New South Wales Lotteries Commission v Novamedia B.V

[2001] ATMO 65

TRADE MARKS ACT 1995

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

Re:Opposition by New South Wales Lotteries Commission to registration of trade mark applications 791884 - National Postcode Lottery and 791885 - Australian Postcode Lottery (both in classes 16, 36, 41) - in the name of Novamedia B.V.

Background

On 21 April 1999, Stichting Nationale Postcode Loterij, a body incorporated in the Netherlands, filed two trade mark applications under the Trade Marks Act & Regulations 1995 ("the Act").  Shortly after filing the application, the applicant advised that its name had been changed to Novamedia B.V. ("Novamedia") and the records were updated accordingly.

Application 791884 was for the trade mark National Postcode Lottery and 791885 was for the trade mark Australian Postcode Lottery.  Each was in respect of the same goods and services, which were amended in the course of examination and now read as follows:

Class 16  Paper, cardboard and goods made from these materials, not included in other classes; books, papers, magazines, periodicals and printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks

Class 36  Financial affairs

Class 41  Producing films; renting films; impresario services; performance of music and amusement programs, including by radio and television; theatre performances; organisation of sporting events and game programs; renting theatre decors; lending and distributing books and magazines; publishing of books, papers and magazines; organisation of games of chance; organisation of lotteries, including on television

Acceptance of the applications was advertised in the Australian Official Journal of Trade Marks on 20 January 2000.  On 16 March 2000, New South Wales Lotteries Corporation ("NSW Lotteries") filed notices of opposition to the applications.  It served evidence in support of its oppositions on 13 July 2000.  Novamedia served evidence in answer on 5 October 2000.  No evidence in reply was served.

The matters were set down for concurrent hearing before me, as a delegate of the Registrar of Trade Marks, on 15 March 2001, in Sydney.  Ms Angela Bowne, of Counsel, appeared for NSW Lotteries.  She was instructed by Mr Andrew Sullivan, of Eakin McCaffery Cox, solicitors, of Sydney.  Mr Brian Munday, of Spruson & Ferguson, patent and trade mark attorneys, of Sydney, appeared for the trade mark applicant, Novamedia.

Evidence

For convenience, the three declarations which comprise the evidence are tabulated below.

Short reference	Declarant	Place/Date Declared	Exhibits/ Annexures
"Carter 1"	Mark John Carter	Sydney,13 July 2000	N/A
"Munday"	Brian Marsden Munday	Sydney, 5 October 2000	BMM1
"Carter 2"	Mark John Carter	Sydney, 9 May 2001	A1 - A3

In Carter 1, which was filed and served as evidence in support, Mr Carter states his position as Group Product Manager at NSW Lotteries Corporation, in which role he is responsible for the marketing and development of a portfolio of the games it runs.  He has 20 years experience in the gaming industry.  He states that NSW Lotteries is an entity incorporated pursuant to the provisions of the New South Wales Lotteries Corporatisation Act 1996, and sets out a brief history of lotteries in New South Wales ("NSW"). The gist of this history is that since 1930, State lotteries have been used in NSW to raise funds for such worthy ends as the funding of public hospitals and the construction of the Sydney Opera House. These lotteries have been, and are, very well patronised, as the figures provided attest. Besides being active within its own jurisdiction, NSW Lotteries also participates in the national games of Oz Lotto and Powerball. Carter 1 states that national games are administered by three unincorporated entities. NSW Lotteries is a member of two of these organisations: the National Lotto Bloc and the Powerball Bloc. It has observer status only with the Australian Lotto Bloc.

Carter 2 was filed and served as further evidence following the hearing, in circumstances described under Submissions, below.  The information provided in it amplifies Mr Carter's first declaration.  Annexed to the declaration is a copy of the Lotteries and Art Unions Act 1901 (NSW), and copies of parts of the New South Wales Lotteries Corporatisation Act 1996, the Public Lotteries Act 1996 (NSW). These three Acts ("the Acts") are stated to regulate the conduct of lotteries in NSW. Carter 2 also states that NSW Lotteries holds the exclusive licence to conduct public lotteries in NSW, other than the game of Keno, and the exclusive right to conduct draw lotteries. The declaration lists similar organisations in Western Australia, Queensland and South Australia and nominates the Acts of their respective States which regulate each organisation's activities. Additionally, it nominates Tattersall's Sweeps Pty Ltd as an entity which is entitled to conduct lotteries in Australia. All these bodies are stated to be involved in the administration and conduct of a number of national games.

