Opposition by SEA WORLD, INC. to the registration of trade mark applications numbers 535209, 535210, 535211, 609926, 609927, 609928

[1998] ATMO 50

TRADE MARKS ACT 1955

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

Re:Opposition by SEA WORLD, INC. to the registration of trade mark applications numbers 535209, 535210, 535211, 609926, 609927, 609928

609929, 609930, 609931, 609932, 609933, 609934, 609935, 609936,

609937, 609938, 609939, 609940, 609941, 609942, 609943, 609944,

609945, 609946 and 609947 in the name of ANZ EXECUTORS &

TRUSTEE COMPANY LIMITED

Background

As provided for in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

This decision concerns twenty-five applications to register trade marks, lodged by ANZ Executors & Trustee Company Limited (the applicant).  The relevant details of these applications are set out hereunder:

Number   Lodgment Date            Goods or Services    Class

1. 28 May 1990              All goods in this class   25

1. 28 May 1990              Restaurant, café and snack bar             42
     services; providing facilities for
     conventions, exhibitions and functions;

   hotel and accommodation services

2. 28 May 1990              Marine parks, zoological parks,             41
     amusements parks; recreational

   facilities; educational services relating

   to zoology and marine life; services in

   this class ancillary to any of the foregoing

Each of the above applications (first group) sought to register the trade mark shown here:

 

1. 23 August 1993          Goods in this class for personal use          9
     or for souvenir purposes; swimming
     and diving goggles and masks; sunglasses
     and protective body and eye wear in this
     class inclusive of sun visors in this class
     and shades; computer software in this class;
     games in this class; films, tapes and discs
     including pre-recorded video tapes;
     barometers; photographic goods in this
     class; eye glass cases; life preservers;
     calculators; audio and visual goods in this
     class

1. 23 August 1993          Jewellery; horological and   14
     chronometric instruments; ornaments
     and cases in this class; cuff links; medals;
     goods of precious metal in this class

1. 23 August 1993          Paper and cardboard goods in this           16
     class; printed matter inclusive of books
     and magazines; albums, colouring books,
     activity books and showbags in this class;
     calendars, cards, pictures and posters;
     stationery; decalcomanias and stickers in
     this class; stamps in this class; tickets;
     souvenir goods in this class

1. 23 August 1993          Leather and imitation of leather                18
     goods in this class; umbrellas and
     parasols; bags, backpacks, purses, wallets
     and cases in this class; souvenir goods in
     this class

1. 23 August 1993          Goods in this class for personal use            21
     or for souvenir purposes; lunch boxes and
     drink containers; plastic school containers;
     coolers and insulated containers; combs and
     brushes; moulds in this class; figurines and
     statues in this class; toothbrushes; stands in
     this class; drinking and eating implements
     in this class inclusive of mugs; pots and
     containers in this class; corkscrews

1. 23 August 1993          Textile goods in this class; towels;            24
     rugs in this class; bed and table covers
     inclusive of napkins

1. 23 August 1993          Clothing, footwear, headgear                   25

1. 23 August 1993          Games and playthings; toys   28
     including plush animals and plush
     dolls; sporting articles in this class and
     accessories therefor in this class;
     decorations in this class; souvenirs and
     novelties in this class

1. 23 August 1993          Prepared foods in this class; cereal            30
     products; snack foods in this class;
     confectionery including iced confections

1. 23 August 1993          Entertainment services; services                41
     relating to the conduct of amusement or

   theme parks inclusive of live action
   shows and other forms of public
   entertainment conducted in such parks;
   amusements; audio and/or visual
   programmes and/or shows of an
   educational and/or entertaining
   nature; club services in this class; animal
   training and demonstrations thereof;
   arranging and conducting of conferences or
   seminars; instructional services; zoological
   parks and education in relation to
   zoology and animal life generally

2. 23 August 1993          Retail store activity inclusive of the           42

   type conducted within an amusement or
   theme park; restaurant, café, snack bar and
   take away food and drink services; hotel
   and accommodation services; animal
   breeding and care services; photography;
   research services of a nature conducted
   by theme  or amusement parks and
   research services relating to animals,
   mammals and fish; providing facilities
   for conventions, exhibitions and functions

