Nicholas Compton v Michael Madigan

[2022] ATMO 213

TRADE MARKS ACT 1995

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

ReOpposition by Nicholas Compton to registration of trade mark application 2136040 (35, 41) – AUSTRALIAN MONSTERS OF ROCK – in the name of Michael Madigan

Delegate:                 Robert Wilson

Representation:       Opponent: Self-represented

Applicant: Lamost Pty Ltd

Decision:                   2022 ATMO 213

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 41 considered – trade mark to no extent inherently adapted to distinguish – trade mark not capable of distinguishing – registration refused

Background

1. This decision concerns an opposition to registration of the trade mark detailed below. The opposition was brought by Nicholas Compton (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth). The application is in the name of Michael Madigan (‘the Applicant’).

Application Number:

2136040

Filing Date:

14 November 2020

Specification:

Class 35: Promotion of entertainment events; Concert promotions (for others); Promotion (advertising) of concerts

Class 41: Advisory services relating to entertainment; Arranging of musical entertainment; Event management services in relation to the organisation of educational, entertainment, sporting or cultural events; Organisation and conducting of dance, music and other entertainment festivals; Organisation of entertainment events; Organising events for entertainment purposes; Organisation of musical events; Arranging and conducting of concerts; Arranging of music performances; Arranging of music shows

(‘the Applicant’s Services’)

Trade Mark:

AUSTRALIAN MONSTERS OF ROCK

(‘the Trade Mark’)

2. Following advertisement of the application’s acceptance in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration and a Statement of Grounds and Particulars (‘the SGP’). The SGP nominated grounds of opposition under ss 41, 43, 58, 60 and 62A. The Applicant subsequently filed a Notice of Intention to Defend.

Evidence

3. The Opponent filed Evidence in Support of its opposition, being:

• Declaration made on 10 January 2022 by Nicholas Andrew Compton, the Opponent, with Annexures 1.1.1 to 5.3.

4. The Applicant filed Evidence in Answer, being:

• Declaration made on 4 September 2022 by Michael Madigan, the Applicant, with Annexures MM-01 to MM-14 (‘the Madigan declaration’); and

• Declaration made on 10 April 2022 by Mell Beauchamp, musician and band manager, with Annexures MB-01 to MB-06 (‘the Beauchamp declaration’).

• Declaration made on 10 April 2022 by Nigel Chen-Tan, registered patent and trade mark attorney and the representative of the Applicant at the time, with Annexures NCT-01 to NCT-04 (‘the Chen-Tan declaration’).

5. The Opponent filed Evidence in Reply, being:

• Declaration made on 14 June 2022 by Nicholas Andrew Compton with Annexures 5.1.1 to 13.2.1 (‘Compton 2’); and

• Declaration made on 14 June 2022 by Michael Tucak, solicitor to the Opponent.

6. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request a hearing or to file written submissions. The Applicant requested a decision without a hearing. Neither party filed formal written submissions.

7. As a delegate of the Registrar of Trade Marks it has fallen to me to decide the matter on the material discussed above.

The Opponent

8. According to Compton 2, the Opponent is

a Perth based Booking Agent and Concert Promoter based in Perth Western Australia, and [has] been operating in the music and entertainment industry since 1998 in multiple capacities including Venue Booking Agent for live music venues of 100 to 5000 persons capacity. Venue/Entertainment Manager of Live Music Venues up to 2000 persons capacity, Assistant Site Manager for major music festivals in Perth up to 40,000 persons capacity, Australian Booking for a range of Australian original, cover and tribute act music artists, and Perth promoter representative for popular national concert tour promoters.

The Applicant

9. According to the Madigan declaration:

I am a sole trader … who provides advertising, marketing, and event management services for entertainers, in particular musicians.

I have been providing marketing and event management services since 2014.

[The Trade Mark] was first used on 12 February 2015 in a Facebook post and has been continuously used through [sic] Australia in respect of [the Applicant’s Services].