The Munday declaration, filed and served as evidence in answer, states that a search of the Australian Trade Mark Office records was conducted, on 22 September 2000, for registered and removed trade marks in classes 16 and/or 36, containing the word LOTTERY or LOTTERIES.  The exhibit appended to the declaration consists of print-outs of the details of the 18 relevant marks found.  Their various owners are lotteries commissions (of NSW, SA and WA), a charitable body (De La Salle Brothers, Queensland), and four joint owners whose address for service is given as Tattersall's Holdings Pty Ltd.

Submissions

Ms Bowne began her submissions on behalf of NSW Lotteries by stating that the opponent would only rely on six of the grounds nominated in its notices of opposition.  Mr Munday's submissions on behalf of the applicant were consequently restricted to the same six grounds.  I will not summarise those submissions here but will instead refer to them in the context of those grounds, in my Reasons, below.

In addressing those six grounds, however, Ms Bowne sought to introduce material which had not been served as evidence.  This material was sections from the NSW Acts nominated above, and print-outs from the web-sites of the various State-owned entities responsible for legal gambling in Australia.  However, Mr Munday intervened at this point, on the basis that none of this material was in evidence.  Responding, Ms Bowne drew my attention to part of the decision of the Registrar in The Garden Co Ltd v Gardenia Overseas Pty Ltd [1], in which material introduced at a hearing was accepted by the delegate.

[1] 27 IPR 237, at 239

After a short adjournment, I advised the parties that I would listen to all the submissions that had been prepared, as there was a public interest in using the time that had been set aside for the purpose.  It would be inconvenient to both parties, and to the Registrar, to have to reconvene the Hearing.  I said that, so far as the statutory provisions of the Acts of the NSW legislature were concerned, the trade mark applicant might have foreseen that these would be likely to have a bearing on the matter.  I pointed out that these Acts had been specifically referred to in Carter 1, and that s 42 (contrary to law) had been nominated in the notice of opposition.  Although no copy of the relevant provisions had been served, these two factors in combination might have alerted Novamedia's attorney to the need to prepare contingent submissions, I said.  As for the web-site material, it might well be publicly available material as Ms Bowne had submitted, but it was not in evidence and there had been no reason to anticipate that it would be referred to in the course of the hearing.  In my opinion, all this material should have been served as part of the evidence either at the evidence in support or evidence in reply stage.  As this had not been done, the proper course would be for the opponent to make an application under the provisions of regulation 5.15 for permission to serve them as further evidence following the hearing.  This would allow the trade mark applicant an opportunity to object to the introduction of the further evidence, or to make a considered response to any issues that were raised by the additional material, if permission were eventually granted.  In other words, the status of the material tendered would be decided after the hearing and not in the middle of it.

I also advised the parties that I would give reasons in my decision for taking this particular course.  This I now do, as follows. 

A hearing is in the nature of an administrative process.  Strict rules of evidence do not apply.  However, the procedures for the service of evidence in opposition proceedings are laid down in regulation 5.  Adherence to those procedures is desirable, in the interests of fairness and of the smooth conduct and expeditious resolution of oppositions.

It is in the public interest that the Hearing Officer should be as fully informed as possible before making a decision.  I should consider both the nature of the material and the manner of its introduction to proceedings before deciding whether it should be admitted, and if so, by what mechanism.

The provisions of the NSW Acts were central to the opponent's case.  It would have been inconvenient for all concerned for Ms Bowne, as the opponent's representative, to have been restricted to reading out, or describing, the provisions on which she was making submissions.  Had I refused to look at the extracts tendered, this would have been her only recourse. 