The series of marks of the eleven above applications (second group) is shown below:

 

1. 23 August 1993          Goods in this class for personal                9
     use or for souvenir purposes; swimming
     and diving goggles and masks; sunglasses
     and protective body and eye wear in this
     class inclusive of sun visors in this class

   and shades; computer software in this class;

   games in this class; films, tapes and discs
   including pre-recorded video tapes;
   barometers; photographic goods in this
   class; eye glass cases; life preservers;
   calculators; audio and visual goods in
   this class

2. 23 August 1993          Jewellery; horological and   14
     chronometric instruments; ornaments and
     cases in this class, cuff links, medals;

   goods of precious metal in this class

3. 23 August 1993          Paper and cardboard goods in this              16
     class; printed matter inclusive of books

   and magazines; albums, colouring books,

   activity books and showbags in this

   class; calendars, cards, pictures and

   posters; stationery; decalcomanias

   and stickers in this class; stamps in this

   class; tickets; souvenir goods in this class

4. 23 August 1993          Leather and imitation of leather                 18
     goods in this class; umbrellas and

   parasols; bags, backpacks, purses, wallets

   and cases in this class; souvenir goods in

   this class 

5. 23 August 1993          Goods in this class for personal use            21
     or for souvenir purposes; lunch boxes

   and  drink containers; plastic school

   containers; coolers and insulated

   containers; combs and brushes; moulds

   in this class; figurines and statues

   in this class; toothbrushes; stands in

   this class; drinking and eating

   implements in this class inclusive

   of mugs; pots and containers in this

   class; corkscrews

6. 23 August 1993          Textile goods in this class; towels;            24
     rugs in this class; bed and table covers
     inclusive of napkins

1. 23 August 1993          Clothing, footwear, headgear                  25

1. 23 August 1993          Games and playthings; toys  28
     including plush animals and plush dolls;
     sporting articles in this class and

   accessories therefor in this class;

   decorations in this class; souvenirs

   and novelties in this class

2. 23 August 1993          Prepared foods in this class; cereal            30
     products; snack foods in this class;
     confectionery including iced confections

1. 23 August 1993          Entertainment services; services                41
     relating to the conduct of amusement or
     theme parks inclusive of live action shows
     and other forms of public entertainment

   conducted in such parks; amusements;
   audio and/or visual programmes and/or
   shows of an educational and/or
   entertaining nature; club services in this
   class; animal training and demonstrations
   thereof; arranging and conducting of
   conferences or seminars; instructional
   services; zoological parks and education in
   relation to zoology and animal life generally

2. 23 August 1993          Retail store activity inclusive of the           42
     type conducted within an amusement or
     theme park; restaurant, café, snack bar and
     take away food and drink services; hotel

   and accommodation services; animal

   breeding and care services; photography;

   research services of a nature conducted by

   theme or amusement parks and

   research services relating to  animals,

   mammals and fish; providing

   facilities for conventions, exhibitions

   and functions

The series of marks of those eleven applications (third group) is shown below:

 

Acceptance of the applications was advertised in the Australian Official Journal of Trade Marks as follows: the applications identified above as the "first group" - in the Journal of 19 November 1992 and the applications belonging to the "second" and "third group" - in the Journal of 14 September 1995. 

Sea World, Inc, (the opponent), lodged notices of opposition on all the accepted applications: on 19 May 1993 in respect of the "first group" of applications and on 14 March 1996 on the remaining applications.

In the notices of opposition on each of the applications,  the opponent has stated fifteen virtually identical grounds of opposition.  The opponent's submissions at the hearing focussed mainly on the grounds in relation to paragraph 28(a) that, by reason of extensive use of the opponent's trade marks in the United States of America, those marks have achieved a valuable and substantial reputation both in Australia and elsewhere as indicating the goods and services of the opponent, and that the use of the opposed trade marks would be likely to deceive or cause confusion; that the applicant is not the owner of the copyright subsisting in the dolphin device component in the opposed trade marks and therefore the use of these trade marks by the applicant would be contrary to law and constitute an infringement of the opponent's copyright in the opponent's trade mark which consists of the dolphin device, thus prohibiting the marks from registration under the provisions of paragraph 28(b) of the Act. 

