Nitro AG v Nitro Circus IP Holdings LP
[2019] ATMO 123
•16 August 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSReOpposition by Nitro AG to extension of protection of International Registration 1320940 (Australian trade mark application 1813094) – NITRO CIRCUS – held by Nitro Circus IP Holdings LP
AND
Oppositions by Nitro AG to Australian trade mark applications 1684786 and 1684787 – NITRO CIRCUS – in the name of Nitro Circus IP Holdings LP
Delegate: Debrett Lyons
Representation: Opponent: written representations only by AJ Park Law
Applicant: Wayne Covell of Worthy of the Name Pty Ltd
Decision: 2019 ATMO 123
Trade Marks Act 1995 (Cth): Section 52 and Regulation 17A.33 oppositions: ss 42(b), 44, 58 and 60 of the Act considered – none established. Oppositions unsuccessful.
Background
Nitro AG (‘NAG’), owner of the trade mark NITRO, has brought three oppositions under the Trade Marks Act 1995 (‘Act’) to registration and protection in Australia of NITRO CIRCUS (‘Trade Mark’) by Nitro Circus IP Holdings LP (‘NC’).
Two of the oppositions have been brought against Australian national trade mark applications and one against extension of protection to Australia of an existing International Registration (‘IRDA’). The Trade Marks Regulations 1995 (‘Regulations’) control the application of the Act to the IRDA but for the purposes of these oppositions, Part V of the Act has common application[1] and I refer to the Regulations only where the IRDA should be treated differently.
[1] See Reg. 17A.28
NAG is the owner of the Australian trade mark registrations detailed below:
Regn. No.
Trade Mark
Specification
Priority Date
559276
NITRO
Class 28: Skiing apparatus and equipment, including snow skies (sic) and snow boards.
21 Feb 1991
559277
NITRO
Class 25: Sporting clothing and all other goods in this class excluding motorcycle clothing, motorcycling footwear and motorcycling headgear.
21 Feb 1991
Details of the IRDA, and then of NC’s national applications as examined and advertised for acceptance in the Australian Official Journal of Trade Marks[2], are set out below:
[2] Application 1684786 was accepted on 17 July 2015 and advertised in the Australian Official Journal of Trade Marks on 20 August 2015. Application 1684787 was accepted on 4 July 2015 and advertised on 20 August 2015. Application 1813094 was accepted on 4 January 2017 and advertised on 12 January 2017.
Application No: 1813094 (the IRDA)
Int’l Regn: 1320940
Priority Date: 26 February 2016 (Convention)
Filing Date: 25 August 2016
Goods:Class 28: Skateboards; ramps and jumps for skateboarding, inline skating, and BMX freestyle biking; pogo sticks
Trade Mark: NITRO CIRCUS
Application No: 1684786
Priority Date: 1 April 2015
Goods & Services: Class 3: Temporary tattoo transfers; perfumery; cosmetics
Class 5: First aid kits; adhesive bandages; nutritional supplement energy bars
Class 18: Back packs; sport bags; handbags; purses; travel bags; duffel bags; tote bags; garment bags; luggage; umbrellas; messenger bags
Class 21: Cups and mugs; drinking glasses; paper plates; lunch boxes; thermal insulated containers for food or beverages
Class 24: Towels; bed spreads; pillow cases; curtains; draperies; bed sheets; comforters; blankets
Class 25: Clothing, namely, shirts, t-shirts, hooded sweatshirts, sweatshirts, jackets, beanies, caps, hats, and tanktops, bandanas; gloves; scarves; socks; underwear; pajamas; wristbands; shorts; costumes; shoes for men, women and children
Class 29: Dried meats; dried fruits and nuts; candied fruit snacks
Class 30: Energy bars; breakfast cereal; cereal bars; candy; chocolate; chewing gum; confectionery; coffee; tea
Class 35: Business consulting services; talent agency services; retail services; online retail services
Class 41: Providing online electronic publications (not downloadable); Publication of multimedia material online; Electronic publication of information on a wide range of topics, including online and over a global computer network; Entertainment services in the nature of television shows, films, sound recordings, webcasts and podcasts; Education services; Operation of sports camps; Distribution of television programs, films and audio recordings; Production of television programs, films and audio recordings; Photography; Event management and planning services, namely, organisation of educational, entertainment, sporting or cultural events; Production of sporting events; Entertainment in the nature of computer games, namely, providing temporary use of non-downloadable computer games; Entertainment services, namely, providing temporary use of non-downloadable interactive games; Entertainment services, namely, providing games and puzzles via a website; Entertainment services
Trade Mark: NITRO CIRCUS
_______________________________________________________________________
Application No: 1684787
Priority Date: 1 April 2015