On the other hand, it is undesirable that the presentation of relevant material be left until the hearing.  Not to put too fine a point on it, the manner of its introduction at the hearing appeared to me to be intended to surprise and disconcert.  For this reason, I was not satisfied that procedural fairness would be observed if the copies of these provisions were simply admitted.  As to the delegate's acceptance of material tendered in Gardenia, supra, I note that not just one, but both parties in that particular instance, introduced additional material at the hearing.  Moreover, all additional material in that case was obtained from the public records of the Trade Marks Office, which were readily available to both parties and were all the usual material dealt with in opposition proceedings.  The situation in this case may thus be distinguished on its facts from Gardenia.  It is very unusual for the Lotteries and Art Unions Act 1901 (NSW), ss 5, 6 and 7 of the New South Wales Lotteries Corporatisation Act 1996, and ss 5, 6, 7, 8, 10, 13, 15, 16 and 22 of the Public Lotteries Act 1996 (NSW) to be dealt with in proceedings before the Registrar of Trade Marks. Also, there was no such quid pro quo in the present case as occurred in Gardenia.

I note that the statutory material, and the second declaration by Mr Carter, became the subject of an application for permission to serve further evidence, dated 10 May 2001.  Permission to serve was duly granted on 30 May 2001, the trade mark applicant having declined the opportunity offered it to provide evidence in response.  This material therefore became further evidence and I have taken account of it in this decision.

The web-site material tendered at the hearing is in a different category from the statutory provisions of the Acts.  While Ms Bowne made an occasional brief reference to it in the course of her submissions, its relevance to the opponent's case seemed marginal.  Being in the nature of an ephemeral publication, web-site data is, in any case, not usually to be regarded as reliable information in itself.  As in the case of the legislative provisions referred to above, Gardenia does not appear to provide a precedent for allowing this material in, because the facts of the two cases are different.

I note that this web-site material did not form part of the application for permission to serve further evidence, and I have taken no account of it in this decision.

Notices of Opposition

The notices of opposition list twelve grounds of opposition.  At the hearing, Ms Bowne stated that the opponent would rely on six of the grounds only.  These were

• that the opposed trade marks are not capable of distinguishing in terms of s 41 (ground (c)),

• that the use of the opposed trade marks would be contrary to law in terms of s 42 (ground (d));

• that use of the opposed trade marks is likely to deceive or cause confusion in terms of s 43 (ground (e));

• that the opposed trade marks are deceptively similar to another person's prior registered or pending trademark for similar goods or closely related services in terms of s 44 (ground (f)),

• that the applicant did not at the date of the application have the necessary intention to use, or authorise the use of, or to assign the trade marks in terms of s 59 (ground (h)); and

• that the trade marks are deceptively similar to trade marks which have achieved a reputation in respect of similar goods and services, so that use of the opposed trade marks would be likely to lead to deception or confusion in terms of s 60 (ground (i)).

There is no obvious reason to deal with any of the other grounds listed.  I therefore find the opponent has not established the grounds claimed under ss 39(1), 39(2), 58, 61, 62(a) or 62(b).  I dismiss the oppositions so far as they are based on these six grounds.

Reasons

I will state at the outset that the submissions and evidence were largely in terms of the opponent's position and trade in NSW and the ACT.  For economy of discussion, I will confine my remarks, in the main, to the grounds of opposition in relation to NSW.

The general thrust of the opponent's argument was that there are particular circumstances with regard to the conduct of lotteries of which the Registrar should be aware before deciding the opposition in terms of the Trade Marks Act 1995.  Ms Bowne described in general terms the legislative regime for lotteries, as it exists in Australia, and particularly in NSW.  The regulation and licensing of legal gambling is the province of State-owned entities, whose objectives and functions are enshrined in legislation.  In the case of NSW, NSW Lotteries is allowed, by virtue of its legislation, to conduct lotteries itself.  It is the exclusive licensee for public lotteries in NSW.  Private lotteries, however, are conducted in NSW by a variety of organisations under the provisions of the Lotteries and Art Unions Act 1901 (NSW). It is this 1901 Act which allows a Queensland-based organisation like De La Salle Brothers, as owner of trade mark registration 726160, (annexed to the Munday declaration), to conduct its charitable fundraising business in NSW under the trade mark shown below.