Evidence
In respect of applications numbers 535209, 535210 and 535211, evidence in support comprises -
Statutory declarations by:

*Carmen Champion, dated 15 September 1994, and exhibit A (Champion's first declaration)

*     Melvin L. Bilbo, dated 17 February 1994, with exhibits A to F
*     Roger L Zissu.

Evidence in support in respect of applications numbers 609926 to 609947 -

*Statutory declaration by Carmen Champion, dated 16 December 1996, with exhibits CC1 to CC4 (Champion's second declaration).

Subsequently lodged evidence is in respect of all the applications involved in the present proceedings.

Evidence in answer -

Statutory declarations by:

*Andros Chrysiliou, dated 28 April 1994, with exhibits AC1 to AC5 (Chrysiliou's first declaration)

*Andros Chrysiliou, dated 23 November 1994, with exhibits AC6 to AC9 (Chrysiliou's second declaration)

*Graham Edward McHugh, dated 23 November 1994 (McHugh's first declaration)

*Graham Edward McHugh, dated 23 November 1994 (McHugh's second declaration)

*Francis Thomas Moore.

Evidence in reply -

*Statutory declaration by Carmen Champion, dated 19 November 1996 (Champion's third declaration).

Opponent's further evidence -

*Statutory declaration by Carmen Champion, dated 13 March 1997, with exhibit A (Champion's fourth declaration).

Applicant's further evidence in reply -

Statutory declarations by:

*John Stuart Menzies, dated 10 February 1998

*Graham Edward McHugh, dated 9 February 1998 (McHugh's third declaration).

Opponent's further evidence:

*Statutory declaration by Daniel B. Brown, dated 13 July 1998, with exhibit A.

The opposition matter came before me as the Registrar's delegate in Sydney.  Mr Richard Cobden of Counsel, instructed by Carolyn Oddie of Corrs Chambers Westgarth, lawyers of Sydney, appeared on behalf of the opponent.  The applicant was represented by Mr David Yates, instructed by Mr Andros Chrysiliou of Chrysiliou Moore Martin, patent and trade mark attorneys of Sydney.

Submissions and discussion in relation to the opponent's application for special leave to adduce further evidence made at the hearing 

Before commencement of the submissions on the major issues in the present proceedings, Mr Cobden, for the opponent, sought special leave to adduce further evidence pursuant to regulation 47 of the Trade Marks Regulations.  In support of the application of 16 July 1998, which accompanied the opponent's further evidence in the form of a statutory declaration by Mr Brown, and which had been recently served on the applicant, Mr Cobden discussed the circumstances of the case in light of the criteria set out in Australian Food & Beverage Group Pty Ltd v Cadbury Schweppes Pty Ltd 39 IPR 100, submitting that the need for lodging the further evidence had arisen in response to evidence only lodged in February 1998. That evidence had indicated the existence of friendly contact between the applicant and the opponent from which the declarant had concluded some kind of acquiescence to or licensing by the opponent of the applicant's use of the words SEA WORLD and what was termed as a "logo". As that particular issue had been freshly raised at that stage, the opponent had not had an opportunity to appropriately respond earlier in the proceedings. In this regard, Mr Cobden noted the relatively short time between the receipt of the applicant's further evidence and the opponent's evidence in reply. He further stressed the serious nature of the present opposition and the importance of the public interest in cases where issues of deceptively similar marks needed to be resolved. Commenting on the grounds on which the application was based and the time taken for the opponent to prepare its further evidence, Mr Cobden considered the absence on maternity leave and resignation of the person involved in the relevant record searches, which resulted from the applicant's further evidence, to be sufficient justification for granting of the application. For support, he cited Australian Feed Company Pty Ltd v Pitman-Moore Australia Ltd 39 IPR 411 where, notwithstanding the hearing officer's criticism of the applicant's delay in applying for leave to adduce further evidence, the applicant was allowed to adduce its further evidence, whereupon the opponent had an opportunity to make written submissions on it.

