Opposition by EMI (IP) Limited to registration of trade mark application 1871901 (23) – ABBEY ROAD – in the name of Spotlight Pty Ltd

[2021] ATMO 40

TRADE MARKS ACT 1995

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

Re:Opposition by EMI (IP) Limited to registration of trade mark application 1871901 (23) – ABBEY ROAD – in the name of Spotlight Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Duncan Cotterill Lawyers

Applicant: By George Legal

Decision:

2021 ATMO 40

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by EMI (IP) Limited (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Spotlight Pty Ltd (‘Applicant’): 

Application Number:	1871901
Filing Date:	8 September 2017
Goods:	Class 12: Yarn; yarns for textile use; yarns for textile applications; knitting yarns; wool; knitting wools; knitting yarns made of acrylic materials; knitting yarns made of nylon; knitting yarns made of wool; kits consisting of yarn and knitting instructions; yarns made of angora for textile use; yarns made of carbon fibres for textile use; yarns made of cotton; yarns made of synthetic material for textile use; natural yarn; non-metallic yarns for textile use; acrylic yarn; combed yarns made of natural fibres; carded yarns made of wool; carded yarns in natural fibres for textile use; sewing yarn; cotton yarn; linen yarn; hemp yarn; glass yarn; silica yarn; silk yarns; rayon yarns; coir yarn; ceramic fibre yarn; polyester textured yarns; polyester pre-oriented yarn; jute yarn; flocked yarn; elastic yarn; chenille yarn; embroidery yarn; darning yarn; woollen yarn; spun wool; spun yarn; spools of yarn (‘Applicant’s Goods’)
Trade Mark:	ABBEY ROAD	(‘Trade Mark’)

2.  Unless otherwise indicated, Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively,.

3.  Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 3 May 2018 (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 44, 58, 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 7 June 2018. 

Evidence

1. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 17 December 2019 by Morgan Champion, In House Counsel of Universal Music Group, a connected entity to the Opponent, with Exhibits MC1 to MC8 (‘Champion declaration’).

   5.  The Applicant filed the following evidence in answer:

   ·Declaration made on 20 March 2020 by Leigh Daniel Gratzer, General Counsel and Company Secretary of the Applicant, with Annexures LDG-1 to LDG-9 (‘Gratzer declaration’); and

   ·Declaration made on 20 March 2020 by Sean Anthony Lenehan, a buyer of knit and needlecraft goods for the Applicant, with Annexures SAL-1 to SAL-4 (‘Lenehan declaration’).

   6.  The Opponent did not file evidence in reply.

   7.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 25 September 2020 the Applicant requested an oral hearing.  The matter was set down for a hearing by video conference on 20 April 2021 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 15 February 2021 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 6 April 2021 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 13 April 2021 (‘Applicant’s Submissions’).  At the hearing Marcus Fleming of Counsel instructed by Joel Masterson of By George Legal represented the Applicant and Scott Moran of Duncan Cotterill Lawyers represented the Opponent.

   8.  I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   The Opponent

2. The Opponent is a company incorporated in the United Kingdom and is involved in the music industry.  The Opponent is the owner of the trade mark listed below (‘Opponent’s Trade Mark’).  The goods and services for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods and Services’. 

