Opposition by Formula Three Management Pty Ltd to extension of protection to Australia of International Registration Designating Australia 681770 (class 12,35,41) (Australian Trade Mark application number...

[2021] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by Formula Three Management Pty Ltd to extension of protection to Australia of International Registration Designating Australia 681770 (class 12,35,41)  (Australian Trade Mark application number 1753427)– FORMULA 3 - in the name of Federation Internationale De L’Automobile

Delegate:

M. Cooper

Representation:

Opponent: Kalus Kenny Intelex Lawyers

Holder: K&L Gates

Decision:

[2021] ATMO 91

Trade Marks Act 1995 (Cth) – Opposition to extension of protection to IRDA – reg 17A.33 of the Trade Marks Regulations 1995 (Cth) - grounds under s 43, 58, 60 and 62A of the Trade Marks Act 1995 pressed – none established – protection of IRDA to be extended to Australia.

Background

1.     On 18 December 2015, Federation Internationale De L’Automobile (‘the Holder’) applied to extend protection to Australia of the International Registration Designating Australia (‘IRDA’) of the below trade mark.

Application no: 1753427

IRDA No: 681770

Filing Date: 18 December 2015

Convention Date: 2 September 2015

Trade Mark: FORMULA 3 (‘Trade Mark’)

Specification of Goods and Services:

Class 12: Vehicles; apparatus for locomotion by land, air or water; racing cars; motors and engines for land vehicles, electric motors and diesel engines for land vehicles; electric and hybrid automobiles and their component parts and their equipment included in this class; electric racing cars; go-karts, electric carts; transmissions for land vehicles; brakes for vehicles; vehicle seats; safety harnesses for car racing; safety seats for children, for vehicles; safety seats for cars; safety belts for vehicle seats

Class 35: Advertising; dissemination of advertising matter via all media, particularly in the form of thematic messages focused on human values; advertising by sponsoring; business management; business administration; office functions; advertising, namely, promoting the goods and services of others, by means of contractual agreements, particularly partnership (sponsorship) and licensing agreements, enhancing awareness and/or image and/or a surge of sympathy derived from that greater exposure and/or the image of cultural and sporting events, in particular racing, and/or the surge of sympathy generated by the above; promotion of the goods and services of others by means of what is referred to as the initial interest factor leading the public to consider, among a multitude of competitors, goods or services presented to the public by means of signs, emblems or messages aimed at capturing its attention; promotion of the goods and services of others by means of the so-called image transfer; rental of advertising space of all type and on all media, whether digital or not; commercial administration of participation of motor racing stables to motor sport competitions and promotion to the public and interested media of support for said teams; business administration consultancy; data input and processing services; organization of exhibitions for commercial or advertising purposes, particularly in the field of automobiles and motor sports; promotion of sporting events and competitions for use by others; promotion of concerts and of cultural events for others; provision of documentation, namely direct mail advertising, distribution of advertising material, distribution of samples, reproduction of documents; maintenance of computerized databases; computer file management, namely, digital file management comprising a portfolio of images and video footage intended for one use under license in traditional advertising and in behavioral promotion (moral advertising); electronic commerce (e-commerce) services, namely making product information available via telecommunication networks for advertising and sales purposes

Class 41:Education; training; entertainment; sporting and cultural activities, televised sporting and cultural entertainment; organization of motor vehicle races; organization of sporting and cultural events and activities; organization of exhibitions for cultural and educational purposes; organization of lotteries and competitions; betting and gambling services in connection with or relating to sports; entertainment services provided during sporting events or concerning sporting events; organization of real or virtual sports competitions, particularly mechanical sports competitions; provision of sports infrastructures; provision of motor racing circuits; rental of audio and video equipment, production of films, other than advertising films; production of sound and video recordings; presentation and distribution of films and of sound and video recordings; rental of sound and video recordings; rental and/or provision via a computer network of interactive education and entertainment products, namely interactive compact discs, CD-ROMs, computer games; entertainment, namely presentation of interactive education and entertainment products, namely interactive compact discs, CD-ROMs, computer games; coverage of radio broadcast and televised sports events; production of television and radio programs and of videotapes; reservation of tickets for sporting events and shows; timing of sports events; interactive entertainment; on-line betting services; provision of games on the Internet; information concerning entertainment or education, provided on line from a data bank or the Internet; electronic game services provided by means of the Internet; provision of electronic publications on line; publication of books, magazines, texts (other than advertising texts) and periodicals; publication of texts (other than advertising texts), including regulations, norms and standards relating to automotive transport and mechanical sports; provision of sporting results; information services concerning sports and sporting events; rental of recorded sounds and images; audio production services; information services concerning sporting events provided on line from a computer database or the Internet; editing and publishing services; publication of statistics regarding sporting results and audience ratings for sporting competitions; driving courses; design, conducting and hosting of courses, seminars and all training activities in the field of vehicle driving; education and training services, namely, training program design, training and proficiency examination relating to driving of motor vehicles with a view to providing certification of aptitude or an internationally recognized driving license; entertainment information; organization and conducting of award ceremonies and gala ceremonies for entertainment purposes

(‘Goods and Services’)

Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied. Evidence and/or other circumstances provided under subsection 41(4).