Ms Bowne argued that Novamedia was precluded by this legislative regime from using the words LOTTERY or LOTTERIES, and from conducting them, at least in NSW.  For this reason, she submitted, the trade marks should not be registered, or in the alternative, should be registered subject to a geographical limitation which would exclude NSW.

My enquiry begins with the grounds of opposition in terms of ss 44 and 60, which may conveniently be considered together.  I will then deal with the remaining grounds of opposition in the order in which they are listed in the notices of opposition.

Identical etc. trade marks

44.(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.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

(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.

Note 1: For deceptively similar see section 10.

Note 2:  For similar services see subsection 14(2).
Note 3:  For priority date see section 12.

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

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

Sections 44 and 60 have in common a threshold test of whether the trade marks in question are substantially identical or deceptively similar.  If I find the trade marks in question are neither deceptively similar nor substantially identical, I need not proceed to consider the other factors specified in these provisions.

Ms Bowne submitted that five of the opponent's trade marks met this threshold test at least so far as deceptive similarity is concerned.  I reproduce these trade marks below.

474665 - GOLDEN JACKPOT LOTTERY;

1. 
   

   503211

2. 
   

   730727

Section 10 of the Act provides:

Definition of deceptively similar

10. For the purposes of this Act, 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.

In Registrar of Trade Marks v Woolworths [2], French J said:

[2] 45 IPR 411, at 428

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

The sole point of resemblance between the opponent's trade marks and those of the applicant is that they contain the word LOTTERY or LOTTERIES.  The services and goods in respect of which each party uses its trade marks are, or include, lotteries and associated products.  The words are descriptive in the context of these goods and services. 

That, however, is not the end of the matter.  I must consider whether, in the special circumstances of trade which apply in respect of the lotteries in NSW and the ACT, it is likely that, as a result of the use of the applicant's trade marks, the ordinary person will entertain a reasonable doubt as to the origin of the goods and services.  The relevant date for determining this is the application date, 21 April 1999.  I must also have regard to the use to which Novamedia may properly put its trade marks, if registration is granted.

There are two reasons why I do not think there is likely to be deception or confusion if these trade marks are used in NSW (and the ACT).  I note firstly that the regulatory regime, as it existed at the date of application, already allowed persons other than the opponent to conduct lotteries, albeit under strict conditions.  For that reason, I think that the ordinary person in these jurisdictions will take the word LOTTERY or LOTTERIES in the trade marks of the respective parties to indicate the nature of the goods and services offered, rather than their trade origin. 

Secondly, I believe it to be common knowledge that the regulation of lotteries and other forms of gambling in Australia is currently the subject of considerable debate, due in part to the availability of on-line gambling and in part to the general trend to introduce competition within and between states.  In this rapidly evolving trade environment, I think the ordinary person will be aware that new parties may be eligible to offer goods and services similar to those offered by NSW Lotteries under its registered trade marks.  The evidence and submissions indicate that people in NSW are familiar with the opponent's services, but I do not think that means the ordinary person is really likely to be caused to wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

The opponent also listed trade marks which belong to other entities, claiming that they also constituted a barrier to registration in terms of ss 44 and 60.  However, I would come to the same conclusion in respect of each of them, and for the same reasons.

In the absence of a finding of deceptive similarity, the opposition in terms of ss 44 and 60 fails.

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

41.(1)....
.....

(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.

Ms Bowne, for NSW Lotteries, argued that neither of the trade marks in question was capable of distinguishing the applicant's goods or services, particularly the gaming and lottery services, from those of other traders.  She also criticised the absence of any evidence of use, by the applicant, of its trade marks.  Mr Munday, for Novamedia, responded that, while the trade marks might allude to the nature of those services, they were trade marks which had been correctly seen by the examiner as capable of distinguishing the services applied for.  In these circumstances, there was no need to provide evidence of use.