I provide [the Applicant’s Services] under [the Trade Mark] to musicians, bands, the Western Australian public, and via online channels to all large cities across Australia.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 41, 43, 58, 60 and 62A. To successfully oppose registration of the Trade Mark the Opponent need establish only one ground of opposition. As will become apparent it is necessary only that I consider the ground pursuant to s 41. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 14 November 2020, being the filing date of the application.[3]

Discussion

Section 41

1. Section 41 provides:

41 – Trade Mark not distinguishing applicant’s goods or services

(1)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 (the 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.

(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)This subsection applies to a trade mark if:

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

(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)This subsection applies to a trade mark if:

(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances.

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

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

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

Note 2: For goods of a person and services of a person see section 6.

Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

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

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

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

1. In the SGP the Opponent particularised this ground of opposition as follows:

   The Trade Mark application contains words describing the location and the type of services in concert promotion (Class 35) and music entertainment, events, festivals and shows (Class 41), and the words “Monsters” and “Rock” are commonly, and regularly, used in entertainment event titles either together or separately (eg “Australian Monsters of Rock, AC/DC Live!”). Concert promoters in entertainment use the word “Rock” as musical genre description and “Monsters” as reference to size of events or profile of acts, attractions featured or the aggressive nature of some acts. The word “Australian” is used to describe nationality of performers at events in those classes and when referencing where an event is based or produced. All three words are commonly used in entertainment event titles, captions and slogans by other traders, including in the particular order used in the application. The Trade Mark is not inherently adapted in a way that is capable of distinguishing the applicant’s services in these classes.

2. The case law setting out the necessary considerations for determining whether a trade mark is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd, Lord Parker of Waddington said:

   The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods.[4]

3. In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks stated:

   [W]hether a mark is adapted to distinguish [will] be tested by reference to  the likelihood of other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[5]

4. More recently, in Cantarella Bros Pty Limited v Modena Trading Pty Limited the High Court adopted a two-part test for determining inherent adaptation to distinguish of signs.[6] The first step requires assessing the ordinary signification of the sign, in Australia, to persons who will purchase, consume or trade in the relevant goods and/or services. If there is no ordinary signification the sign is to be considered inherently adapted to distinguish. Where there is an ordinary signification the second step is necessary. That step involves determining whether there is a legitimate desire for other traders to use the sign. If such a desire is likely, the sign is not inherently adapted to distinguish. Such legitimate desire exists on a continuum. At one end of the continuum are signs for which there is a high likelihood that other traders will wish to use them; such signs are considered to be bereft of inherent adaptation to distinguish. At the other end of the continuum are signs which, notwithstanding their ordinary signification, it is highly unlikely that other traders will wish to use them. Such signs approach inherent adaptation to distinguish.

Ordinary Signification

1. The Trade Mark is composed of familiar, English language words which both individually, and as a whole, are readily understood. The meanings of ‘Australian’ and ‘of’ are both sufficiently well understood that it is unnecessary to define them here. The word ‘monster’ has a number of meanings including, an adjective meaning: ‘one that is highly successful’, for example, ‘That movie was a monster at the box office’.[7] ‘Rock’ too has a number of meanings, including a noun meaning:

   popular music usually played on electronically amplified instruments and characterised by a persistent heavily accented beat, repetition of simple phrases, and often country, folk, and blues elements[8]

2. In the context of the Applicant’s Services, ‘Australian monsters of rock’ has the ordinary signification of persons of Australian origin who are highly successful in the realm of rock music. When used in connection with the Applicant’s Services the Trade Mark indicates that the events, concerts, entertainment, etc, concern or feature, or concern, such persons. This view is supported by the Opponent’s evidence which includes examples such as that shown below:

Legitimate desire for other traders to use the Trade Mark

1. The Trade Mark has an obvious and readily understood ordinary signification in the context of the Applicant’s Services. While the word ‘monster’ in the trade mark is a term which might not commonly be used in everyday language to describe something that is highly successful, in the context of the Applicant’s Services the use of what might be described as trendy and/or edgy terms is common. The evidence filed in this matter, by both the Opponent and the Applicant support a view that ‘Australian Monsters of Rock’ is a term that other traders are legitimately likely to wish to use. Two examples from the Applicant’s Evidence in Answer are provided below.