Goods & Services: Class 9: Apparatus for recording, transmission or reproduction of sound or images; Computer game software for video and computer games; Compact discs featuring video and computer games; Downloadable audio-visual media content; Downloadable computer games; Downloadable motion pictures and television shows; Downloadable ring tones for mobile phones; Downloadable electronic publications; Blank USB flash drives; Video game software; Interactive multimedia computer game programs; computer application software for mobile phones, mobile devices, handheld computers, computers and tablet computers; pre-recorded DVDs; pre-recorded audio recordings; Pre-recorded films; pre-recorded CDs; pre-recorded television shows; Downloadable image files; Downloadable podcasts; Downloadable webcasts; Downloadable MP3 files, MP3 recordings; Holograms; Holographic apparatus; Holographic film; Holographic images; Digitally stored photographs; Apparatus for use in audio-visual communication; Interactive computer software; Interactive data transfer apparatus; Interactive terminals; Telecommunications apparatus; Computer communication apparatus; speakers; headphones; mouse pads; Spectacle cases; Spectacle frames; Sunglasses; ear buds; walkie-talkies; Photographic equipment, camcorders and digital cameras; cases and housings for cameras and camera straps; mobile phone and computer covers; Bicycle helmets
Class 12: Bicycles; motorcycles; jet skis; motor boats; tricycles; all-terrain vehicles; jet boats; scooters; tricycles; go-carts; trailers; campers; children's safety seats for vehicles
Class 14: Clocks; watches; jewellery; key rings
Class 16: Collectible trading cards; sports trading cards; pens; pencils; highlighter pens; folders; notebooks; paper; paper party decorations; party goodie bags of paper or plastic; paper napkins; decals and stickers; stationery; greeting cards; posters; stickers; calendars; bumper stickers; books; magazines; coloring books
Class 28: Construction toys; bendable toys; plush toys; electric action toys; collectable toy figures; action figures; inflatable toys; toy building blocks; toy vehicles; board games; toy vehicle play sets; yo-yos; balloons; in-line skates; wakeboards; toy scooters; toy weapons; water toys; surfboards; water skiis; golf balls; beach balls; soccer balls; hockey pucks; flying disks; Christmas ornaments; playing cards; fishing tackle; poker chips; arcade video game machines; athletic protection pads; childs ride-on toy; paper party favors; paper party hats; party favors in the nature of crackers and noisemakers; plastic party hats; bean bags; toys; games; playthings; gymnastic articles; sporting articlesClass 32: Energy drinks; sports drinks; water; carbonated non-alcoholic beverages; soft drinks; soft drink mixes; drink flavor enhancers
Class 38: Telecommunication services, namely, transmission of podcasts and webcasts; Electronic transmission and streaming of video, audio and digital media content via a global computer network
Trade Mark: NITRO CIRCUS
__________________________________________________________________
On 20 October 2015 NAG filed Notices of Intention to Oppose applications 1684786 and 1684787 and, in each case, filed on 20 November 2015 its statement of grounds and particulars (‘the SGP’). On 13 March 2017 NAG filed a Notice of Intention to Oppose application 1813094. The SGP for that application was filed on 12 April 2017. NC duly filed Notices of Intention to Defend applications 1684786 and 1684787 on 8 December 2015 and on 12 May 2017 in respect of 1813094.
The SGPs nominated grounds of opposition pursuant to ss 42(b), 44, 58, 59, 60 and 62A of the Act. In its submissions NAG stated that it would not press the section 59 and 62A grounds and in relation to s 42(b) would no longer rely on the claim of passing off. Further, NAG indicated that the grounds pursuant to ss 44 and 58 related solely to NC’s claimed goods in classes 25 and 28. Sections 42(b) and 60[3] grounds were pressed in relation to all classes of goods and services.
[3] Subject to my later observations on that point when it comes to the s 60 analysis.
The parties filed evidence and the Applicant asked to be heard. The Opponent indicated that it would rely on written submissions prepared by its attorneys, AJ Park Law. A hearing was convened for 5 March 2019 in Canberra and I heard the matter acting as a delegate of the Registrar of Trade Marks. NC was represented at the hearing in person by Wayne Covell of Worthy of the Name Pty Ltd; also in attendance from that firm was Robyn Covell.
Onus and Standard of Proof
The onus of proof rests upon NAG.[4] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[5] The date at which the rights of the parties are to be determined is generally the filing date of the applications except in respect of those grounds – ss 44 and 60 – which speak of a priority date. That date is 1 April 2015 for applications 1684786 and 1684787 and 26 February 2016 for application 1813094. Although the dates are separated by ten months nothing in my decision turns on that fact in this case.
[4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[5] Per Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26].
The evidence
In deciding this matter I have considered the parties’ submissions and their evidence. NAG’s material evidence in support of its oppositions consists of the following declarations:
·Thomas Delago made 30 March 2017 with Exhibits JA-1 to JA-19 (‘Delago’). Mr Delago is the co-founder and President of the Opponent.
·Mark William Bristow made 26 April 2017 (‘Bristow’). Mr Bristow is a Director of Blacklight Distribution Pty Ltd, NAG’s current Australian and New Zealand distributor.
