Opposition by Major League Baseball Properties Inc. to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 1746264 (International Registration No. 1283628)...

TRADE MARKS ACT 1995  DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Major League Baseball Properties Inc. to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 1746264 (International Registration No. 1283628) (classes 9,34,35) – MLB – in the name of Philip Morris Brands Sarl.

Delegate: Debrett Lyons

Representation: Opponent: Samuel Hallahan of Counsel
Holder: Edwina Whitby of Counsel

Decision:
2019 ATMO 149
Trade Marks Act 1995 (Cth) – Opposition to extension of protection to IRDA – reg 17A.33 of the Trade Marks Regulations 1995 – grounds under ss 42(b) and 60 considered – neither established and opposition unsuccessful – protection of IRDA to be extended to Australia.

Background

Philip Morris Brands Sarl. (‘the Holder’) has applied for extension of protection to Australia of International Registration no. 1283628. Current details of the resulting International Registration Designating Australia (‘the IRDA’) are:

Trade Mark:

MLB

Trade mark application:

1746264

Filing Date:

25 November 2015

Priority Date

11 August 2015 (from Swiss Application No. 680039)

Specification:

Class 9: Batteries for electronic cigarettes; batteries for electronic devices that are used for heating tobacco, battery chargers for electronic devices that are used for heating tobacco; USB chargers for electronic devices that are used for heating tobacco; car chargers for electronic cigarettes; car chargers for devices that are used for heating tobacco

Class 34: Tobacco, raw or manufactured; tobacco products; cigars, cigarettes, cigarillos, tobacco for roll-your-own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus; tobacco substitutes (not for medical purposes); electronic cigarettes; tobacco products for the purpose of being heated; electronic devices and their parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation; smokers' articles, cigarette paper, cigarette tubes, cigarette filters, tobacco tins, cigarette cases, ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters, matches; electronic devices for inhalation containing essential oils (smokers' articles); liquid nicotine solutions, namely, liquid nicotine for use in electronic cigarettes; aromatic preparations, namely, liquid preparation used to refill cartridges of electronic cigarettes; wired vaporizer for electronic cigarettes and electronic smoking devices

Class 35: Wholesale or retail services in the field of tobacco products, electronic cigarettes and products for use with electronic cigarettes