There is nothing in the opponent's evidence to show that either National Postcode Lottery or Australian Postcode Lottery is a sign that is ordinarily used to indicate the nature of the services or of the goods specified.  I therefore agree with Mr Munday's submission, based on the plain meanings of the words in the two trade marks, that while they both allude to the nature of the gaming services as being in some way connected with postcodes, it is only allusion.  As to the initial word in each trade mark, which is the element which distinguishes one from the other, they are both words commonly used by traders in all manner of businesses.  However, neither National nor Australian is the sole element in either trade mark.  Considering each trade mark as a whole, as I am bound to do, I find the extent to which each trade mark is inherently adapted to distinguish the goods and services claimed is sufficient for each of them to be capable of distinguishing, in terms of s 41(3). 

The onus is on an opponent to substantiate its grounds of opposition.  NSW Lotteries has not discharged its onus to make out a prima facie case under s 41 in my view.  The absence of evidence of use or of intended use must therefore be immaterial to my decision.

For these reasons, the ground of opposition in respect of s 41 fails. 

Trade mark ... use contrary to law

42. An application for the registration of a trade mark must be rejected if:

.....
 (b) its use would be contrary to law.

Ms Bowne's submission, substantiated by the evidence, was that the conduct of lotteries and other forms of gaming in NSW, and elsewhere in Australia, is regulated by State law.  She argued that the effect of the legislative regime in NSW is to prevent anyone other than a legitimate entity or registered, authentic charity from using the words LOTTERY or LOTTERIES, and from conducting lotteries.  She stated that Novamedia was not licensed to conduct lotteries in NSW, had not applied to be licensed, and was not a licensed charity entitled to conduct lotteries in that State.  She asked me to infer from this that the use of the trade marks would be contrary to law, at least in respect of NSW.

Mr Munday, for Novamedia, did not dispute the existence of this regulatory regime.  However, he suggested that it was irrelevant to the question of whether the trade mark application should be registered.  This was because the delegate was in no position to consider legislation other than the Trade Marks Act.  In the absence of some relevant court decision, or incontrovertible evidence of wrong-doing by the trade mark applicant, the delegate should not draw any such inference from the existence of a regulatory regime in respect of the goods or services of an application.  In any case, he said, the argument was flawed.  He drew the analogy of the effect of the Therapeutic Goods Act ("TGA") on the lawfulness of an application in class 5, in respect of pharmaceuticals.  Although such an applicant might require TGA registration before it could lawfully use its trade mark in Australia, the lack of a TGA registration did not prevent registration of the trade mark.  In his experience, he said, traders commonly applied for trade mark registration in advance of gaining the clearances required for conducting lawful trade.  The Trade Marks Act allows an applicant to gain registration prior to actual use.  It was therefore sufficient, he said, that an application for registration be filed, as this was in itself evidence of intention to use the trade marks in Australia.  It should not be presumed, just because a licence had not yet been gained, that the applicant intended to use its trade mark unlawfully.  If the applicant subsequently failed to acquire the necessary licence or registration it needed in order to carry out its intention of trading, then that failure might become a ground for removal.  However, he submitted, the opponent's argument in terms of s 42 did not establish this ground of opposition.

In written submissions dated 24 May 2001, concerning the application for permission to serve the further evidence, Mr Munday reiterated his contention that a delegate of the Registrar of Trade Marks is in no position to consider legislation other than the Trade Marks Act.

I will deal first with this contention.  It has recently been the subject of judicial comment.  In Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd[3], Madgwick J stated:

[3] [2001] FCA 683

The contrary to law ground can fall for consideration at three different stages.  Firstly, under s 42(b) itself, the Registrar is to reject an application for registration if it is contrary to law.  Secondly, at the opposition stage, a person may challenge registration of a trade mark on the basis that it is contrary to law.  Thirdly, the court can rectify the Register by removing a trade mark if it is contrary to law.  The first two are determinations made by the Registrar, which are judicially reviewable by this Court, whilst the third is a determination made by this Court.