NC’s evidence in answer consists of the following declarations:
·Wayne Covell made 18 July 2017 with Annexures WC-1 to WC-4 (‘Covell’). As stated, Mr Covell was NC’s representative at the hearing and is a principal of the business acting for NC in the present oppositions.
·Andrew James Edwards made on 31 July 2017 with Annexures AJE-1 to AJE-14 (‘Edwards’). Mr Edwards is the President of NC.
Discussion and Reasoning
NAG describes itself as a “snowboard and action sports brand”[6]. It claims to have first used the NITRO mark in Switzerland in 1990 and continuously in Australia since 1995[7]. It sells its goods in Australia through distributors and since 2014 that distributor has been Blacklight Distribution Pty Ltd. Delgardo declares that since 1995 NAG has sold snowboards, bindings, boots, outerwear, apparel, beanies, caps, bags and accessories bearing the “NITRO name and/or logo”[8]. NAG claims approximately 15% of the Australian[9] market share in snowboards, bindings and boots[10].
[6] Delago [5].
[7] Id. [6,7].
[8] Id. [14,15].
[9] This is not explicit and is discussed later.
[10] Delago [20].
NC is the promoter of a televised motocross bike show, together with live event tours showcasing motocross bike riding. The evidence, examined later, shows that the first Australian tour was during 2010 and that both in Australia and overseas the shows have met with enormous popularity.
I turn then to the grounds of opposition which I have examined in the order they are presented in NAG’s written submissions.
Section 44
Section 44 of the Act provides, relevantly:
44Identical 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.
NAG reiterates that the s 44 ground of opposition relates to class 25 of application 1684786, class 28 of application 1684787, and all goods covered by application 1813094 (being class 28 goods). It relies on its registrations 559276 and 559277 for NITRO (‘the Registrations’), both of which have a priority date of 21 February 1991, earlier than the priority dates of the IRDA and the national applications. The Registrations cover class 25 and 28 goods and so s 44(1) requires me to decide (i) whether NC’s class 25 and class 28 goods are similar to the goods covered by the Registrations, and (ii) whether NITRO CIRCUS is substantially identical or deceptively similar to NITRO.
The expression “similar goods” is defined in s 14(1) of the Act as goods that are the same as other goods or of the same description as that of other goods. NAG’s submissions are that:
Class 25
[NAG’s] registration 559277 covers sporting clothing and all other goods in class 25, with limited exclusions.
It is well established that under s 44(1) any notional or actual use which the scope of the prior registration allows may be relevant. It is the statutory rights of use of both parties that are to be compared, rather than the actual modes of use.
Accordingly, registration 559277 must be taken to include all clothing, footwear and headgear in class 25, including [NC’s] class 25 goods (none of which fall within the limited exclusions of registration 559277).
[NC’s] class 25 goods are therefore the same as, or similar to, the class 25 goods covered by registration 559277.
Class 28
[NAG’s] registration 559276 covers skiing apparatus and equipment, including snow skies (sic) and snow boards.
[NC’s] class 28 goods broadly cover toys and sporting equipment. Notional use of these goods would encompass skiing apparatus and equipment by virtue of at least ‘sporting articles.’
The nature and use of the [the parties’] class 28 goods are similar, particularly [NC’s] ‘in-line skates; wakeboards; toy scooters; surfboards; water skis; playthings; gymnastic articles; sporting articles; skateboards; ramps and jumps for skateboarding, in-line skating, and BMX freestyle biking; pogo sticks’.
These goods and [NAG’s] class 28 goods are all sporting apparatus and equipment and are likely to be sold and bought through the same or similar trade channels.
It is a curiosity of the evidence, not explained anywhere in submissions, that the clothing excluded from registration 559277 is the clothing most closely linked to the nature of NC’s entertainment business. I have examined the official records of registration 559277 and could see no evidence that NC or anyone else had brought part cancellation proceedings against registration 559277 and so the exclusion remains unexplained. In any event, what is not excluded from registration 559277 directly overlaps with much of NC’s class 25 specification and I find that the goods are similar.
Another point of interest is that NC already holds an Australian registration for a quasi-identical trade mark, NITRO-CIRCUS, the details of which are set out below[11]:
[11] Indeed, it also owns registration 1333845 for NITRO CIRCUS LIVE with a priority date of 26 November 2009 covering entertainment and sports events including snowboarding, skateboarding, skiing and surfing.