The IRDA was examined as required by Regulation 17A.12 of the Trade Marks Regulations 1995 (‘the Regulations’). No ground of refusal was raised and IP Australia advertised its intention to extend protection to Australia in the Australian Official Journal of Trade Marks on 18 February 2016.
Major League Baseball Properties Inc. (‘the Opponent’) filed a Notice of Intention to Oppose the extension of protection to Australia of the IRDA on 15 April 2016. Thereafter a Statement of Grounds and Particulars (‘the SGP’) was filed by the former legal representatives of the Opponent, Chrysiliou IP, and the Holder filed a Notice of Intention to Defend.
The parties each filed evidence after which they requested to be heard in person in Sydney. I was delegated by the Registrar to take the hearing set for 1 July 2019. Before the hearing I sent directions to the parties to ensure the orderly conduct of the hearing. In compliance with those directions both sides provided outline written submissions which in the case of the Opponent were prepared by its newly engaged representatives, Corrs Chambers Westgarth.
At the hearing the Opponent was represented by Samuel Hallahan of Counsel, instructed by Odette Gourley of Corrs Chambers Westgarth, also in attendance. The Holder was represented by Edwina Whitby of Counsel, instructed by Spruson & Ferguson.
Grounds of Opposition, Onus and Standard of Proof
Regulations 17A.28 and 17A.34 extend the grounds for rejection of and opposition to a Trade Mark under Part V of the Trade Marks Act 1995 (‘the Act’) to IRDAs. The opposition to registration is brought pursuant to s 52 of the Act and the SGP nominated grounds of opposition under ss 42(b), 44, 58 and 60 of the Act.
The Opponent chose not to press ss 44 and 58. As a preliminary matter, I am not willing to draw any findings (as the Holder petitioned me to do) from the fact that those grounds were not pursued and, should this decision be appealed, it is open to the parties to canvass those grounds on appeal if desired. As to ss 60 and 42(b), the Opponent’s case in short form is that:
Section 60 – because of the reputation in Australia of the Trade Mark with respect to the Opponent’s world-famous “Major League Baseball” organisation, use of the Trade Mark by the Holder would be likely to deceive or cause confusion.
Section 42(b) – use of the Trade Mark by the Holder would constitute passing off and contravention of sections 18(1) and 29(1)(g) and (h) of the Australian Consumer Law (‘the ACL’).
The onus of proof to establish one of those grounds rests with the Opponent. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities. The date at which grounds are to be determined is not the same – in the case of s 42(b) it is the filing date of the Trade Mark, 25 November 2015, but for s 60 it is the priority date, 11 August 2015.
Legislative framework
Section 60 of the Act provides:
60Trade 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.
Note:For priority date see section 12.
Subparagraph 42(b) of the Act relevantly provides:
42Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
[…]
(b)its use would be contrary to law.
Evidence
The Holder is a wholly owned subsidiary of Philip Morris International Inc, an international tobacco company. The Opponent is a professional baseball organisation in the United States of America.
The Opponent’s Evidence in Support of its opposition comprises a declaration by Ethan G. Orlinsky, Corporate Secretary of the Opponent, made on 16 November 2017 (‘Orlinsky’).
The Holder’s Evidence in Answer comprises a declaration made by Daniel Francome (‘Francome’) on 27 February 2018. Mr Francome is Head of Marketing at Philip Morris Limited, an Australian company in the same corporate group as Philip Morris International Inc.
The Evidence in Reply comprises a declaration made by an attorney, Lincoln Chrysiliou, from the Opponent’s former representatives in this matter, on 4 May 2018 (‘Chrysiliou’).
Preliminary observations
The parties’ interests are in the same Trade Mark. There is no issue concerning variations of the Trade Mark. The Opponent references its rights in the mark, MAJOR LEAGUE BASEBALL, but due to the very significant differences between that mark and the Trade Mark, it has no bearing on the issues before me in this opposition.
From the Opponent’s position, the Trade Mark is plainly an initialism. The Holder does not give an account of its adoption of the Trade Mark and at the hearing Ms Whitby was unable to help me in that regard. Nevertheless, despite Orlinsky’s repeated references to “bad faith”, which was not a ground of opposition, I am in agreement with Ms Whitby that there is no evidence of bad faith adoption of the Trade Mark by the Holder.
There is no evidence of the Holder having made an express representation that the goods or services to be provided under the Trade Mark have a connection with the Opponent’s business. It follows that any alleged misrepresentation or misleading representation can only be construed having regard to the Opponent’s pre-existing reputation in the Trade Mark. This premise is fundamental to both grounds of opposition.
For s 42(b), the Opponent bears the additional onus to establish on the balance of probabilities that use of the Trade Mark would, rather than could, be contrary to law. So, as argued, the Opponent must for the claim of passing off prove (i) reputation or goodwill (ii) a misrepresentation, and (iii) consequential damage or the likelihood thereof. To show a breach of s 18(1) of the ACL, the Opponent must prove that use of the Trade Mark by the Applicant in trade or commerce would engage it in “conduct that is misleading or deceptive or is likely to mislead or deceive”.Section 29 of the ACL deals with false or misleading representations about goods or services and provides, relevantly, that:
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
…
(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or
(h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation; …
In the result, my assessment of reputation and my findings in connection with s 60 will be largely determinative of this opposition.
Section 60
As seen, to satisfy s 60 the Opponent must establish that it had a reputation in the Trade Mark in Australia at the priority date and, because of that reputation, use of the Trade Mark by the Holder for the goods and services would deceive or cause confusion.
Reputation in Australia
Orlinsky states that professional baseball began in the 1900s and today it has the highest crowd attendance of any professional sport in the United States. The Opponent is the peak baseball organization in the United States comprising 30 clubs (‘MLB Club(s)’), many of which are well-known in their right. I can abbreviate much of Orlinsky by finding, now, that the Opponent and the names it goes by, “Major League Baseball” and the Trade Mark, have a very substantial reputation in the United States.
Orlinsky declares that MLB Club matches are broadcast in over 220 countries, including Australia, and that there has been pay tv broadcasting of MLB Club games in Australia from well before the priority date. Games, results and the movement of players are reported on in Australian media. A significant number of Australian baseball players have signed with MLB Clubs, attracting print media attention. Moreover, in 2014 the opening games of the season (two matches between the Los Angeles Dodgers and the Arizona Diamondbacks) were played at the Sydney Cricket Ground to large attendances.
Orlinksy declares that since 1994 the Opponent has fostered awareness of baseball in Australia with school age children and the local governing body, the Australian Baseball Federation, has worked with the Opponent to grow the sport in this country. Initiatives have included establishment and sponsorship of an “Academy”, a training camp for promising Australian players.
The Holder is nevertheless skeptical of the extent of the Opponent’s reputation in the Trade Mark in Australia at the priority date. The Holder, rightly in my view contends that, by the manner in which Orlinsky defines certain terms, the evidence conflates the Opponent’s reputation and that of its participating clubs and their trade marks with the question of reputation in the Trade Mark itself. In spite of the undeniable reputation which I have found the Trade Mark to have in the United States, this feature of Orlinsky leaves open to question the value of the evidence in terms of establishing overseas reputation.
MLB Clubs come from the United States and Canada. There are no Australian clubs in the league. There is no evidence as to the viewing audience of MLB Club games on Australian television. There evidence of the inaugural 2014 match in Sydney does not show use of MLB. Some of the media evidence put forward in support of local reputation postdates the priority date and some does not show the Trade Mark at issue.
In Le Cordon Bleu B.V. v Cordon Bleu International Ltee Heerey J said that the reputation required to be demonstrated in relation to a broadly analogous provision of the repealed Trade Marks Act 1955) was:
... one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question.
Given the Opponent’s evidence, the Holder’s criticisms, and cognizant of the influence of American popular culture in Australian life over some decades, my assessment is that the Australian public with a passing interest in sport is likely to be aware of the names of some of the MLB Clubs, such as the New York Yankees, the San Francisco Giants, the Los Angeles Dodgers or the Boston Red Sox. However, I am not convinced those same people would necessarily know of the Opponent or the Trade Mark. On the other hand, given our national curiosity about all sport and the evidence put forward by the Opponent, I think there is a respectable argument that the Trade Mark was known by a not insubstantial number of people.
On the evidence I find that at the priority date the Trade Mark had a modest reputation in Australia in respect of the game of professional baseball played by MLB Clubs. I find that reputation limited to clothing and sporting goods for baseball, or services in the nature of the promotion and organisation of the sport of baseball.
Sports merchandising
(i) Generally
I am, by this separate heading, keen to bifurcate that reputation as just described from the different enquiry into the habits of the sports industry and the legal inferences that might be drawn therefrom. In other words, whilst the Opponent’s assertion that it is involved in commercialising sports brands and has has engaged in extensive merchandising and licensing of the Trade Mark may, as a factual matter be true, its truth does not automatically carry with it the conclusion that the Trade Mark has a reputation in Australia for merchandised goods.