2.     The Trade Mark was examined and advertised as accepted for possible protection on 7 June 2018 in the Australian Official Journal of Trade Marks.

3.     Formula Three Management Pty Ltd (‘Opponent’) filed a Notice of Intention to Oppose (‘NIO’) the extension of protection to the Trade Mark on 3 August 2018, followed by its Statement of Grounds and Particulars. The Holder then filed a Notice of Intention to Defend and the evidence stages followed.

4.  Neither party requested a hearing and the matter came before me, a delegate of the Registrar of Trade Marks, for a decision on the written record. This record consists of the above material, written submissions filed by each party and the following evidence:

Evidence in Support

·Declaration by Ian James Richards, the Opponent’s director and secretary dated 25 January 2019 (‘first Richards declaration’), with Annexures IJR-1 to IJR-8.

Evidence in Answer

·Declaration by Peter Boyer, the Holder’s General Secretary for Motor Sport, dated 2 May 2019 (‘Boyer declaration’), with Exhibits A to F.

·Declaration by Eugene Arocca, CEO of the Confederation of Australian Motor Sports (‘CAMS’) dated 2 May 2019, with confidential Exhibits A and B.

Evidence in Reply

·Declaration by Ian James Richards dated 26 June 2019 (‘second Richards declaration’), with Exhibits IJR2-A and IJR2-B.

Onus and Presumption of Registrability

5.     The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

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

[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].

6.     The rights of the parties are to be determined as at the date of the application[3] which is generally, but not always, the filing date[4]. The assessment date for the ss 43,58 and 62A opposition grounds is 18 December 2015 and, for the s 60 ground, 2 September 2015 (‘the relevant date’ for each section respectively).

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, [595].

[4] See sections 6, 12, and 72 of the Act.

Preliminary matter

7.     The Opponent objected to parts of the Holder’s submission, contending that it impermissibly introduces new evidence which should be disregarded. After close inspection I am satisfied that the Holder has relied in its submission on evidence appropriately introduced in its Evidence in Answer. Given this, I have considered the Holder’s full submission.

Discussion

8.  By way of context, the evidence establishes that the Holder is recognised as the world-wide governing body of international motor racing. It was formed in 1904 and comprises 245 motoring organisations in 143 countries with two member organisations in Australia. They are the Australian Automobile Association, ‘Australia’s peak motoring representative body’ and the Confederation of Australian Motor Sport Ltd (‘CAMS’), ‘Australia’s peak motor racing governing body.’ The Holder has delegated CAMS as the National Sporting Authority with the power to exclusively control motor sport in Australia and through which the Holder operates the Australian Formula 3 championship (among other things).

Section 58

9.  As identified by the Full Federal Court in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[5], to succeed on this opposition ground, an opponent needs to establish that there is another mark that is identical or substantially identical to the Holder’s mark; that this mark has been used in respect of goods or services that are ‘the same kind of thing’ as claimed by the trade mark; and that another person/entity has the earlier claim to ownership based on its use of its mark/s before the filing of an Holder’s mark or any use of it as a trade mark.[6]

[5] [2017] FCAFC 83; 251 FCR 379.

[6] Ibid [50].

10.     The Opponent relies on its use of ‘Formula 3’, ‘F3’ and ‘Formula Three’ (‘Opponent’s marks’) and contends in this regard that it and/or its claimed predecessor in title, Formula 3 Australia, Inc. (‘F3A’) had used the Trade Mark since 1999[7] and ‘has at all times exercised unfettered control and autonomy in its use of the Trade Mark over the last 20 years.’ In addition, it submits that there is no evidence supporting the Holder’s claims that it had expressly or impliedly licensed use of the Trade Mark.

[7] Although the SGP claims use since 2001.

11.     The Opponent’s contention that it or F3A has had ‘unfettered’ control in its use of the Trade Mark is contradicted by the terms of the confidential competition management agreements (‘agreements’) with CAMS exhibited to the declarations. Those agreements, licensing the Opponent or F3A as ‘Manager’ to conduct the ‘Series’ and the ‘Category’[8], do so subject to the Manager’s specific acknowledgement that CAMS is the proprietor of the intellectual property, the Manager does not acquire any proprietary interest in it and will not ‘in any way’ represent or pass itself off as have any such proprietary interest. Given these and other similar terms in the agreements between the Opponent/F3A and CAMS, I am not satisfied that any use by F3A or the Opponent of the Opponent’s marks could be regarded as demonstrating prior use of any other identical or substantially identical trade mark such as to establish Trade Mark ownership.

