Opposition by Northern Rivers Kart Club Incorporated to registration of trade mark application number 1970295 (Class 41) – NSW YOUNG GUNS with device - in the name of Australian Karting Association Ltd.

[2022] ATMO 30

TRADE MARKS ACT 1995

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

Re:Opposition by Northern Rivers Kart Club Incorporated to registration of trade mark application number 1970295 (Class 41) – NSW YOUNG GUNS with device - in the name of Australian Karting Association Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Self-represented. Applicant: Self-represented.
Decision:	2022 ATMO 30 Trade Marks Act 1995 (Cth) – opposition under section 52 – ground of opposition under s 58 considered and not established – trade mark to proceed to registration.

Background

1. This is a decision on the opposition by Northern Rivers Kart Club Incorporated (‘Opponent’) to registration of trade mark number 1970295 (‘Application’) filed by Australian Karting Association Ltd (‘Applicant’) on 22 November 2018 (‘Relevant Date’) for the following trade mark and services:

   (‘Trade Mark’)

   Class 41: Advisory services relating to the organisation of sporting events; Arranging of sporting events; Booking of tickets for sporting events; Coaching services for sporting activities; Country clubs (providing entertainment and sporting facilities); Entertainment, cultural or sporting event booking or reservation services provided in relation to a customer loyalty or frequent buyer scheme; Entertainment, cultural or sporting event booking or reservation services provided in relation to a frequent flyer scheme; Event management services in relation to the organisation of educational, entertainment, sporting or cultural events; Management of sporting events; Organisation of promotions (sporting events); Organisation of sporting activities; Organisation of sporting competitions; Organisation of sporting events; Organising charitable fundraising events being the provision of entertainment, sporting and cultural services; Production of sporting events; Providing information, including online, about education, training, entertainment, sporting and cultural activities; Provision of club sporting facilities; Provision of entertainment, sporting or cultural services from customer loyalty and frequent buyer schemes; Provision of entertainment, sporting or cultural services from frequent flyer schemes; Provision of sporting club facilities; Provision of sporting competitions; Provision of sporting events; Provision of sporting facilities; Rental of equipment for use at sporting events; Rental of sporting apparatus; Rental of sporting apparatus and equipment (except vehicles); Reservation services for sporting tickets; Social club services (entertainment, sporting and cultural services); Sporting activities; Sporting information; Sporting results services; Ticket agency services (sporting)

   (‘Services’)

2. The Application was examined, accepted for possible registration, and subsequently advertised for opposition on 9 June 2019.  The Opponent filed notice of its intention to oppose registration of the Trade Mark on 5 August 2019 and a statement of grounds and particulars (‘SGP’) on 27 August 2019. The Applicant filed a notice intention to defend on 29 June 2020. The lengthy time period between the filing of the SGP and the Notice of Intention to Defend was due to a request by the Opponent to amend the SGP. That amendment request was decided in favour of the Opponent by decision of a delegate of the Registrar made on 29 May 2020.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 5.14.[1] The Opponent filed Evidence in Support (‘EIS’) on 28 September 2020. The Applicant filed Evidence in Answer (‘EIA’) on 26 December 2020. The Opponent filed Evidence in Reply (‘EIR’) on 12 and 16 July 2021. 

   [1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

4. The parties were given the opportunity to either request an oral hearing or to file written submissions. The Opponent did not request an oral hearing or file written submissions. The Applicant filed written submissions only.  I have decided this matter based on the particulars set out in the SGP, the evidence of the parties, and the written submissions of the Applicant.

   Grounds and onus

5. The SGP nominates the ground of opposition under s 58.

6. The Opponent carries the burden of establishing the nominated ground of opposition on the balance of probabilities.[2]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

7. The rights of the parties are assessed as at the Relevant Date.[3]

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

   Evidence

8. The following evidence was filed:

   EIS

   Declaration of Diana Smith, President of the Opponent, made on 28 September 2020, with annexures 1 to 11.

   EIA

   Declaration of Kelvin Douglas O’Reilly, CEO of the Applicant, made on 26 December 2020, with appendixes A to E.

   EIR

   Declarations of Diana Smith made on 12 July 2021 with annexures DS-1 to DS-8, and 16 July 2021 with annexures.

9. The parties collectively filed a reasonable amount of evidence. However, much of this evidence, and opinions expressed by the declarants, would only have been relevant in relation to grounds of opposition that were not relied on by the Opponent.

10. The ground relied on by the Opponent (s 58) is narrow in scope. The SGP only refers to the prior use of the name ‘Young Guns Titles’ by the Opponent. I am therefore only concerned whether there has been some genuine commercial use of ‘Young Guns Titles’ or substantially identical marks by the Opponent and whether such marks are substantially identical to the Trade Mark. Section 58 does not require that I consider whether any trade mark relied on by the Opponent has a reputation in Australia, or the details of previous business disputes or other difficulties in the relationship between the parties or any associated entities.

11. As such, in the interests of brevity, I will confine my discussion of the evidence to a summary of the background and the circumstances of use of any relevant trade marks by the Opponent.  

    EIS & EIR

12. Ms Smith declares that the Opponent, which trades as ‘Lismore Kart Club’ is a not-for-profit organisation founded in 1970. As its name suggests, the Opponent is involved with the sport of kart racing and organising kart racing events.

13. Ms Smith declares that before 2013, karting in Australia was held under the overarching Australia Karting Association Inc (‘AKA’), and each State and Territory was affiliated to AKA by a nominated member. Ms Smith declares that AKA was responsible for holding national events, but individual clubs each had their own important events. AKA later transformed into the Applicant, which is a company incorporated by guarantee. The incorporation caused numerous NSW clubs to ‘leave’ the Applicant (I assume this means they ceased their affiliation).