Registration No: 1227672
Priority date: 3 March 2008
Goods and Services: Class 9: Downloadable films provided via video-on-demand, prerecorded digital video disks, prerecorded compact disks, pre-recorded CD's, video tapes, laser disks and DVD's all featuring action sports and events for on and off road car and truck racing, motorcross, supercross, racing, skydiving, cliff jumping, cliff diving, snowboarding, bmx, skateboading, skiing, surfing, wakeboarding, and other sports
Class 25: Clothing namely, shirts, T-shirts, hooded sweatshirts, sweatshirts, jackets, sweaters, jerseys, beanies, gloves, pants, caps, hats, tanktops, visors, and wrist bands
Class 41: Entertainment services, in the nature of organising, performing and competing in action sporting events, namely, on and off road car and truck racing, motorcross, supercross, racing, skydiving, cliff jumping, cliff diving, snowboarding, bmx, skateboarding, skiing, surfing, wakeboarding competitions and events; film distribution and editing; motion picture film production; production of video disks
NAG’s submission in respect of that earlier registration is that it “should have been rejected in accordance with s 41(1), based on the … Registrations, for the same reasons outlined above, and cannot properly be relied on in support of the [IRDA and NC’s national applications].”
NC’s submission is more elaborate. It submits that:
The owner and the Applicant in these proceedings is entitled to rely on its existing statutory rights under the TMA including s 20:
Rights given by registration of trade mark
(1) If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:
(a) to use the trade mark; and
(b) to authorise other persons to use the trade mark;
in relation to the goods and/or services in respect of which the trade mark is registered.
(2) The registered owner of a trade mark has also the right to obtain relief under this Act if the trade mark has been infringed.
(3) The rights are taken to have accrued to the registered owner as from the date of registration of the trade mark.
The Applicant’s ‘rights’ in this trade mark ‘are taken to have accrued to the registered owner as from the date of registration of the trade mark’, namely 3 March 2008, almost eleven (11) years ago. So, even if the Opponent’s submission that NITRO and NITRO CIRCUS are substantially identical or deceptively similar is accepted, s 23 curtails both the Applicant’s and the Opponent’s statutory rights:
Limitation on rights if similar trade marks etc. registered by different persons
If trade marks that are substantially identical or deceptively similar have been registered by more than one person (whether in respect of the same or different goods or services), the registered owner of any one of those trade marks does not have the right to prevent the registered owner of any other of those trade marks from using that trade mark except to the extent that the first-mentioned owner is authorised to do so under the registration of his or her trade mark.
As for the class 28 comparison of goods, NAG’s registration covers “skiing apparatus and equipment, including snow skies (sic) and snow boards” and NC’s relevant goods are:
“Skateboards; ramps and jumps for skateboarding, inline skating, and BMX freestyle biking; pogo sticks” (1813094); and
“Construction toys; bendable toys; plush toys; electric action toys; collectable toy figures; action figures; inflatable toys; toy building blocks; toy vehicles; board games; toy vehicle play sets; yo-yos; balloons; in-line skates; wakeboards; toy scooters; toy weapons; water toys; surfboards; water skiis (sic); golf balls; beach balls; soccer balls; hockey pucks; flying disks; Christmas ornaments; playing cards; fishing tackle; poker chips; arcade video game machines; athletic protection pads; childs ride-on toy; paper party favors; paper party hats; party favors in the nature of crackers and noisemakers; plastic party hats; bean bags; toys; games; playthings; gymnastic articles; sporting articles” (1684787)
Some goods are the same. Sporting articles, for example, clearly includes the entire registration 559276 specification, but NAG goes further by asserting that “in-line skates; wakeboards; toy scooters; surfboards; water skis; playthings; gymnastic articles; skateboards; ramps and jumps for skateboarding, in-line skating, and BMX freestyle biking; pogo sticks” are all similar goods to those covered by registration 559276. That cannot be correct. In terms of the legislation, none of the compared goods are the same and whether they are “of the same description” entails consideration of their respective natures, uses and modes of sale.[12] So, although there is no evidence before me of the matter, my own observations tell me, for example, that surfboards, skateboards, snow skis and snow boards are often sold by the same retail stores. That may also be true of snow skis, snow boards and goods like skates, wakeboards and water skis, although I would require evidence of that. Nonetheless, and to take an example of what might be thought of as close cousins, surfboards and snowboards are not goods of the same description merely because they are sold in the same shops or because they are both sporting articles. Their use, if not their nature, is quite different.
[12] Per Romer J in Jellinek’s Application
So, for the moment, what can be said is that there are issues of overlap for both classes – much of class 25 and certainly so-called “sporting articles” in class 28. However, it is NC’s submission that this goes no further because the parties’ marks are neither substantially identical nor deceptively similar. NAG’s submission is that “the marks are at least deceptively similar”. The argument advanced by NAG that the trade marks are substantially identical is not in my view sustainable or supported by current case law. As far as deceptive similarity is concerned, in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J stated:[13]:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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 television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him. … It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.”
[…]
The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.
[13] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [13].
Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd[14] referred to earlier authorities and summarised the principles to be applied in the assessment of deceptive similarity:
[14] [2012] FCA 1022; 97 IPR 183.
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[15] at [49]; Australian Woollen Mills[16] at 658.
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[17] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.
Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].
Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.
Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[18] at 594 – 595.
Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[19]
[15] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
[16] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
[17] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.