[8] For example, see Arocca declaration, Exhibit B. The 2012 Agreement between the Opponent and CAMS defines ‘Series’ to mean ‘the CAMS Australian Formula 3 Championship’ and ‘Category’ is the ‘Series for Eligible Cars’ which in turn are defined to mean ‘cars complying with the CAMS Australian Formula 3 Championship Sporting and Technical Regulations’, governed by the Holder’s technical specifications, rules and policies.

12. This evidence does however raise the question whether CAMS should be identified as a prior user of the Trade Mark for the purposes of s 58. The Holder maintains that CAMS has been its authorised user of the Trade Mark, in relation to the Goods and Services, since 1964[9] when Formula 3 events commenced in Australia under the control and supervision, and according to the rules, of the Holder[10]. In this regard the Holder provided a ‘Confirmatory Deed of Ownership of Trade Marks’[11] (‘confirmatory deed’) between the Holder and CAMS (and the AMSC[12]) in which they acknowledge that the Holder owned and continues to own all intellectual property rights in the Trade Mark and any use by CAMS or AMSC or the Authorised Managers (i.e., the Opponent and F3A) was under licence or sub-licence from the Holder. As observed by the Opponent, this deed was signed on 2 May 2019, after the relevant date. I note however that later events might be seen to assist in establishing facts at an earlier point in time[13] and in this respect the terms of the various agreements and the sworn declarations of Bayer and Arocca support a finding that the Holder had retained control of Australian use of the Trade Mark prior to the relevant date as outlined in the confirmatory deed.

[9] Exhibit A of the Arocca declaration: CAMS ‘Manual of Motor Sport and National Competition Rules’ 1964 edition which includes a chapter ‘First Category Racing in Australia - 1964’ and states ‘Australia Formula 3 – as per FIA Formula 3’.

[10] For example, the agreement signatories variously agree to abide by the FIA’s International Sporting Code and undertake to comply with the ‘Statutes, rules, policies and directives of the FIA...’. Those rules require scrutineers at events, circuits sanctioned by the Holder or CAMS, the specific homologation and approval of the vehicles, among other requirements. In addition, under the agreements, CAMS retained the right to promulgate any reasonable variation or addition to such rules to comply with any directions from the FIA.

[11] Bayer declaration, Exhibit F.

[12] CAMS licensed the AMSC (Australian Motor Sports Commission) to promote and conduct the race from around 2000 to 2010. The agreements exhibited over that period show it sublicensed its rights to F3A.

[13] Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505, 509; Anheuser-Busch Inc v Castlebrae Pty Ltd (1991) 32 FCR 64; Johnson & Johnson v Kalnin 26 IPR 435, 439.

13.     Therefore, on an overall assessment of the evidence, I am satisfied that the various agreements and documents demonstrate the Holder’s ‘actual control’ in relation to the use of the Trade Mark in Australia[14], within the meaning of s 8 of the Act. It follows that, under s 7(3) of the Act, CAMS’ authorised use of the Trade Mark can be regarded as use by the Holder.[15]  The evidence also weighs heavily in favour of a finding that the Holder coined and first used the Trade Mark as a badge of origin for the Goods and Services from around 1950, with the first Australian use being by CAMS, as authorised by the Holder, in or around 1964. This predates any claims by the Opponent or evidence of use by any other person of an identical or substantially identical trade mark.

[14] Lodestar Anstalt v Campari America LLC (2016) 120 IPR 1, 22-23; [2016] FCAFC 92, [97] and [98].

[15] See also Elecon Australia Pty Ltd v Brevini Australia Pty Ltd [2009] FCA 1327 [205]-[206] (‘Elecon’), which found that if the first use in Australia was a controlled use by a licensee, the licensor could claim ownership of the trade mark for the purposes of obtaining registration.

14. It follows that the Opponent has not substantiated its claim that another person/entity has an earlier claim to ownership of the Trade Mark as required by s 58. Accordingly, this ground of opposition is not established.

Section 60

15.     To succeed on this ground the Opponent must establish that there is another trade mark that has a reputation in Australia amongst a significant section of the relevant public at the relevant date and, because of that reputation, the notional use of the Trade Mark would be likely to deceive or cause confusion.

16.     The Opponent submits that members of the Formula 3 racing community in Australia have come to associate the Trade Mark with the Opponent as the leading provider of Formula 3 category racing events in Australia. It contends that registration of the Trade Mark will cause people to be confused or deceived into believing that there is some form of collaboration between the Holder and the Opponent.