The application to adduce the further evidence was objected to by the applicant, Mr Yates first submitting that the applicant did not propose to argue that it had licence to use the opponent's marks.  Secondly, he pointed out that the question of exchange of information, personnel and other matters between the Sea World park in Australia and the parks in the United States of America had been addressed in Mr McHugh's declaration of 23 November 1994, therefore, insofar as there was any issue between the parties as a matter of fact, that issue had been alive well in excess of two and a half years.  He said that it was not in the interests of expeditious dealing with hearings in the Office that parties be allowed at the eleventh hour to seek to introduce evidentiary material unless there were special circumstances.  He also directed my attention to a letter to the Registrar of 28 May 1997, where the applicant's attorneys had set out an agreement the parties had reached as to the state of the evidence.  That letter had indicated a position reached between the parties that, in the event of the opponent's application for further evidence being successful, the subsequent filing of the evidence and any evidence that the applicant might be allowed to file would complete the evidence process.  Moreover, the applicant had a legitimate interest in having its applications determined as soon as possible, particularly taking into account the period of time the present applications have been afoot, Mr Yates said. 

After a short adjournment, I informed the parties that I had decided to grant the requested special leave to adduce further evidence.  I allowed the applicant one month from the date of the hearing to serve on the opponent any additional evidence in reply to the further evidence.  Should the applicant do so, I indicated that a telephone hearing could be reconvened on the matter, but that the hearing of opposition concerning the substantive issues should proceed.  Immediately after the hearing, the applicant advised in writing it did not intend to rely on any additional evidence. 

In deciding to grant the special leave to adduce further evidence, I first considered the application in light of the tests set out by Lord Denning in Ladd v Marshall (1954) 1 WLR 1489: that it should be shown that, with reasonable diligence, the evidence could not have been obtained earlier and that the evidence was likely to have an important effect on the outcome; and that the evidence should be credible.

The opponent has based its application on the need to reply to the evidence of Mr McHugh's third declaration.  This declaration, supported by copies of correspondence, sets out more detailed information on the nature of exchanges between the applicant and the opponent than was made available in Mr McHugh's second declaration, being part of the evidence in answer.  In maintaining that the significance of the relationship had been misunderstood, that in fact no licence existed between the parties, the opponent sought to rebut Mr McHugh's claims, the full extent of which the opponent had become aware in February 1998.  While the time taken in obtaining the opponent's required evidence appears to be excessively long and has been responsible for prolonging the opposition proceedings, thus inconveniencing the applicant, I have taken into account the explanation that the evidence necessitated an extensive search of the opponent's records, the delay having been caused by circumstances surrounding the officer in charge of the search. 

In Studio SrL v Buying Systems (Aust) Pty Ltd (1992) AIPC 90-858 and Horphag Research Ltd v Schwitters 40 IPR 613, the hearing officer found that the rules outlined in Ladd v Marshall, supra, were not strictly appropriate to an administrative tribunal because in an appeal from the Registrar, being a hearing de novo, the court would not exclude further evidence or additional grounds, hence the admission of further evidence would be preferable.  The hearing officer also referred to the finding of Mr Justice Richardson in Pioneeer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd (1979) RPC 410, namely, the desirability of having all the material made available in matters concerning an alleged deception or confusion to allow the issues to be properly investigated.

Submissions on the substantive issues
In opening his submissions, Mr Cobden said the opponent proposed to focus on the section 28 ground of opposition, in particular, that the marks would be likely to cause deception or confusion, given the international reputation of the opponent's trade marks.  He would argue that use of the applicant's marks was contrary to law in that those marks infringed the copyright of the opponent's marks.  Mr Cobden then turned to Mr Bilbo's declaration, pointing out some features which were said to be important to the opponent's case, i.e. it had demonstrated that through attendances and national television coverage, by the middle of 1971 the theme parks in San Diego, California and Aurora, Ohio, under the name "Sea World", had achieved a significant reputation in the United States of America.  He noted that in late 1971, or early 1972, the managing director of Ski-Land of Australia Pty Ltd, Mr Keith Williams, had visited the opponent's Sea World theme park where Mr Williams had collected literature about the park and discussed the operation of a similar theme park at the Gold Coast, Australia.  From this a conclusion could be drawn, Mr Cobden said, that before change of the applicant's name, Mr Williams had seen the name "Sea World" in San Diego used by the opponent's predecessor.  According to Mr Bilbo's evidence, "the logo", which forms part of the marks of applications numbers 535209, 535210 and 535211, was designed for the opponent's predecessor and the ownership of "the logo" was intended to be with the predecessor, as supported by Mr Bilbo's annexed copy of an executed Deed of Assignment of the copyright subsisting in "the logo" worldwide.  Further, Mr Cobden observed, Mr Bilbo's evidence showed that the opponent's predecessor had commenced use of "the logo" in 1969, and that there was no licence to the applicant to use "the logo" in Australia in respect of theme parks. 