[18] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
[19] [2012] FCA 1022, [37] – [46].
I have distilled the essence of NAG’s submissions[20] as follows:
§NITRO is the distinguishing or essential feature of NITRO CIRCUS because the word “circus” has the common meaning of a travelling company of performers which is descriptive of NC’s primary services; and
§There is high degree of visual, aural and oral similarity between the marks and the marks convey the same overall impression. The normal pronunciation of each mark is likely to result in an emphasis on the word NITRO. This emphasis is particularly likely given the Australian English emphasis on attributions and deemphasis of following nouns. That is, given the word CIRCUS is a commonly used noun in the English language, Australian consumers are likely to emphasise the word NITRO when pronouncing NITRO CIRCUS. Further, since abbreviating words is common in Australian English, it is also possible and quite likely that the NITRO CIRCUS mark will be abbreviated to NITRO, dropping the common and descriptive noun, and making the NITRO CIRCUS and NITRO marks orally and aurally identical.
[20] Some of which come from its ‘substantial identity’ submission.
The evidence from Covell is that of widespread use of the term “nitro” in relation to action sports. NC’s submissions summarise that evidence in the passage:
“NITRO is a common abbreviation for nitrogen, nitroglycerine (dynamite), nitrous oxide and nitro methane. It is also commonly used in relation to action sports. NITRO is the well known shorthand for nitrous oxide injection systems in racing cars and bikes which allows the fuel to be burned at a higher rate than oxygen alone, increasing performance. NITRO is also short for nitro methane fuel, sometimes called ‘top fuel’ that is used in drag cars, drag bikes and motor racing. It gives explosive performance and it is often used to describe the explosive performance of nitro fueled motorbikes and cars, the fastest in the world.”
Further, it is NC’s submission that “[t]here are many examples on the Register that show that NITRO is a common prefix and suffix, not just in relation to motor sports, but all sports including athletics and boxing as well as associated merchandise.” I observe that the Register is indeed replete with registrations including the term “nitro”. I note, too, that the term is used as a noun and adjectivally. Were the comparison that, for example, of NITRO and NITRO CLASSIC, a different analysis may be required but here I consider that the impression left on the minds of ordinary people by the expression “nitro circus” would be that of a (metaphorically) supercharged or explosive circus, whether or not the word “circus” was understood in its traditional way.
Let it be remembered that the s 44 ground has only been brought against the class 25 and 28 goods. In that context the word “circus” is not descriptive and has no direct connection to those goods. I do not accept the submission that it should be given reduced weight. In the result, I do not find the compared marks to be either substantially identical or deceptively similar. I am able to make that finding based on considerations of the notional use of both the Trade Mark and the Registered Mark.[21] If, as allowed, I take account of all the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods[22] as entailed in the s 60 discussion which follows shortly, that finding is only affirmed.
[21] Line 6 Inc v Apple, Inc [2009] ATMO 9, [24]; Berlei Hestia Industries Ltd v The Bali Company Co Inc (1973) 129 CLR 353, 362.
[22] Jafferjee v Scarlett (1937) 57 CLR 115, 120.
Since the compared trade marks are not deceptively similar I do not need to consider NC’s further argument of entitlement to registration under s 44(4) of the Act and “special circumstances” arising from its prior registrations.
Section 58
NAG’s s 58 ground of opposition, namely that NC is not the owner of the Trade Mark, can be dealt with summarily in consequence of my finding above that NITRO is not a substantially identical trade mark to NITRO CIRCUS. It follows that any claim to ownership of NITRO does not extend to a claim to ownership of the Trade Mark[23] and there the enquiry ends. NAG has not established this ground of opposition.
[23] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936
Section 60
Section 60 of the Act is reproduced below:
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.
NAG accepts that in order to establish s 60 it must demonstrate that at the relevant dates the NITRO mark had acquired a reputation amongst a significant number of persons in Australia such that use of the Trade Mark would be likely to deceive or cause confusion. I note that although NAG has not restricted the s 60 ground to any particular classes of goods or services, its written submission is that it:
“has established a significant reputation in the NITRO mark in Australia in respect of the NITRO goods and the provision of related services and entertainment services. … [NAG] submits that there is a real and tangible likelihood of deception or confusion by reason of the use of the [Trade] Mark in respect of [NC’s] services. (emphasis added).
I might conclude that NAG is pressing this ground of opposition only in connection with NC’s services but for reasons which follow this is not something which requires a final decision.
Reputation
In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word “reputation”. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition there decided that reputation is ‘the recognition of the [trade mark] by the public generally’.[24] Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[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 …[25]
[24] [2000] FCA 1335, [81].
[25] [1992] FCA 159, [118].
As already stated, Delago declares that NAG has sold snowboards, bindings, boots, outerwear, apparel, beanies, caps and bags in Australia since 1995. It is said that those goods bore the “NITRO name and/or logo”. I observe that the logo comprises a large, stylized, letter “N” within a generally square-shaped outline border under which appears in much smaller size the word “NITRO”. I accept that so far as the acquisition of reputation is concerned, use of that logo would assist the word to acquire a reputation.