Number	Trade Mark	Priority Date	Goods and Services
1382342	28 April 2010	Class 9:Apparatus and instruments for recording, receiving, processing, reproducing and/or transmitting sound and/or visual information or recordings; turntables (record players), slipmats, headphones; speakers; radio receiving and transmitting apparatus; telephone apparatus and instruments; telephones, mobile telephones and telephone handsets; adapters for use with telephones; battery chargers for use with telephones; cases adapted for mobile telephones; sunglasses; spectacles, spectacle frames and cases; sound and/or visual recordings; interactive sound and/or visual recordings; sound and/or visual recording media; juke boxes; games adapted for use with television receivers; computer software for video games, coin/counter operated games, arcade apparatus and games and computer games; computer software; computers; data processing equipment; USB sticks; mouse pads; mice for computers; screen savers; publications (downloadable) provided on-line from databases, from the Internet or from any other communications network including wireless, cable or satellite; compact discs; DVDs; CD ROM; carrying cases adapted for compact discs; carrying cases adapted for DVDs; video cameras; cameras; photographic and cinematographic apparatus and instruments; photographic transparencies, photographic films; digital music (downloadable); MP3 players; personal digital assistants telephone ring tones  Class 16:Paper, cardboard and goods made from those materials, not included in other classes; printed matter, printed publications, books, magazines, brochures, sheet music, paper articles, tickets, labels, cards; greeting cards, post cards; picture cards; photographs, pictures, prints, posters, stationery, pens, pencils, erasers, pencil sharpeners, pencil cases, staplers, staple removers, drawing rulers, boxes for pens, book markers, notebooks, notepads; address books; diaries; booklets; scrapbooks; albums, folders; catalogues, stickers, gift vouchers; paper gift bags; carrier bags; calendars; artists' materials; paint brushes; decalcomanias; instructional and teaching materials (except apparatus); plastic materials for packaging (not included in other classes) Class 18:Leather and imitations of leather, and goods made of these materials and not included in other classes; laptop bags; trunks and travelling bags; suitcases; bags; schoolbags; tote bags; backpacks; day packs; handbags; shoulder bags; duffel bags; messenger bags; purses; wallets; credit card holders; umbrellas, parasols and walking sticks Class 25:Articles of clothing, footwear and headgear; belts Class 38:Communications services; mobile telephone communications services; broadcasting services; transmission of music and information; transmission of video text, digitised data and teletext; providing user access to the Internet or to any other communications network including wireless, cable or satellite; providing communications connections to the Internet or to databases or to any other communications network; providing access to digital music websites on the Internet or any other communications network; delivery of digital music by communications; communication access services; computer-aided transmission of messages and images; transmission of news and current affairs information; providing Internet chat rooms Class 41: Entertainment services; educational services; production and distribution services in the field of sound and/or visual recordings and entertainment; music library services; music publishing services; artist management; recording studio services; deejay services; information services relating to music, entertainment, games and events provided on-line from a computer database, from the Internet or any other communications network including wireless, cable or satellite; provision of digital music (not downloadable) from the Internet; provision of digital music (not downloadable) from MP3 websites; production, preparation, presentation, distribution, and rental of television and radio programmes and films, animated films and sound and/or visual recordings; production of live entertainment features; organisation, production and presentation of quizzes, exhibitions, sporting events, shows, road shows, staged events, theatrical performances, concerts, live performances and audience participation events; provision of on-line electronic publications (not downloadable); electronic game services provided from a computer database, the Internet or any other communications network including wireless, cable, satellite; advisory and consultancy services related to the aforementioned services Class 42: Computer services; design services; creation, design and maintenance of computer software and websites; digital video services (converting video tape into digital format); advisory services relating to the analysis of sound and/or images; information services relating to the analysis of sound and/or images; providing search engines for the Internet

10.     The relevant claims/statements in the Champion declaration can be summarised as follows:

·     The Opponent’s Trade Mark has been used in Australia since 2012 in relation to a range of goods such as sound recordings, books, clothing and amplifiers.  Abbey Road Studios has been involved in the production of popular recordings since 1931, including those of the Beatles.  

·     In 2015 the Abbey Road Institute was opened in Melbourne Australia, which provides music related courses.  This entity has a social media presence including Twitter and Facebook accounts.  As of 2019 the Institute’s Twitter account had 148 followers and the Facebook account had 9,778 followers.

·     The Opponent’s Trade Mark is immediately recognisable as being associated with the Opponent’s studio in London, with the Opponent’s website at receiving 200,000 visits a month.  Abbey Road Studios maintains a Facebook page, Twitter account and Instagram with a large number of followers.

11.     The Annexes to the Champion declaration display various examples purported to be use of the Opponent’s Trade Mark but there appears to be little or no actual use of the Opponent’s Trade Mark as registered.  The examples of use cited by the Opponent appear to be use of the word Abbey Road or the Trade Mark by third parties (being undated screenshots of third party products being offered over eBay and Amazon), often referring to the well-known Abbey Road studios in London.  There is no evidence as to whether this use is authorised by the Opponent, other than the general statement by the Deponent that ‘use of the Opponent’s Mark within Australia has been by EMI(IP) Limited or with its consent by related entities with the same controlling party’.  The Opponent provides no evidence how the eBay sellers supposedly using the Opponent’s Trade Mark are connected to the Opponent or any evidence more generally as to sales figures or advertising expenditure in connection with any use by the Opponent of the Opponent’s Trade Mark in Australia.