17.     The Holder submits that any reputation accrued by an authorised trade mark user accrues also to the benefit of the person exercising the control.[16] In addition, it contends that the Opponent has not provided evidence of the Opponent’s marks’ reputation ‘amongst a significant section of the public’ or of expenditure and revenue generated through its use.

[16] Relying on Shanahan’s Australian Law of Trade Marks and Passing Off (5^th edition) at [80.1005].

18.     While the Opponent has provided only limited evidence of its revenue or expenditure, it has supplied evidence of advertising and promotion which shows substantial numbers of visitors to its website and large numbers of people reached via social media, as well as the significant print and media coverage of its Formula 3 event with a relatively high average number of viewers of its various broadcasts[17]. On this basis I am satisfied that ‘Formula 3’[18], when used as a trade mark, has a relatively strong reputation among a significant number of Australians concerned with the motor car racing in Australia. I am not satisfied however that this reputation resides, as required by s 60, in ‘another mark.’ That is because, as discussed above (paragraphs 13-14), the evidence strongly indicates that the Opponent’s entitlement to use the Trade Mark derived from its agreements with CAMS, the Holder’s authorised Trade Mark user. As such, as recognised in Elecon[19], at the relevant date, when the 2012 agreement between CAMS and the Opponent was still in force, any reputation in ‘Formula 3’ when used as a trade mark by the Opponent is appropriately attributed as the Holder’s Trade Mark use. In any event, there is nothing in the evidence that persuasively establishes the Australian racing community has come to associate the Opponent (as opposed to the Holder or CAMS) with the Trade Mark, or ‘Formula Three’ or ‘F3’. On the contrary the Opponent’s own evidence demonstrates the Trade Mark’s connection to the Holder.[20]

[17] For example, see Exhibit IJR-3 to first Richards declaration, pages 71, 84 of materials.

[18] The evidence does not support a finding of reputation for ‘Formula Three’ or the plain script ‘F3’.

[19] n15

[20] For example, the first Richards declaration exhibit IJR-3 includes a 2000 press release headed ‘FIA Formula 3 Accepted in Australia’ which states that the Formula 3 cars racing in Australia ‘race under the same technical specifications as those cars racing anywhere in the world under FIA regulations.’ And later, a brochure is headlined ‘Formula 3 Australia – the Facts... Australia’s Established Internationally Recognized FIA Formula continues in 2015’.

19. Given this, I am not satisfied that the evidence establishes a reputation in ‘another trade mark.’Accordingly, the s 60 ground of opposition is not established.

Section 43

20. Section 43 provides that a trade mark must be rejected if, because of a connotation in it, an applicant’s use of it in relation to goods and/or services would be likely to cause deception or confusion. The meaning of ‘connotation’ was discussed by Gyles J in Pfizer Products Inc v Karam (‘Pfizer’) where he commented:

‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. [21]

[21] [2006] FCA 1663 [53].

21.   There is no evidence of any secondary meaning implied by the Trade Mark or any other evidence supporting this ground. Accordingly, this ground is not established.

Section 62A

22. Section 62A of the Act provides that registration of a trade mark may be opposed on the ground that the application was made in bad faith. Bad faith is to be assessed at the time of the application.[22] Bennett J summarised the s 62A principles in DC Comics v Cheqout Pty Ltd in part as follows:

Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.[23]

[22] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 201 FCR 565; 288 ALR 727; [2012] FCA 81 [145] (‘Fry Consulting’).

[23] (2013) 212 FCR 194, 206 [62].

1. Given my findings above regarding ownership of and reputation in the Trade Mark, nothing in the evidence indicates that the Holder, in making the application, had any reasonable grounds on which to believe it was not entitled to do so. The Holder has successfully registered the Trade Mark in 14 other countries. There is no cogent evidence before me establishing that the Holder’s conduct in applying to extend protection to Australia for the Trade Mark might be said to constitute a ‘falling short’ of acceptable commercial standards or of an ‘unscrupulous, underhand or unconscientious character’.[24]

   [24] Fry Consulting [165]– [166].

   24. It follows that the s 62A ground of opposition has not been established.

   Decision

   25.     Regulation 17A.34N provides:

   17A.34N Decision on opposition

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

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

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

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

   (2)The Registrar must notify the International Bureau of the Registrar’s decision.

   26.     The Opponent has not established the grounds on which the IRDA was opposed. I therefore direct that protection of the IRDA be extended to Australia one month from the date of this decision for all the designated Goods and Services.

   27.   If the Registrar has been served with a notice of appeal before that time, I direct that extension of protection shall not occur until the appeal has been decided or discontinued or, if this decision be successfully appealed, that the IRDA be dealt with as the Court sees fit. If the Registrar has not been served with a notice of appeal before that time the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accordance with reg. 17A.34N(2).

   28.   The Holder sought costs. As the successful party, the Holder is so entitled. I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

   Mary-Ann Cooper

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   24 February 2021