1. Due to the ordinary signification of the Trade Mark in the context of the Applicant’s Services along with the likelihood that other traders would wish to use legitimately the Trade Mark in connection with their own services, the Trade Mark is to no extent inherently adapted to distinguish the Applicant’s Services from the similar services of other persons. However, that is not the end of the matter, it remains to be considered whether the Trade Mark does in fact distinguish the Applicant’s Services.

Consideration of s 41(3)

1. Because the Trade Mark is to no extent inherently adapted to distinguish, it is necessary, in accordance with s 41(3), to consider whether the Applicant ‘has not used [the Trade Mark] before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish [the Applicants Services] as being those of [the Applicant]’.

2. In its Evidence in Answer, the Applicant provided a number of examples of use of the Trade Mark. Two examples of use of the Trade Mark were provided above. The first was one of six examples provided in Annexure MM-02 to the Madigan declaration. The annexure was declared to be ‘several ticket designs for events previously designed by me under [the Trade Mark]’. The use shown in the first example is typical of the examples in MM-02. In those examples the use of the Trade Mark is not obviously use as a trade mark—that is, it is not used ‘to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’.[9] ‘UNITED MUSICIANS’ appears as the badge of trade origin, while AUSTRALIAN MONSTERS OF ROCK appears to be entirely descriptive of what a consumer might hope to experience. The second example was taken from Annexure MM-06. Annexures MM-03 to MM-13 were declared to be ‘screenshots from [the Applicant’s] Facebook social media account, showing use of [the Trade Mark] in the years 2015, 2018, 2019, and 2020]’. This example, too, does not show use of the Trade Mark as badge of trade origin, but as a description of the services.

3. There are some examples where the Trade Mark has some flavour of a badge of trade origin. For example, in the example provided in Annexure MM-07 (reproduced below). This is, however, a rare example.

1. The Applicant’s Facebook account appears to be called ‘Australian Monsters of Rock’. It includes statements such as the follow which was taken from a 19 November 2018 post provided in Annexure MM-05:

   Release dates for ‘The Australian Monsters of Rock’ Tour with acclaimed Sydney AC/DC frontman Andy Sutton … along with The Australian Angels Show, Shaved and Dangerous a salute to the Baby Animals …

Such use is unlikely to be seen as a badge of trade origin but rather as descriptive of the concert.

1. Neither the Beauchamp declaration nor the Chen-Tan declaration assists the Applicant. The Beauchamp declaration provides examples of use which suffer from the same problems as those discussed above. Indeed, many of the examples provided in the Beauchamp declaration appear in the Madigan declaration. The Chen-Tan declaration is concerned principally with dates of first use and does not assist.

2. The Applicant’s evidence indicates that the Applicant has not used the Trade Mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the Applicant’s Services as being those of the Applicant. Consequently, the trade mark is not capable of distinguishing the Applicant’s Services from the goods or services of other persons. Accordingly, registration of the Trade Mark is refused.

Decision

1. Section 55 relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

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

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

2. I have found the Opponent has established the ground of opposition it raised pursuant to s 41. As a Delegate of the Registrar, I accordingly refuse to register the Trade Mark.

Costs

1. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
5 December 2022

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Syone and Jagot JJ).

[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelam JJ).

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

[4] (1913) AC 624, 634-5 (‘Du Cros’).

[5] (1964) 111 CLR 511, 514.

[6] [2014] HCA 48 (French CJ, Hayne, Crennan, and Kiefel JJ).

[7] ‘monster’, Miriam-Webster (Web Page) < ‘rock’, Miriam-Webster (Web Page) < See s 7.