12.     There is no evidence of the Abbey Road Institute using the Opponent’s Trade Mark.  The evidence as to the use of the plain word mark ABBEY ROAD STUDIOS consists of two uses on one page of the Abbey Road Institute’s website (one of which is a photo of the Opponent’s London Studios).  There is no documentary evidence of any connection between the Abbey Road Institute and the Opponent (though there are media articles that refer to the Abbey Road Institute as being connected to the Abbey Road Studios in London) or evidence that the very limited use of ABBEY ROAD is under the control of the Opponent other than the assertion in the Champion declaration .  The Opponent provides no evidence of the number of students enrolled, turnover or advertising expenditure of the Abbey Road Institute.

The Applicant

1. The Applicant is a retailer of yarns, fabrics homewares and other related goods.  

   14.     The relevant claims/statements in the Gratzer declaration can be summarised as follows:

   ·     The Applicant operates 110 stores across all states in Australia and has traded since 1973.  It is the owner of the Trade Mark in New Zealand and Singapore for yarn goods in class 23.  It sells a range of yarn products branded with the Trade Mark.

   ·     To the best of the Deponent’s knowledge, no personnel at the Applicant has ever been contacted by a member of the public with a query as to whether the Applicant’s Abbey Road range is connected with any third party.

   15.     The relevant claims/statements in the Lenehan declaration can be summarised as follows:

   ·     The Trade Mark was created by the Deponent in 2017 inspired by other fabric brands that make playful references to music such as ‘wool and the gang’ and ‘heal the wool’.  The Deponent was aware of the Abbey Road recording studio in London and considered that it would be a fitting but non-specific allusion to multiple music acts.  As the Trade Mark was to be used in relation to yarn products, it did not occur to the Deponent that there would be any confusion between the yarn products and the London recording studios.

   ·     The Trade Mark is used on bundled yarn products sold by the Applicant, usually in combination with a name that is a play on a well-known song title, such as Born to be Wool, Kung Fu Cotton, or Strawberry Fields Mohair.

   ·     Prior to the commencement of use of the Trade Mark the Deponent sought legal advice and conducted a trade mark search to confirm that there was no barrier to the use of the Trade Mark on yarn products.

   Grounds of Opposition, Onus and Standard of Proof

2. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 60 and 62A but has indicated in its submissions that it does not press the s 58 ground.  To successfully oppose the application the Opponent needs to establish one of the remaining nominated grounds.

   17.     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 the filing date 8 September 2017 (‘relevant date’), which is also the priority date for the purposes of ss 44 and 60.[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

3. The relevant provisions of the Act are reproduced below:

   Section 44 - Identical etc. trade marks

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

   (a)it 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).

   (2)

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)              the similar goods or closely related services; or

   (ii)             the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   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.

   19.     To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

4. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.

5. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark which has a priority date that is earlier than the priority date of the Trade Mark. 

   Similar goods

6. Section 14 relevantly provides:

   14Definition of similar goods and similar services

   (1)For the purposes of this Act, goods are similar to other goods:

   (a)if they are the same as the other goods; or

   (b)if they are of the same description as that of the other goods.

1. McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the goods for which the Opponent’s Trade Marks are registered are goods of the same description as the Applicant’s Goods as follows:

   Whether the relevant goods are of the same description is essentially a question of fact.

   The authorities establish that there are three principal factors to be considered in this regard.  They are:  (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.  As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade:  see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:

   The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive.  Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods:  see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner:  ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.  In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.  No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’:  Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.

   On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [4] 

   [4] [2000] FCA 1335 [17].

2. I do not consider that any of goods and services for which the Opponent’s Trade Mark is registered that are similar or closely related to the Applicant’s Goods.  The Applicant’s Goods are types of yarn.  The Opponent’s Trade Mark is registered for a variety of goods and services but specifically the Opponent submits that the following goods are similar goods to yarn: articles of clothing, leather and imitation leather, paper and printed publications, prints and decalomanias and stationary.