In relation to the principles applicable to opposition in terms of paragraph 28(a), Mr Cobden turned to the summary in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd 38 IPR 495, concluding that the opponent had met the necessary steps outlined in that decision by Heerey J.

Mr Cobden drew my attention to the annexure of Ms Champion's first declaration, detailing the number of Australian residents who had visited the United States of America during the years 1969 to 1992.  From its extraordinarily high attendance figures, advertising and television exposure, the opponent had established a very significant reputation in the United States, Mr Cobden said, and it should be inferred that the reputation had spilled over in the way described in ConAgra Inc v McCain Foods (Aust) Pty Ltd 23 IPR 193. That contention, according to Mr Cobden, was buttressed not only by the number of Australians who travel to the United States generally, but also by the number of Australians who have attended the San Diego theme park. By way of an example, Mr Cobden referred to statistics in the opponent's evidence concerning Australian visitors to the United States in the years 1986 and 1988. That evidence, Mr Cobden argued, easily suggested how the opponent's reputation would be known to a very significant number of Australian consumers, leading them to an inference of a connection between the Sea World theme park in Australia and the opponent's business.

Relying on the full Federal Court decision in Campomar Sociedad, Limitada & Anor v Nike International Ltd v Anor, unreported, [1998] 776 FCA (7 July 1998), Mr Cobden submitted that, in order to succeed on the section 28 ground, it was no longer necessary for the opponent to demonstrate blameworthy conduct on the part of the applicant that would lead to deception or confusion.  Explaining his reasons, Mr Cobden said that in the judgment of Burchett J his Honour had turned to the argument on blameworthy conduct in opposition - as opposed to expungement proceedings of an already registered mark - pronouncing that blameworthy conduct did not apply in relation to new applications, because no proprietary right is to be protected which had been an implication in the judgment of High Court in New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd 18 IPR 385. Mr Cobden noted that Lehane J, while disagreeing with Buchett J on a number of trade mark issues, had made a point that he had read and agreed with what Burchett J had written about the dicta in Canon Kabushiki Kaisha v Brook and Another (t/a Cannon Watch Company) 36 IPR 88. Mr Cobden said that this should be binding on the Registrar, because their Honours were sorting out the complexities of applying the test which had emerged from a number of different - some conflicting, some dissenting and some overlapping - decisions of the High Court of Australia and had tried to find rules for the application of blameworthy conduct principle for future cases.

Concerning the question of copyright, with reference to Re Oehlschlager 27 IPR 663 and "Karo Step" Trade Mark [1977] RPC 255, Mr Cobden said these cases indicated that the Registrar will not deal with the legal questions of copyright infringement. In "Oscar" Trade Mark [1979] RPC 173, however, Mr Myall of the Trade Marks Registry in Great Britain, had been perfectly content to receive and determine a copyright issue, even though he had stated that such matters were not for the Registrar to decide. Mr Cobden submitted that, if the copyright issue went to the heart of registrability of a trade mark, then the Registrar should determine the law. In the present case, copyright subsisted in the "Sea World logo", which had been created for the opponent in 1966 or 1967 and had remained unpublished at that point, the actual use of it having commenced in June 1969, which would be the earliest date of publication for copyright purposes. Since that publication took place after 1 May 1969, the Copyright Act 1968 and Copyright (International Protection) Regulations governed subsistence of Australian copyright in "the logo", he said. He referred to section 184 of the Copyright Act which allows the regulations to extend to protection of works made elsewhere, noting that the United States was included in the schedules of the regulations. He noted that the initial version of the copyright regulations had indicated that the United States had not been a Berne Convention country implying different protection in some respects. He said that, were it to be found that the opponent's "logo" was published prior to 1 May 1969, then there may be an argument that copyright in it did not subsist, but whatever the situation was at that date, works of the United States had full Berne Convention protection. This was because, after that date, the United States was moved from Part II to Part I of Schedule 1 of the regulations. At the same time, sub-regulation 9(2) was amended to deal with the possible problem that might have arisen in case of works which did not have copyright by reason of the United States being in a different part of Schedule 1.