The Opponent submits that official sports merchandise is an area where brand extension is well established. The Holder concedes that “[c]onsumers are accustomed to merchandise licensing arrangements surrounding sporting codes and clubs. Sporting goods (and particularly sportswear) are clearly complementary to professional sports such as baseball, football, cricket and basketball.”
The Opponent asserts that since 1995, retail sales throughout the world of licensed products have exceeded USD 20 Billion. Orlinsky attests that companies such as Crocs, Inc., Wilson Sporting Goods Co., Nike USA, Inc. and Reebok International, Ltd. have been licensed to sell products bearing the Opponent’s trade marks in Australia.
Nonetheless, there is no Australian sales evidence of licensed goods and the global figures suffer the defect I have already identified, namely, consolidating the MLB Club trade marks with other trade marks owned by the Opponent. Further, the Holder observes that the licensed companies are primarily retailers of sporting goods and that the evidence primarily shows clothing such as T-shirts and baseball caps bearing the trade marks of the MLC Clubs, sometimes with either the Trade Mark and/or the words “Major League Baseball.
The Holder’s submission is that, to the extent that a reputation might be discovered in Australia, “it is confined to sports services (baseball) and sports merchandise only.” I make the slightly narrower finding, as I have expressed it, that the reputation in the Trade Mark is restricted to clothing and sporting goods for baseball, or services in the nature of the promotion and organisation of the sport of baseball.
All that the evidence otherwise shows is that the Opponent has engaged in the merchandising of the Trade Mark and other trade marks, principally in connection with items of clothing associated with baseball, but also in relation to some apparently unconnected items. That latter evidence is not evidence of an enlarged reputation in the Trade Mark in Australia going beyond what I have described.
(ii) Smoker’s articles
Since we are here concerned with direct proximity between the parties’ asserted interests, I have set out much of the relevant passage from Orlinsky, as follows:
Applicant’s MLB Mark is intended to be used for goods in Classes 9 and 34 and for related services in Class 35, which are identical or highly similar to certain of the goods and services for which the MLBP MLB Marks have long been used and/or registered worldwide and promoted in the press and the media, on the Internet, and through broad merchandising programs worldwide, including in Australia. In particular, the Application covers cigarette smoking accessories and related retail services, while MLBP, the Clubs, and/or their licensees have, for decades, merchandised countless goods and offered countless services in connection with the marks denoting the Clubs and the MLBP MLB Marks, for lighters and other accessories that can be used with smoking and related retail services. For example, MLBP and the MLB Clubs and/or their licensees, including BIC and ZIPPO, have offered lighters bearing the Clubs’ marks.
I am in agreement with the Holder’s submission that much of that passage is overstated. The evidence is limited to the lighters mentioned and shows the maker’s mark, “Zippo” or “BIC”, co-branded with trade marks of the MLB Clubs. The material is undated, of uncertain provenance, does not show use of the Trade Mark on the goods themselves, and does not establish any use or sale of the goods in Australia.
Taking into account all of the evidence, the only other indication of the Opponent’s interest in these goods is a reference to a 1994 application to register the trade mark MAJOR LEAGUE BASEBALL in Australia in respect of, “Smokers articles including lighters; matches; tobacco products” which lapsed and was never registered.
Implicit in [34] above is my finding that the Opponent did not have a reputation in the Trade Mark in Australia in respect of smokers articles at the priority date, but nor do I find anything more than a rebuttable claim that the Opponent is known to merchandise those types of goods.
Tobacco advertising
Francombe provides evidence that in Australia the use and promotion of tobacco products is tightly controlled and that, in particular, since before the priority date, the tobacco company sponsorship of all sporting events in Australia had been prohibited. The Holder’s submissions then trace the Federal (and NSW) legislative enactments which have since 1989 progressively restricted the promotion of tobacco products and conclude that:
The effect of this regime is that by law, there is no permitted cross-promotion of tobacco products at sporting events, no permitted cross-over in the trade channels of the respective goods and services, or even lawful use of a tobacco product at a sporting field in Australia.
… [for] almost a decade before the Priority Date, Australian consumers had not been exposed to tobacco advertisements during a televised sporting match. The association between sporting events and smoking has been legislatively eradicated.
Chrysiliou attempts to limit the impact of those laws but having examined the argument therein I am in agreement with the Holder that it misunderstands the legislative regime and I make the finding that since well before the priority date all tobacco advertising, at sporting events or otherwise, was banned. Sponsorship itself of a sporting event by a tobacco company remains permissible, but it is not permissible to advertise a trade mark or logo associated with tobacco products.
Use likely to deceive or cause confusion

