet sales services for tobacco, cosmetics, clothing, watches, wine and liquor, jewelry and sunglasses

Class 38: telecommunications; telecommunication related to travels, transport by air and aviation; electronic transmission of news and data for ticket sale; electronic transmission of data and documents for business purposes via computer terminals from a computer-based database; electronic news transmission related to flight reservations, check-in and boarding controls for air travels; electronic issuing of tickets, namely electronic transmission of data for ticket issuing and providing of access to data in flight reservation systems and databases

Class 39: airline services; travel services; air transport services; transport of passengers and goods by automobiles, trains, ships and airplanes; travel booking agency services; travel arrangement services for individuals and groups; travel booking, reservation or information services relating to travel; vehicle rental services; vehicle parking services; courier services; cargo storage and handling services; aircraft chartering services; package holiday services for arranging travel; booking and reservation services for travel tours; information services relating to all the aforementioned services

Class 43: services for providing food and drink; temporary accommodation; accommodation booking agency services; arranging holiday accommodation; reservation of temporary accommodation, hotel rooms and restaurants; tourist agency and travel agency services for booking accommodation; bar, cafe, snack-bar, cocktail lounge services, airport waiting lounge services and restaurant services

Application Number:                  1847336

International Registration:        1273904

Specification:  Class 16: brochures; entrance cards, tickets and boarding cards in printed form, printed matter; travel and in-flight magazines; periodicals

Class 35: advertising; business management; business administration; office functions; organization, performing and monitoring of sales promotion incentive programs, frequent flyer programs and customer loyalty programs; retail services, in-flight sales services and internet sales services for tobacco, cosmetics, clothing, watches, wine and liquor, jewelry and sunglasses

Class 38: telecommunications; telecommunication related to travels, transport by air and aviation; electronic transmission of news and data for ticket sale; electronic transmission of data and documents for business purposes via computer terminals from a computer-based database; electronic news transmission related to flight reservations, check-in and boarding controls for air travels; electronic issuing of tickets, namely electronic transmission of data for ticket issuing and providing of access to data in flight reservation systems and databases

Class 39: airline services; travel services; air transport services; transport of passengers and goods by automobiles, trains, ships and airplanes; travel booking agency services; travel arrangement services for individuals and groups; travel booking, reservation or information services relating to travel; vehicle rental services; vehicle parking services; courier services; cargo storage and handling services; aircraft chartering services; package holiday services for arranging travel; booking and reservation services for travel tours; information services relating to all the aforementioned services

Class 43: services for providing food and drink; temporary accommodation; accommodation booking agency services; arranging holiday accommodation; reservation of temporary accommodation, hotel rooms and restaurants; tourist agency and travel agency services for booking accommodation; bar, cafe, snack-bar, cocktail lounge services, airport waiting lounge services and restaurant services

and Edelman JJ).