Commenting on the question of infringement, Mr Cobden noted that the applications for the marks containing "the logo" were lodged on 28 May 1990, which was after the United States was listed in a different part of the regulations.  Being an exact copy of the opponent's "logo", any use of it would infringe the opponent's copyright and, although it was clear that the other applicant's marks were not very similar to the opponent's "logo", they were sufficiently close to infringe the copyright, he said.  It was plain that in preparing its new "logo" the applicant referred back to the "logo" it had copied directly from the opponent.  Similar issues to the present, Mr Cobden submitted, had arisen in some house plan cases where some changes are made, for example, in Anchor, Mortlock, Murray & Woolley Pty Ltd and Others v Hooker Homes Pty Ltd [1971] 2 NSWLR 278, drawing the conclusion that, where a chain of copying was evident, as it was here, then there was sufficient resemblance between the two to amount to an infringement.

Before specifically turning to the applicant's evidence, in his submissions in rebuttal, Mr Yates said that the Sea World theme park at the Gold Coast was something of an icon in relation to Australian tourism, and had enjoyed that status for a great many years.  The applicant's declarations, particularly those of Mr McHugh, clearly established that, at the two relevant dates of these applications, the park had an overwhelming reputation in this country.  To the extent that it could be shown that any other theme park existed under a similar name in Australia, such a reputation would be totally overshadowed by the reputation in the words "Sea World" theme park on the Gold Coast and that would be decisive of the issue concerning deception or confusion, Mr Yates said.  In discussing further the applicant's evidence, Mr Yates directed particular attention to the existence of three registered trade marks by the applicant: numbers 281786, 281787 and 281788, mentioned in Mr McHugh's second declaration, which had been used in association with the goods and services provided at the Sea World park for more than 20 years.  It was also evident from that declaration that the applicant had an extremely substantial and successful commercial enterprise not only at the present time, but that it had existed for great many years.  Mr Yates also stressed the declarations made by Messrs McHugh and Menzies that since about early 1970's, the opponent's predecessors had been well aware of the fact that the theme park at the Gold Coast had been trading extensively and had been using its trade marks.  The significance of that evidence, Mr Yates said, was twofold: the claims as to the copyright infringement as a factual matter and that use of the name Sea World would be deceptive or confusion both rang very hollow.  If there had been infringement of copyright it was inconceivable that proceedings to restrain that infringement had not taken place well before these applications were made.  The fact that no proceedings had been taken entitled one to draw the inference that there was no valid basis for bringing such proceedings now.  Furthermore, if the opponent had a reputation amongst Australians as submitted by it, then, once again, it was inconceivable that proceedings had not been brought relying on common law rights to restrain such deception as had allegedly taken place.  

In commenting on the opponent's evidence, Mr Yates considered Mr Bilbo's declaration, in particular, to suffer from serious deficiencies.  Mr Bilbo, he said, states certain matters as facts, although he has held the position of president of the opponent corporation only since March 1993.  He said that Mr Bilbo's declaration had been drafted on the assumption that, for some reason, the opponent had a monopoly in use of the SEA WORLD trade mark, and that anyone coming into contact with it must regard it as having some connection with the opponent.  He also directed my attention to Mr Bilbo's statement in relation to the period of creation of the opponent's "logo" and its first use, pointing out that it contradicted the evidence annexed to Mr Chrysiliou's declarations, where first use is asserted to be 21 March 1964, not in 1969.  This inconsistency, Mr Yates said, casts doubt on the reliability of what Mr Bilbo is saying about the copyright matters.  There was also the matter in Mr Bilbo's annexure B which suggested that the company, which claims to have produced "the logo", had absolutely no idea how the logo came into being.  It should also be noted, Mr Yates said that, where "the logo" is displayed in Mr Bilbo's exhibits, it does not bear a copyright notice.  Further, Mr Bilbo's assumption that the applicant had not been authorized to use "the logo" in Australia was not correct, as no permission was required from the opponent.  Commenting on Mr Bilbo's declaration, which forms an annexure of Ms Champion's fourth declaration, Mr Yates said that the reasons given for the inactivity on the part of the opponent in protecting the rights was mere speculation. 