The Holder is a tobacco company and the applied-for goods and services directly relate to its business. The specification does not include any broad ambit claims extending to any other goods or services. As I said in Allergan, Inc. v Selfcare IP Holdings Pty Ltd [2017] ATMO 102 at [88]:
That is not to say that the Opponent’s prospect of success under section 60 depends on the requirement of a common field of activity between the parties. It does not, but in the overall assessment of the impact of the reputation of the Opponent’s Mark, I remain mindful of Jessup J’s reasoning in Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd [2015] FCA 1065; (2015) 115 IPR 82 at [27]:
What this means in practice is that the notional consumer of average intelligence thinking of making a purchase by reference to goods in association with which the latter mark is used, or intended to be used, is no longer someone who has had no more than some exposure to the “other” mark: he or she is someone who is assumed to have that level of awareness of that mark as is consistent with the content and extent of the reputation of it.
The applied-for goods and services are not in any sense directly linked with the Opponent’s Australian reputation. Nevertheless, the Opponent’s submission is that “[t]he present case is one in which the practice of brand extension is particularly relevant.” Likewise, it was the Holder’s submission that “[c]ritical to the present opposition [is] … an analysis of the surrounding circumstances in which the marks will be used, including use to which the [Trade] Mark may be put if registration is obtained, and the circumstances in which consumers will acquire the respective goods and services.” As argued, those surrounding circumstances are (i) the trade mark licensing practices in the sports industry and (ii) the effect of advertising bans in respect of tobacco products.
To summarise what I have found already:
•     •    the reputation of the Trade Mark in Australia is modest and is limited to baseball, whether that be sporting goods or clothing for baseball, or the promotion of the sport of baseball;
•     •    there is no evidence of the sale in Australia of merchandise bearing the Trade Mark. There is no evidence of the sale of smoker’s articles such as cigarette lighters in Australia; and
•     •    there was at the priority date no permitted use of the Trade Mark on the goods or services at or in connection with sports events.
There is no evidence of actual confusion. The Holder has made no statements as to the source of the applied-for goods and services and so in terms of s 60 there has been no deception by way of the creation of a false belief. Whilst ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public, the evidentiary standard means that a likelihood of confusion exists if there “is a real likelihood that some people will wonder or be left in doubt about whether the two sets [of goods/services] come from the same source.”
Absent the possibility of use of the Trade Mark at sporting events, what is argued is that there is a real and tangible danger that Australian consumers would see the Trade Mark used on the goods or in respect of the services and have cause to wonder whether or not those goods or services emanated from the Opponent or had been put on the market or offered by somebody else with the licence and permission of the Opponent. The argument is that:
… given the prevalence of sports merchandise licensing, consumers are conditioned to accept new types of officially licensed products, and thus, upon seeing a new type of product bearing the trade mark of a sporting competition and/or team (i.e. a type of product which had not previously been the subject of licensed merchandising), consumers will be likely to believe that the product is licensed by that sporting competition and/or team.
Furthermore, the Opponent submits that the licensed the use of the Trade Mark in relation to Bic and Zippo cigarette lighters is significant, first, because consumers of the Holder’s goods and services are likely to be aware of the range of products licensed by the Opponent and so are likely to believe that any smoking-related products and accessories sold by the Holder under the Trade Mark are licensed by the Opponent. Finally, that in any event, “even if consumers would not be likely to be specifically aware such licensing, this evidence nevertheless shows that these products and accessories are in fact the type of products that are likely to be licensed by sports organizations.”
The Opponent’s argument accordingly rests on the Australian reputation, as described, coupled with the practices in certain business sectors, admitted by the Applicant to include sports, to merchandise goods. The supporting evidence shows examples of co-branding with third party goods makers, and other examples of licensed use of the trade marks of MLB Clubs, and to a lesser extent, the Trade Mark, with or without those Club trade marks.
If the argument appears strained then I observe that the letters “MLB” are not proven to be used uniquely by the Opponent. Its reputation in Australia is confined. Taken in isolation, then to some minds, “MLB” may an abbreviation for the city of Melbourne; to others, it may suggest Merrill Lynch Bank. If the context of use is limited to the goods and services, then the likelihood of confusion requires consideration of the ban on tobacco advertising that has been in place in Australia for many years. In my assessment that would have very likely conditioned the Australian public away from making a connection between the Opponent and the applied-for goods and services.
It has been said by the courts that the assessment of likelihood of confusion is a practical one and I have no reason to think the goods and services would be linked in the public mind to the Opponent. As noted, all surrounding circumstances must be taken into consideration. Quite aside from the embargo on tobacco advertising at sports events, those circumstances include how the goods will be bought and sold, or the services offered, and I cannot think of how the trade channels through which the Holder operates would create the environment in which the Opponent might be called to mind.
In the result, I find that there is almost no likelihood of confusion or deception were the Trade Mark used on the goods and services for which it is sought to be registered. That finding is determinative of the s 60 ground which has, accordingly, not been established.
Section 42
Passing Off
The Opponent submits that the law of passing off is perhaps more developed and accustomed to dealing with issues regarding “brand extension” and “merchandising” than is the law relating to s 60 of the Act. I have no disagreement with that broad proposition but the Opponent must prove a misrepresentation by the Holder calculated to injure the Opponent’s business or goodwill (in the sense that this is a reasonably foreseeable consequence).