14. Ms Smith declares that the Opponent’s most important annual event is ‘Young Guns’ which is a junior event first held in 1996 and every year since. Ms Smith annexes to her declaration examples of use of ‘Young Guns’ by the Opponent before the Relevant Date, including the word mark ‘Young Guns Titles’ (‘Opponent’s Word Mark’), and variations thereof including Lismore Young Guns, Young Guns (Lismore), Lismore Young Guns Titles, and East Coast Young Guns Titles. The Opponent has also used the Opponent’s Word Mark (or variations thereof) as part of the following composites of word and devices (collectively, ‘Opponent’s Composites’):[4] 

    EIA

    [4] An additional composite was also provided by the Opponent consisting of the words ‘Young Gun Titles Lismore Kart Clubs’ forming a circular border around a device of a kart racer. However, the Opponent’s declaration indicates that this was designed after the Relevant Date, and as such, is not relevant to the opposition.

15. Mr O’Reilly in his declaration opines that the Opponent has only operated a minor local event referred to by various names including the words ‘Young Guns’ or ‘Local Championships’.  Mr O’Reilly also notes that the Opponent has never held a registered trade mark for events they have conducted over the years.  

    Discussion

    Section 58

16. To establish this ground, the Opponent must show use in Australia, by some person other than the Applicant, of a trade mark that is substantially identical to the Trade Mark[5] and which has been used for goods or services that are the ‘same kind of thing’ as the Services.[6] The trade mark relied on by the Opponent must have been used in the course of trade prior to the Relevant Date, or prior to the date of first use of the Trade Mark by the Applicant, whichever is earlier.

    [5] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513 (Gummow J).

    [6] Re Hicks's Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

17. The test for whether two trade marks are substantially identical is narrower than the test for whether two trade marks are deceptively similar. For this reason, a ground of opposition under s 58 relying on an earlier unregistered trade mark can often be significantly weaker than a ground of opposition based on an earlier pending or registered mark under s 44, or an opposition based on reputation in an earlier registered or unregistered trade mark under s 60. Both s 44 and s 60 rely on an Opponent establishing a ‘likelihood of confusion’ which takes into account concepts such as imperfect recollection and the associated perception of the two trade marks by ordinary consumers. Conversely, the test for whether two marks are substantially identical requires that they be compared:

    side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[7]

    [7] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

18. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham’), the court held that a comparison of marks is to be carried out cognisant of the essential elements of the trade marks, noting that essential elements are unlikely to be found in mere descriptive elements[8]. The court went on to find that the following two trade marks were substantially identical, based on the common presence of the words INSIGHT and a similar device:

    [8] [2017] FCAFC 83, [51]-[52] (Greenwood, Jagot, and Beach JJ).

19. However, more recently in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (‘PDP’),[9] the Full Bench of the Federal Court determined that the following two trade marks were not substantially identical, having regard to the stylised tail appearing on the last letter of the first mark, and the font and block characteristics of the second mark:

    [9] [2021] FCAFC 128, [160]-[162] (Jagot, Nicholas, Burley JJ).

20. Turning first to the Opponent’s Word Mark, the Trade Mark shares some similarities with this mark, and the other variations used by the Opponent. The word ‘Young Gun/s’ is a prominent identifying feature of each mark. However, when comparing the Trade Mark to the Opponent’s Word Mark, the additional acronym ‘NSW’ and the highly distinctive device element of the Trade Mark together create a significant visual point of difference. The differences between the respective marks mean that the total impression that emerges from a side-by-side comparison is not one of resemblance. As such, I do not consider that the Trade Mark is substantially identical with the Opponent’s Word Mark.

21. Turning next to the Opponent’s Composites, I first note that it is arguable whether some of these designs are true composite marks (i.e. words and devices combined and used as a single mark), or whether they are word marks used in close proximity to graphic elements. Further, none of the Opponent’s Composites were specifically referred to in the SGP. As such, I consider it is unlikely they could be relied on by the Opponent under s 58. However, for the sake of completeness, I will address the issue of substantial identity between the Trade Mark and the Opponent’s Composites. The Opponent’s Composites that are closest to the Trade Mark are reproduced below, and compared to the Trade Mark:

    v

22. The Trade Mark and the above marks of the Opponent share the term Young Gun/s and a stylised device of a kart racer. These elements create some visual, aural, and conceptual similarities. However, the existence of similarity is not enough to conclude that the respective trade marks are substantially identical. The presence of the words ‘LISMORE’ and ‘NSW’, combined with the visual differences in the trade marks overall, mean that the total impression that emerges from a side-by-side comparison is not one of resemblance. As such, I would not be satisfied that the Trade Mark is substantially identical to either of the Opponent’s Composites pictured above, or any of the other of the Opponent’s Composites (which differ even more noticeably from the Trade Mark), even if the Opponent’s Composites had been specifically relied on in the SGP.

23. As the Opponent has not established use of a trade mark prior to the Relevant Date that is substantially identical with the Trade Mark, the ground under s 58 is not established.

    Decision and costs

24. The Opponent has failed to establish the ground of opposition it nominated in the SGP.  The Trade Mark may proceed to registration not less than one month from the date of this decision. 

25. If the Registrar is served with a notice of appeal, 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.

26. The Applicant in the notice of intention to defend requested an award of costs. Costs generally follow the event and I see no reason to depart from that rule. I award costs against the Opponent in accordance with Schedule 8 of the Regulations.

    Blake Knowles

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    4 March 2022