The goods detailed above were sold through various retail stores in Australia other than in Tasmania and the Northern Territory. Confidential sales figures from the year 2007 are provided. In broad terms I would characterise the sales as healthy. Delago claims approximately 15% of the market share in snowboards, bindings and boots[26]. I assume this to be the claimed Australian market share albeit that is not expressly stated. Bristow is more explicit on that point but also makes it clear that the claimed 15% share was as things stood in March 2017, not at the priority dates. I have also deduced from the evidence as a whole that the share is in respect of snowboards and bindings and boots for snowboards rather than bindings and boots for other sports as a literal reading of Delago could suggest. All I can say of the confidential sales figures is that it would not be unrealistic to regard them as representing a capture of 15% of the Australian market for snowboards and bindings and boots for snowboards.
[26] Delago [20].
Otherwise, the evidence states that NAG’s current and past distributors have promoted the NITRO trade mark by attending sports industry and consumer shows, have promoted snowboarder tours in Australia, sponsored Australian snowboarders, provided “NITRO” mountain ambassadors on Australian ski slopes and resorts and conducted demonstration days for NITRO goods on ski slopes and resorts[27]. It is said that NAG’s official website at had 10,536 hits from Australia in 2015[28] and that its various social media pages collectively had a great many followers by March 2017. Further, NAG has produced a movie, “BOOM”, said to have been viewed by over 5 million people on the Red Bull media channel.[29]
[27] Delago [34].
[28] Delago [22] and [25.3].
[29] Bristow [8].
NC’s response is that NAG’s evidence is unreliable and “bristles with errors directly affecting its probative value and weight.” NC targets this criticism on the Delago declaration, which it describes as:
still in draft form with questions lingering from the drafter; attaches an incomplete exhibit with missing pages of key clauses and annexes in a distributorship contract; and is full of errors that extend to misrepresenting the accuracy of the Register and gross overstatement as to the Opponent’s reputation in social media figures. It suggests that Mr Delago did not check the critical details and facts before signing [it, which] … affects the weight that can be given to this declaration.
On the face of it, this criticism might appear excessive but on inspection the errors are indeed troubling and pervasive. There are numerous clerical errors including incorrect application numbers and priority dates. There are fundamental mistakes which include repeated references to NC’s mark as NITRO, rather than NITRO CIRCUS. More startling is that fact that it appears that Thomas Delago was not the intended declarant.
It was put to me that these errors were so intrusive that it cannot be reliably assumed that Thomas Delago was even in mind of the correct marks at issue. That objection is not overstated in my view. Paragraph 38 of Delago states, for example:
Disturbingly, this is not the worst of it. As NC observes, paragraph 5 of Delago (shown below) refers to “Mr Josef Ardelt” as the declarant and “Mr Thomas Delago” as a third party:
Paragraph 9 refers to Thomas Delago in the third person once again (“Thomas Delago created the logo in cooperation with our in-house designer.”) and each exhibit cover sheet is so marked (Exhibit JA-1 to JA-17) as to suggest that the aforementioned Josef Ardelt was at one point the intended declarant.
This apparent oversight extends to the body of the declaration as shown below in, for example, the second of two paragraphs of the declaration, both numbered “11”. It can also be seen there that directions to the declarant, presumably from the draftsperson, remain in parenthesis:
Delago is unreliable in other ways. The asserted evidence of reputation on the basis of social media following has overstated the data one-thousandfold. So, as NC notes, paragraph 28 of the declaration claims that NAG has 107 million Instagram followers whereas the supporting exhibit shows it to have 107 thousand followers. Similarly, for Twitter, the assertion of over 12.1 million followers is actually 1.1 thousand followers.
As already described, NAG currently sells its goods in Australia through a local company, Blacklight Distribution Pty Ltd. Confidential Exhibit JA-1 to Delago is part of that distribution agreement. It appears to be missing every other page, I am assuming, not through intention but through inattention to the original which most likely was printed double-sided. Confidential or not, there is no proof of execution of the agreement by NAG and the scope of the agreement in terms of the product range to be distributed is missing.
Similar, less serious errors, exist in Bristow. The declaration has two paragraphs 9 and 10 and, once more, on its front and exhibit cover sheets it refers to NC’s mark as NITRO, rather than NITRO CIRCUS.
The evidence is poorly assembled and proofed. NAG’s primary evidence, Delago, is generally disturbing and I am entirely willing to accept the proposition put to me that the declarant did not read or regard what he signed. Of itself, that is enough for me to give the declaration seriously reduced weight.
Taking all this information into account, the most generous reading of the evidence allows for a finding that the NITRO trade mark had a reputation of some kind in Australia at the priority dates amongst snowboarders. Based on the evidence I am not certain than the trade mark would be commonly known outside that sport, even by snow skiers.