As I have already observed, the Holder has not made any express representations about the goods or services. The necessary misrepresentation must therefore be implied by the use of the Trade Mark on those goods or services. I have already found that use of the Trade Mark for those goods and services would not be likely to deceive or cause confusion and for that reason alone the claim of passing off fails.
Nevertheless, I remain aware that a misrepresentation that one business is licensed by another is potentially actionable as passing off. Other minds might discover a tortious misrepresentation not encompassed by my s 60 findings. In that event, my further finding is that the claim of passing off fails because, even if the use of the Trade Mark involved a misrepresentation, there is no damage to the Opponent’s goodwill.
Remembering what counsel on both sides have said and acknowledged of sports merchandising, it is useful to look back to a case when the law was less developed. In Stringfellow & Anr. v. McCain Foods (GB) Ltd & Anr., (‘Stringfellow’) the plaintiff had in 1980 opened an eponymous, high-class nightclub and restaurant in London’s West End which came to be well known and fraternized by celebrities. The defendant made and sold frozen foods and commenced advertising and sale of frozen potato chips by reference to the same name. An injunction was refused, but at the full trail in the High Court for passing off, Whitford J. found a misrepresentation, deciding that:
The reputation of a first-class restaurant and nightclub is, in my view, likely to decline rapidly once it has become impugned or tainted. Now of course no-one suggests that the defendants' frozen oven ready chips are not perfectly wholesome and very acceptable to, I should imagine, the large majority of the inhabitants of these islands as a foodstuff, but the association of the name in conjunction with the chips is, in my judgment, likely because of its undoubted possibility of confusion, the idea of an association with the plaintiffs, to damage the plaintiffs' goodwill.
Nevertheless, the High Court found no damage. On appeal to the Court of Appeal, Slade LJ, who delivered the leading judgement, reduced the issues to (1) whether McCain could be said to have been guilty of any misrepresentation and (2) if so, whether it is a reasonably foreseeable consequence of such misrepresentation that it would cause actual damage to the Stringfellow’s business or goodwill.
In respect of the first issue, Slade LJ adopted with approval the question as it was posed by the trial judge: “What would people who knew about Stringfellows the club think on seeing this name ‘Stringfellows’ used in connection with the first defendants’ oven ready chips?” He decided:
I am firmly of the opinion that the use by McCain of the word “Stringfellow”, in packaging and marketing their chips did not by itself amount to a misrepresentation because, by itself, it was not likely to lead any member of the public to the reasonable belief (and the belief has to be reasonable if it is to involve a misrepresentation) that Mr. Stringfellow or his Club was associated with chips in any way.
The only tenuous overlap between the respective fields of activities of the plaintiff and of McCain is that McCain markets foodstuffs while the plaintiffs sell food in the restaurant at their nightclub. But frozen foods and potato chips are some of the last kinds of food which would be readily associated in the minds of the public with a high-class, “up-market” restaurant, so that the relevant overlap is very small.
As to the second issue, the Court of Appeal found no damage to the plaintiff’s goodwill. In the opposition before me, there is no evidence as to how the Opponent’s business might be damaged by use of the Trade Mark by the Holder. There is no suggestion of lost licensing opportunities in Australia for the sale of smokers’ articles or associated services. There is no evidence of past sales of such goods by the Opponent or its licensees in Australia. By its various submissions concerning “Zippo” or “Bic” lighters, lapsed Australian trade mark applications for smoker’s articles and the like, the Opponent attempts to draw those goods into its net of “brand extension” interests, but I have already found that as a result of the ban on tobacco advertising that has been in place for many years, the purchasing public has been conditioned away from the expectation of a connection between the Opponent’s type of business and the applied-for goods and services.
I observe that in the Opponent’s SGP, the ground under s 42(b) was particularized in one way that was not pressed at the hearing - that use of the Trade Mark to promote tobacco products would breach the Tobacco Advertising Prohibition Act 1992 (Cth). Somehow that again brings to mind the Stringfellow case where the plaintiff, providing his evidence in chief, explained the effect he imagined on his club if people came to think he was concerned with the business of frozen chips. Mr Stringfellow said:
It is just something I do not want the connection with. I have no disrespect for chips. I eat chips myself. I like chips but I do not want to advertise them. I eat baked beans but I do not want them called Stringfellows.
It may well be the case that the Opponent, like Mr Stringfellow, simply does not “want the connection with” tobacco products in this age. It may also be true that such a connection (were its likelihood proven on the evidence) might cause the sort of damage to goodwill that the law of passing off recognizes and protect against but, as I find the case, I cannot perceive damage to the Opponent.
The Opponent has not shown that use of the Trade Mark would be contrary to law in that it would amount to passing off.
ACL
It has been held that the test for “misleading or deceptive conduct” under s 18 of the ACL is a more stringent test than that for “deception or confusion” under s 60. Given my findings already, the Opponent has not established that there would be a breach of s 18 of the ACL.
Likewise, ss 29(1)(g) and (h) of the ACL both require the Holder to make a false or misleading representation about the goods or services and that has not been shown.
I find that the Opponent has not established the ground of opposition under s 42 of the Act.
Decision
Reg. 17A.34N of the Regulations provides:
(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.
I have found that the Opponent has not established either of its grounds of opposition. I therefore direct that protection of the IRDA be extended to Australia one month from the date of this decision in respect of all of the goods and services listed in the Specification.
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 there is no appeal 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).
Costs
The Holder sought its costs in the event it was successful in this matter and I accordingly award costs against the Opponent at the official scale set out in Schedule 8 to the Regulations.
Debrett Lyons
Hearing Officer
Hearings and Oppositions
16 October 2019