However, in my opinion, the fact that the existence of any contrariety to law is to be exercised in some circumstances by an administrative body and, in other circumstances, by a judicial body does not mean that the phrase "if its use would be contrary to law" should have an ambulatory meaning depending upon what kind of tribunal is to apply it.  Nor can any reticence on the part of an administrative decision-maker to express an opinion on a matter of law be encouraged.  The idea that "contrary to law" in the context of judicial proceedings means contrary to all laws, whilst in the context of proceedings before the Registrar it means contrary to laws which are easy for the Registrar  to determine or which are "clear-cut", is not sustainable.  As a matter of practice, delegates of the Registrar have in some cases determined that a trade mark submitted for registration is contrary to law as a result of its being in breach of other legislation: see Re application by Slaney (1985) 6 IPR 307 at 309 where a trade mark was found to be in breach of the Health Legislation Amendment Act 1983 (Cth) and Re Application by Athol Thomas Kelly (1987) 8 IPR 667 at 672 where it was found that the trade mark would infringe the Advance Australia Logo Act 1984 (Cth).  I see no reason why some legislation should be able to be relied on before the Registrar to establish contrariety to law and other legislation such as the Copyright Act, albeit more complex, should not.  Further, it is well-settled that a power granted to the Registrar and to a court can be at once administrative and judicial depending on who was exercising the power.  The High Court so held in R v Quinn; Ex parte Consolidated Foods Corporation (1977) 138 CLR 1, of a power to remove a trade mark from the Register.

The Registrar is far from the first or the only administrative officer or entity to be required to make decisions upon a view of legal matters of an undefined scope............

I acknowledge the claim made by counsel for the Registrar that such an approach requires the Registrar to look at questions of law outside his or her expertise and that this can be difficult and may place a large and onerous responsibility upon the Registrar.  However, the Registrar has the comfort that the criterion is that the use "would" not "could" be contrary to law.  Further, there is no reason why the Registrar could not seek legal advice before forming his/her opinion.  It should also be noted that what is required is that the Registrar form a view as to whether the use of the trade mark would be contrary to law.  Such opinion does not have a similar effect to say, a judicial conclusion of law as to breach of copyright in copyright proceedings; the effect is limited to the refusal of registration.  In any case, an appeal de novo lies from the Registrar's decision to this Court where any error of the Registrar may be corrected.

With this directive in mind, I believe it appropriate for me to form a view as to whether the use of this trade mark would be contrary to law, on the basis of the evidence put before me.

I have considered ss 5, 6 and 7 of the New South Wales Lotteries Corporatisation Act1996; sections 5, 6, 7, 8, 10, 13, 15, 16 and 22 of the Public Lotteries Act 1996; and the Lotteries and Art Unions Act 1901. 

Division 1 of Part 2 of the Lotteries and Art Unions Act 1901 appears to me to bear out Ms Bowne's submission that conducting or attempting to conduct a lottery in NSW is generally prohibited.  There is also a prohibition, at Part 4 of the same Act, on printing or publishing information in furtherance of the conduct of a "foreign lottery", which is defined at s 19.  However, certain charitable and non-profit organisations are authorised, under certain conditions, to conduct lotteries (Division 2, Part 2). 

Section 7(2)(b) of the New South Wales Lotteries Coporatisation Act 1996 establishes that one of the opponent's principal functions is "to hold licences, and conduct the public lotteries for which it holds those licences, in accordance with the requirements of the Public Lotteries Act 1996". 

Section 6 of the Public Lotteries Act 1996 states the objectives of NSW Lotteries as follows

(a)to make provision for the proper conduct of public lotteries in the public interest and to minimise any harm associated with public lotteries, and

(b)to ensure that revenue derived from the conduct of public lotteries is accounted for in a proper manner.

The other provisions of the Public Lotteries Act, so far as I can see, define certain words used in the Act; its application; the requirements for making and granting an application for a licence to conduct a public lottery; those for withdrawing approval or varying the conditions of a licence; the term of a licence; what disciplinary action may be taken, and in what circumstances, against a licensee; what constitutes surrender or revocation of a licence; what may be done to complete a public lottery if a licence is cancelled, revoked or suspended; and a requirement that a licensee must make rules, consistent with its licence and the regulatory framework, about how it conducts its public lotteries.