Likelihood of deception or confusion
It is having regard to that limited reputation that I must now assess the claim that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:
An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[30]
[30] (1937) 58 CLR 641, 658.
Further, the concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. [31]
[31] [1979] RPC 410, 423 (citations omitted).
In Registrar of Trade Marks vWoolworths Ltd French J further highlighted the following matters concerning confusion:
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.
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.[32]
[32] [1999] FCA 1020, [50]. These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.
The likelihood of deception or confusion will in part hinge on the degree of resemblance of the trade marks to each other.[33] I have already decided for the purposes of s 44 that the compared trade marks are not deceptively similar. The s 44 assessment did, of course, not take into account the reputation acquired by either of the trade marks. In that regard NC’s submission is that NITRO CIRCUS is itself a well-known mark within the meaning of Article 6bis of the 1967 Paris Convention for the Protection of Intellectual Property and Article 16(3) of the 1994 World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights.
[33] Qantas Airways Limited v Edwards [2016] FCA 729 at [142].
Synoptically, the Trade Mark was first used in Australia in 2010 in relation to a live sports show toured around much of the country. This fact is attested to in Edwards[34] and is confirmed in the decision of Palmer J in Nitro Circus Touring Aust Pty Ltd v Fleshwound Films LLC & Anor:
The Plaintiff (“NCTA”) is the promoter of a motocross bike show known as “Nitro Circus Live Tour” which will be performed in all mainland capital cities of Australia in May and June 2010.[35]
[34] Edwards [13].
[35] [2009] NSWSC 1214 at [1].
The live bike show performed by reference to the Trade Mark began overseas in 2003 when the popularity of a feature DVD led to the creation of a TV show and movie[36]. A partnership with MTV followed in 2009 with a two season series aired in more than 60 countries including Australia.[37] Suffice to say that the evidence shows that popularity of the TV and live shows has been enormous, both in Australia and internationally. By way of example, the live show has been performed to sell out audiences at Madison Square Garden in New York and the O2 in London. A record-breaking tour of New Zealand, for example, out-sold tours by world famous rock bands in that country. The Australian media reports are numerous and include statements of the performances becoming the highest grossing action sports shows in Australian history. So, in a story published on 7 October 2011 in fullnoise.com.au, it was written of the shows[38]:
[36] Edwards [8].
[37] Id. [10].
[38] Id. Annexure AJE-5.
NC observes that this notoriety is unchallenged and relies upon what French J (as he then was) said in the majority decision of the full Federal Court in Registrar of Trade Marks v Woolworths Ltd :
His Honour's reference to the familiarity of the name "Woolworths" in Australia was appropriate. Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer's perception of them. For in the end the question of resemblance is about how the mark is perceived. In the instant case the visual impact of the name "Woolworths" cannot be assessed without a recognition of its notorious familiarity to consumers.[39]
[39] [1999] FCAFC 1020, commenting at [60]-[61] on Wilcox J’s first-instance decision.
NC also attempts to draw out certain inferences from the fact that NAG has not pressed its passing off claim as one basis for the s 42 ground of opposition. It argues that by:
abandoning passing off, [NAG] admits that [NC] is not passing off its goods and services as those of another when it applied for the [Trade Mark]. … [NC] is already the common law owner of NITRO CIRCUS and therefore the use of its own trade mark to identify …, is neither misleading and deceptive under the ACL nor is it likely to cause deception and confusion within the meaning of s 60. The relationship between s 60 and a s 42 ACL claim was considered by the Hearing Officer in John Favaro John Housden v Michael Spiby [2016] ATMO 122 at [26]:
The Opponents’ grounds under sections 60 and 42, as outlined in the Statement of Grounds and Particulars, stand or fall on the question of the ownership of the Trade Mark which is to be determined in terms of the ground under section 58 of the Act. If the Applicant is the owner of the Trade Mark, the use of it by him is neither deceptive or confusing in terms of section 60 of the Act nor deceptive or misleading in terms of section 18 and the parts of section 29 of schedule 2 to the Competition and Consumer Act 2010 on which the ground under section 42 is based. The situation may, of course, be otherwise if the Applicant is not the owner of the Trade Mark.
I find that when these various factors are taken into consideration and balanced, there is no prospect of a likelihood of deception or confusion were the Trade Mark to be used in relation to the claimed services at the priority dates. I find that to be so also in relation to the bulk of the goods. In that small area of direct overlap of goods of interest – namely snowboards – I find that the risk of confusion is so low as to fail to reach the threshold of a real and tangible danger of deception or confusion
The Opponent has failed to establish this ground of opposition.
Section 42(b)
Section 42 of the Act is reproduced below:
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) …
(b) its use would be contrary to law.