Delegate:	Debrett Lyons
Representation:	Opponent: Samuel Hallahan of Counsel Holder: Edwina Whitby of Counsel
Decision:	2019 ATMO 149 Trade Marks Act 1995 (Cth) – Opposition to extension of protection to IRDA – reg 17A.33 of the Trade Marks Regulations 1995 – grounds under ss 42(b) and 60 considered – neither established and opposition unsuccessful – protection of IRDA to be extended to Australia.

Trade Mark:	MLB
Trade mark application:	1746264
Filing Date:	25 November 2015
Priority Date	11 August 2015 (from Swiss Application No. 680039)
Specification:	Class 9: Batteries for electronic cigarettes; batteries for electronic devices that are used for heating tobacco, battery chargers for electronic devices that are used for heating tobacco; USB chargers for electronic devices that are used for heating tobacco; car chargers for electronic cigarettes; car chargers for devices that are used for heating tobacco Class 34: Tobacco, raw or manufactured; tobacco products; cigars, cigarettes, cigarillos, tobacco for roll-your-own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus; tobacco substitutes (not for medical purposes); electronic cigarettes; tobacco products for the purpose of being heated; electronic devices and their parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation; smokers' articles, cigarette paper, cigarette tubes, cigarette filters, tobacco tins, cigarette cases, ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters, matches; electronic devices for inhalation containing essential oils (smokers' articles); liquid nicotine solutions, namely, liquid nicotine for use in electronic cigarettes; aromatic preparations, namely, liquid preparation used to refill cartridges of electronic cigarettes; wired vaporizer for electronic cigarettes and electronic smoking devices Class 35: Wholesale or retail services in the field of tobacco products, electronic cigarettes and products for use with electronic cigarettes

[2019] ATMO 149

16 October 2019