I accept that this shows that the opponent has a key role in the licensing and conduct of public lotteries in NSW.  It is possible that, if the use of the trade marks was not licensed or authorised under the provisions of these Acts, such use could be contrary to law in NSW.  I do not accept, however, that it shows that the use of the trade marks in question here would, of necessity, be contrary to law. As Mr Munday said, a trade mark owner may seek a licence subsequent to the grant of its trade mark registration. I would also presume that it could license the use of its trade marks, under the provisions of ss 7 and 8 of the Trade Marks Act 1995, to one of the entities which is already authorised, entitled or licensed to conduct lotteries in NSW.  There may be other ways in which it could make entirely lawful arrangements for the use of its trade marks in NSW, and in other parts of Australia.

In my opinion, therefore, the opposition so far as it is based on s 42 has not been made out.

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.

Section 43, when used in opposition to registration, requires an opponent to show that:

(a)there is a connotation in the proposed mark or in one of its parts; and

(b)because of this, the trade mark is likely, when in use, to deceive or cause confusion. 

T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc, [2000] FCA 720, is the most recent authoritative decision on the meaning of "connotation". The case confirms that the connotation must be in the mark itself and cannot be determined as the result of external considerations.

In Ms Bowne's submission, the fact that the operation of lotteries is regulated in the manner described previously, leads to a connotation in the trade marks that the owner is licensed or otherwise authorised or entitled to conduct lotteries in Australia.  I am prepared to accept that the presence of the word Lottery in the trade marks does carry this connotation.  However, I do not accept that, because of this connotation, use of the trade marks is likely to result in deception or confusion.  To accept this would be to infer, without any corroborating evidence, that the trade mark applicant does not intend to seek the appropriate licence or make other arrangements which would allow it to carry on its business in a lawful manner.

The ground of opposition in terms of s 43 is not made out, in my view.

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

Ms Bowne argued that this ground was substantiated by Novamedia's failure to provide any evidence of use or intended use.  She also contended that the applicant's lack of an address in Australia was relevant to this ground of opposition, as indicating a lack of intention to use the trade marks.

For this provision to be activated to block the registrations, an opponent must first substantiate the ground of opposition.  Intention to use a trade mark in Australia is shown, prima facie, by the filing of an application to register it - see Aston v Harlee (1960) 103 CLR 391 at 401, per Fullagar J.

Without some substantiation, the ground under s 59 remains a mere allegation. A trade mark applicant may choose to provide evidence in response to such an allegation, but it may equally choose not to do so. Without more than has been shown by NSW Lotteries, no adverse conclusion as to Novamedia's motives is to be drawn, I believe, from its silence.

As to the question of the applicant's address, the Act does not require a trade mark applicant to have a business address in Australia.  Under the provisions of s 215, an applicant, registered owner, or person claiming an interest in, or right in respect of, a trade mark recorded in the Register, must only have an address for service in Australia.  Novamedia has complied with this requirement.

The ground of opposition in terms of s 59 has, in my opinion, not been made out.

Decision

As I have concluded that none of the grounds of opposition have been made out, it follows that the opposition as a whole fails.  I can see no reason, in consequence of this failure,  to impose a geographical limitation.

I direct that the trade marks proceed to registration unless, within one month of the date of this decision, the Registrar is served with a copy of a notice of appeal.  If the Registrar has been served with a notice of appeal before that time, I direct that registration not proceed until the appeal has been decided or discontinued.

Costs

Costs generally follow the event.  As the opponent has been unsuccessful in its oppositions, the applicant for registration is entitled to its costs.  I therefore award costs against the opponent, NSW Lotteries, in accordance with the official scale.  If necessary, those costs will be taxed on payment of the fee for doing so.  I direct that the taxation be on the basis of costs at the scale amount for application 791884, and at zero for 791885 with the exception of fees, which are to be taxed at the full amount.  I do this as a variation, appropriate to the present case, of the principle in Latrobe v Simmons, 34 IPR 346.

Arminel Ryan
Senior Examiner

31 July 2001