As with all grounds of opposition, the onus of proof rests with NAG and in that regard the case law on s 42(b) requires NAG to show that NC’s use of the Trade Mark would be, rather than could or might be, contrary to law.[40] As stated already, NAG has withdrawn its claim that use of the Trade Mark would constitute the tort of passing-off. The s 42(b) ground relies only on an assertion of breaches of the Australian Consumer Law[41] (‘the ACL’), in particular, ss 18 and 29 thereof. Section 18 is concerned with misleading or deceptive conduct. I have already found that NAG failed to establish a ground of opposition under s 60 of the Act and the case law relevant to the ACL has made plain that s 18 imposes a more stringent test than that for deception or confusion under s 60.[42]
[40] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
[41] schedule 2 to the Competition and Consumer Act 2010 (Cth)
[42] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
The claim based on ss 29(1)(g) and (h) of the ACL is that use of the Trade Mark gives rise to a false or misleading representation that NC’s goods and services have the sponsorship or approval of, or are affiliated with, NAG. It has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[43] Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) of the ACL.
[43] [2003] FCA 104, [107].
The only additional submissions made by the parties here were, on the part of NC, reliance on the High Court decision of Gleeson CJ, Gaudron, McHugh, Gummow, Hayne and Callinan JJ in Campomar Sociedad, Limitada v Nike International Limited in relation to the ACL’s predecessor:
The matter should not be considered in the abstract. Regard must be had to the circumstances of the particular case and the remedy sought in respect of the contravention alleged either to have occurred or to be threatened. It is one thing, for example, to claim interlocutory relief, particularly on a quia timet basis, where one of the conditions for the grant of relief is the presence of a serious question to be tried as to the apprehended contravention of s 52(1). It is another to seek at a trial a final remedy, whether an injunctive order under s 80 of the TP Act or damages under s 82, at the suit of a person who alleges the suffering of loss or damage "by conduct of another person" in contravention of s 52(1). To say this is to emphasise the point made by Toohey J in Wardley Australia Ltd v Western Australia:
"Although it is customary to speak of a claim for damages for misleading or deceptive conduct, s 52 of the [TP Act] does not of itself give rise to any liability. The consequences of a contravention of the terms of s 52 are to be found in various sections of the [TP Act]." (citations omitted)[44]
[44] (2000) 202 CLR 45; [2000] HCA 12 at [99].
Following those words, NC submits that the SGPs merely pleaded contraventions of ss 18 and 29 of the ACL and this “does not of itself give rise to any liability”. Further, the SGPs contain no reference to “the remedy sought in respect of the contravention”. Without these, it was argued, there is no liability and nothing shown by the SPGs or evidence that is contrary to law.
For NAG’s part, it submits that for the purposes of s 42(b) I must disregard Covell to the extent that is provides evidence of the state of the Register. NAG relies in that regard on the case of Automobile Club De L’oeust v Gardiakos, Automobile Club[45], where the delegate discussed this as follows:
The applicants also appear to seek to rely on instances on the Trade Marks Register of marks not owned by the opponent which feature the phrase ‘Le Mans’ or a variation of such designation. This material has been disregarded; it does not speak to what is actually happening in the market and one has no idea about what the circumstances were to permit registration: Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 at [35]-[36]; British Sugar plc v James Rovertson & Sons Ltd [1996] RPC 281; McDonalds Corporation v David Bellamy [2004] ATMO 25 at [6]. As was observed by Wilcox J in Ocean Spray, marks in the past may have been wrongly registered. It would be an unwarranted distraction from the take at hand to investigate whether they had.
[45] [2005] ATMO 19.
I have taken those arguments into account. In the same way that the state of the Register was not, of itself, a conclusive factor in my consideration of s 44, so too it was not so singularly important as to cause me to think that the lack of that evidence was essential to my findings on s 42(b). Likewise, however NAG may have particularised it s 42(b) claim, the conclusions already reached in paragraphs 59 and 60 above are dispositive of the ground of opposition. I am not satisfied that use of the Trade Mark would be contrary to law and accordingly NAG has failed to establish this ground of opposition.
Decision
My decision is governed in the following ways. In respect of the IRDA, reg 17A.34N of the Regulations relevantly provides that, the Registrar must decide:
(a)to refuse protection in respect of all 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. In respect of NC’s national applications, s 55 of the Act similarly provides that the Registrar must 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.
The Opponent has not established a ground of opposition in any of the three cases. I find that the national applications may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the applications should be in accordance with the court’s order or direction.
As to the IRDA, as the delegate of the Registrar I extend protection of the Holder’s Trade Mark to Australia and in accordance with reg 17A.34N(2) the International Bureau will be notified of this decision.
Costs
NC has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event and so I award costs in respect of trade mark number 1813094 against NAG under s 221 of the Act in line with the amounts in Schedule 8 of the Regulations. In respect of trade mark numbers 1684786 and 1684787, I award reduced costs against NAG in the same manner as indicated in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[46]
[46] [2001] ATMO 78.
Debrett Lyons
Hearing Officer
Trade Mark and Designs Hearings
16 August 2019
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