3. The Opponent’s submissions on this point, such as the submission that yarn and stationary are similar goods because they both could be used for crafts, or that yarn and prints are similar goods because yarn could be used to create decorative items, are ambitious.  Yarn is a material made of interlocked fibres (be they natural or synthetic fibres) that is used for the production of textiles.  None of the goods identified by the Opponent as similar goods are goods used for the production of textiles; they have different purposes.  With the possible exception of leather and imitation leather (which like yarn, is raw material that can be used to create clothing), the nature of all of the goods identified by the Opponent is fundamentally different to yarn as none of them are a raw material that can be used to create clothing or other textiles.  With respect to leather, firstly leather is not a raw material that can be used to create textiles (I do not accept the Opponent’s submissions that leather is a type of textile: this assertion misstates the difference between a material created by an interlocking network of threads and tanned animal skins) and secondly the mere fact that leather and yarn are both raw materials is not a sufficient basis for them to be similar.

4. Finally I do not accept that a yarn kit, consisting of yarn along with instructional materials, is the same as ‘instructional and teaching materials (except apparatus)’ for which the Opponent’s Trade Mark is registered.  Taking the Opponent’s submission on this point to its logical extreme, instructional and teaching materials would be similar to any good which includes instructions for its use, which is patently not the intent of the similar goods requirement.

5. The Applicant’s Goods are goods of a different nature, used for a different purpose and in most cases sold in different channels from the Opponent’s Goods and Services. 

6. As the third requirement is not satisfied, I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 60

7. Section 60 is reproduced below:

   Section 60 - 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.

8. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[5]

   [5] The present paragraph and the following paragraphs summarizing the requirements under s 60 are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

9. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[6]  Her Honour quoted with approval the following words of Lockhart J in 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 …[7]

   [6] [2000] FCA 1335, [81].

   [7] (1992) 33 FCR 302, 343.

10. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[8]

    [8] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

11. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered.  The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[9] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[10]

    [9] (2000) 50 IPR 1.

    [10] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

12. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    12 The Opponent, its licensees and predecessors in title have used the ABBEY ROAD Marks globally and in Australia in relation to the Opponent’s Goods and Services.

    13 As a result of this aggregate use of the ABBEY ROAD Marks, both in Australia and internationally, the Opponent had, before the Applicant’s Priority Date, acquired a reputation and recognition by the public generally in the ABBEY ROAD Marks in Australia.

    14 Because of the Opponent’s reputation in the ABBEY ROAD Marks at the Applicant’s Priority Date, the Applicant’s use of ABBEY ROAD in respect of the goods in the Application would be likely to deceive or cause confusion and the Application should be refused in accordance with section 60.

    15 As a further section 60 ground, use of the Application with stripe imagery is likely to deceive or cause confusion with the imagery of the Beatles 1969 Abbey Road album cover that depicts the zebra crossing outside the Abbey Road Studios, Abbey Road, London (Album Imagery)

13. I can dispose of the particular numbered 15 simply:  s 60 requires a trade mark to have acquired a reputation, such that the use of the Trade Mark would deceive or cause confusion.  I note that there is no evidence before me that the Beatles 1969 Abbey Road album cover acts as a trade mark in Australia.

14. With respect to the remaining particulars, other than through the ABBEY ROAD INSTITUTE, discussed below, the Opponent provides no evidence that it sells or offers for sale any goods or services in Australia under the ABBEY ROAD Marks (defined in the SGP to be, collectively, ABBEY ROAD, ABBEY ROAD STUDIOS and ABBEY ROAD RED).  The evidence of use the Opponent points to appears to be third party use of the term Abbey Road, mostly in reference to the studio in London and occasionally in respect of products sold by third parties over Amazon or eBay without sales or advertising figures.  The fact that the Opponent may be associated with a well-known studio in London (and I note the Opponent’s evidence as to the reputation of its Abbey Road Studios in London with respect to recording studio services offered in the UK) does not provide a basis for me to reach a conclusion that the ABBEY ROAD Marks have acquired a reputation in Australia.  

15. With respect to the Abbey Road Institute, this is a music education institute that was opened in Melbourne 2 years prior to the relevant date.  There is no evidence of the number of students enrolled or advertising expenditure and the evidence of reputation consists of a small number of media articles and a limited social media presence several years after the priority date.  I am not satisfied that the Opponent had acquired a reputation in the ABBEY ROAD INSTITUTE mark at the priority date, and even if such a reputation were established I would not find that by reason of that reputation (which would be concentrated in musical education) the use of the Trade Mark for any of the Applicant’s Goods would deceive or confuse.  

16. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

    Section 42

17. Section 42 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) the trade mark contains or consists of scandalous matter; or
    (b) its use would be contrary to law.

18. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[11]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[12]

    [11] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

    [12] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.

19. The Opponent has particularised the ground of opposition in the SGP as follows: 

    16 Before the Applicant’s Priority Date, the Opponent had a reputation in and goodwill in a business under the ABBEY ROAD Marks in Australia in respect of the Opponent’s Goods and Services.

    17 ABBEY ROAD is substantially identical or deceptively similar to the ABBEY ROAD Marks.

    18 The goods in the Application are identical or similar or closely related to the Opponent’s Goods and Services.

    19 As a result of the above, the Application must be rejected under section 42(b) as its use in trade or commerce would:

    19.1 breach section 18(1) of the Competition and Consumer Act 2010, Schedule 2, the Australian Consumer Law (ACL);

    19.2 breach section 29(1)(g) of the ACL;

    19.3 breach section 29(1)(h) of the ACL;

    19.4 constitute an offense under section 151(1)(g) of the ACL;

    19.5 constitute an offense under section 151(1)(h) of the ACL; and

    19.6 constitute passing off.

    20 As a further section 42 ground, use of the Application with stripe imagery would:

    20.1 breach section 18(1) of the Competition andConsumer Act 2010, Schedule 2, the Australian Consumer Law (ACL);

    20.2 breach section 29(1)(g) of the ACL;

    20.3 breach section 29(1)(h) of the ACL;

    20.4 constitute an offense under section 151(1)(g) of the ACL;

    20.5 constitute an offense under section 151(1)(h) of the ACL; and

    20.6 constitute passing off.

20. As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[13] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

    [13] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

21. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[14], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 or s 151 (which has the same requirements as s 29 of the ACL) 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)’.[15] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

    The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[16]

    [14] [2014] ATMO 65, [50].

    [15] [2003] FCA 104, [107].

    [16] [1989] FCA 506, [40] (citations omitted).

1. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law.  Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

   Section 62A

2. Section 62A is reproduced below:

   62A Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

3. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

   ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

   ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

   ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

4. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[17]:

   Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

   … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[18]

   [17] [2004] EWCA Civ 1028; [2005] FSR 10.

   [18] [2012] FCA 81, [147].

5. Her Honour continued later in the same decision:

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[19]

   [19] Ibid [165]-[166].

6. The Opponent has particularised this ground of opposition in the SGP as follows:

   21 The Applicant has filed the Application in bad faith and the Application should be refused under section 62A because:

   21.1 the ABBEY ROAD mark is deliberately identical or deceptively similar to the ABBEY ROAD Marks in which the Opponent has a substantial global reputation; and

   21.2 persons adopting proper standards would regard the decision to register the ABBEY ROAD mark for the goods in the Application as in bad faith, on the basis that the Applicant would have been aware of the Opponent’s prior use and reputation in the ABBEY ROAD Marks.

   22 Further, the Applicant has filed the Application in bad faith and the Application should be refused under section 62A because use of the Application in conjunction with stripe imagery is deliberately identical or deceptively similar to the Album Imagery which is also synonymous with the Opponent’s registration and the ABBEY ROAD Marks.

7. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[20]  Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register a mark containing the word ‘Abbey Road’ in respect of yarn is a decision made in bad faith, in circumstances where there is little or no use of ‘Abbey Road’ in Australia for any purpose, and to the extent that the Opponent has any reputation in ‘Abbey Road’, such a reputation is in respect of a recording studio in London.  The fact that the Applicant has acknowledged that in selecting its name it was aware of the Abbey Road Studios in London is not sufficient to make its application to register the Trade Mark a bad faith application.  As noted in the Applicant’s evidence it obtained legal advice and correctly concluded that there was no existing registration in respect of the Applicant’s Goods. 

   [20] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].

8. More generally, it is difficult to imagine a set of goods and services more distinct then recording studio services and yarn.  I am not satisfied that the Applicant chose to use the Trade Mark to seek to benefit from any confusion between the Applicant and the Opponent.  Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.

   Decision and Costs

9. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1871901 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

10. The Applicant has sought an award of costs in its favour.  I see no reason to depart from the general rule that costs follow the event.  I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    25 May 2021