In responding to the opponent's submissions on copyright, Mr Yates said that the alleged infringement would involve the Registrar in determining, as a question of law, the subsistence, ownership and infringement of copyright - matters which the Registrar was not empowered to decide.  In support, he cited Triple Three Leisure Ltd v Turkovic (1993) 27 IPR 430 at 436; Koh Electronics Trading v Libra Electronics Pty Ltd (1994) 29 IPR 562 at 568 and Nicholas Vida Pty Ltd v American High Inc (1989) 16 IPR 425 at 428. The same principle had been applied in Oehlschlager, supra.  Mr Yates submitted that, in any event, the opponent's evidence did not establish subsistence in any relevant work, that it was the owner of the work, or that there had been reproduction of the copyright since.  The "after event" Deed of Assignment annexed to Mr Bilbo's declaration recited facts which in themselves would not establish subsistence and ownership of copyright, he said  If first use of "the logo" occurred in 1964, as stated in three documents produced by Mr Chrysiliou, then copyright did not subsist in the work and the opponent company could not be the owner.  Responding to Mr Cobden's argument that the copyright would subsist even if "the logo" had been used earlier than 1969 because in 1989 the United States was scheduled as a Convention country, Mr Yates pointed to sub-regulation 11(2), submitting that the applicant's rights were not diminished in any way.  Mr Yates also argued that the author of an artistic work cannot be a company but a natural person and there was no evidence as to who the author of the opponent's "logo" was.  Besides, the Deed of Assignment did not establish a chain in title or copyright in "the logo", he said.  He reminded me that, whilst the Registrar is not bound by the rules of evidence, he can proceed only on any material which is logically probative.

On the matter of deception or confusion, Mr Yates said that the opponent had not discharged its burden of establishing that use of the marks under consideration would be likely to deceive or cause confusion, as it is required to do: Karu Pty Ltd v Jose (1994) 30 IPR 407 at 416-418; Fuddruckers Inc v Sharwood (1989) 15 IPR 188; Flagstaff Investments v Guess? Inc (1989) 16 IPR 311. He submitted that the operation of paragraph 28(a) was limited by paragraph 28(d), notwithstanding the decision in Campomar v Nike, supra, because that decision was not dealing with an application for registration of a mark, hence the question of application of paragraph 28(a) and its application in the context of applications for registration was not an issue. 

Mr Yates also mentioned that, although the ground based on the intention to use the marks was no longer pressed, noting the fact that the Registrar can decide opposition on any ground, the applicant would submit that the opponent had proffered no evidence to support this ground.

In concluding his submissions, Mr Yates sought costs in favour of the opponent.  

Discussion
Section 28 - deception and confusion
Under these provisions of the Act

28. A mark -

(a)       the use of which would be likely to deceive or cause confusion;
      (b)       the use of which would be contrary to law;
      (c)       which comprises or contains scandalous matter; or

(d) which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

The legal principles applicable to matters concerning para (a) of this section,  summarized by Heerey J in Nettlefold v Nettlefold, supra, which, Mr Cobden submitted, had been satisfied by the opponent, are as follows:

(i) The opponent bears the initial onus of establishing a reputation in its mark sufficient to found an objection under s 28: Re Arthur Fairest Ltd's Application (1951) 68 RPC 197. (ii) However, once this onus is discharged the burden shifts to the party seeking registration: Eno v Dunn (1890)15 App Cas 252 at 261: Jafferjee v Scarlett at 119.  (iii) The rights of the parties are to be determined as at the date of application for registration … Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594; 1A IPR 465. (iv) The onus is on the party seeking registration to satisfy the court that there is no reasonable possibility of deception or confusion: Southern Cross at CLR 594-5.  (v) In order to defeat the application for registration it is not necessary for the opponent to establish that there is an actual probability of deception which will amount to a passing off.  While a mere possibility of confusion is not enough - for there must be a real, tangible danger of it occurring - it is sufficient that the result of the user of the mark will be that a substantial number of persons will be caused to wonder whether it might not be the case that the two products come from the same source.  It is enough that the ordinary person entertains a reasonable doubt: Southern Cross at CLR 594-5, 608; Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300 at 305. (vi) In considering the issue of deception all the surrounding circumstances must be taken into consideration. The factors to be considered include the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold and the character of the probable purchaser of the goods: Jafferjee v Scarlett at 120.  (vii) A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales: Southern Cross at CLR 495.  There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived: Re Hack's Application (1940) 58 RPC 91 at 103-4. (viii) It is not enough for the party seeking registration to negative the likelihood of confusion in relation to the actual trade carried on by the opponent at the time of the registration and to the manner in which the latter then uses his mark. The applicant must also take into account all legitimate uses which the opponent may reasonably make of his mark within the ambit of his registration: Reckitt & Colman (Aust) Ltd v Boden (1945) 70 CLR 84 at 94; Southern Cross at CLR 608.  (ix) The question whether the use of a mark is likely to deceive or cause confusion is in the end a question of impression and common sense: it is a "jury question" in which the judge is entitled to give effect to his or her own opinion as to the likelihood of deception or confusion: Murray Goulburn Co-op Ltd v New South Wales Dairy Corp (1990) 24 FCR 370 at 377; 16 IPR 289 at 296.

The dates for the purpose of determining rights of the parties in the present case are the two lodgement dates of the applications: 28 May 1990 and 23 August 1993. 

In the absence of use in Australia by the opponent or its predecessor of the word mark SEA WORLD and what is described by the opponent as "the logo", comprising the device between the letters "W" and "R" as depicted in the trade marks numbers 535209, 535210 and 535211 now sought to be registered, namely, a dolphin leaping over the waves in a circle or the letter "O" in the word WORLD, the opponent has relied on their substantial use in the United States of America and the purported spill-over of the reputation of those marks in other parts of the world, particularly in Australia, before the dates of the present applications.  The assumption that a large number of Australians would be aware of the opponent's reputation is based on the figures provided by the Australian Bureau of Statistics of Australian tourists travelling to the United States of America between the years 1969 and 1992 (annexed to Ms Champion's first declaration) and the attendance records of Australians visiting one of the opponent's three Sea World theme parks, as provided in Mr Bilbo's declaration.  

As declared by Mr Bilbo, the president of the opponent corporation, the first theme park bearing the name "Sea World" was opened by the opponent's predecessor in California in 1964, followed by one each in the states of Ohio (in 1970) and Florida (in 1973).  These Sea World parks have attracted approximately 171,750,000 paid attendances.  During January to June 1971, the theme parks had received wide national television coverage, estimated to have been viewed by 50 million people throughout the United States.  It is claimed by Mr Bilbo that, since 1964, the theme parks have been extensively advertised not only in the home country, but also throughout the world.   Even though no detailed figures have been made available as to the turnover and advertising expenditure, Mr Bilbo's given  information is sufficiently convincing of the opponent's Sea World theme park reputation in the United States. 

I find it difficult to give much weight to the progressively increasing figures of the Australian residents departing for the United States, which, according to the statistics, rose from 5,577 in 1969 to 208,764 in 1992, as those records demonstrate little more than a growing interest of Australians in that country and their capacity to travel abroad for holidays.  More relevant information, given by Mr Bilbo, emerges from the number of 162,506 Australian attendances of the opponent's Sea World theme park in California during the period from 1985 to 1993.  This number, compared to a total of 1,555,663 attendances of the park in 1970 alone, however, is far from significant.  Moreover, in the absence of testimony from individual Australians who viewed the park, or from those who would have become aware of the opponent's theme parks through the advertising media, the opponent leaves one to speculate as to whether those persons would, on coming into contact with the applicant's marks, see a connection with the opponent's theme parks, suspecting that the services might be provided by the same body, the opponent.  It is also noted that the opponent has not attempted to provide figures on Australian tourists visiting its other theme parks in Aurora, Ohio and Orlando, Florida.  Given that the applicant's theme park at the Gold Coast has been operating under the name Sea World for over 25 years, and its extensive promotion in Australia through the various forms of marketing material and in the travel industry, as stated in Mr McHugh's third declaration, the Australian visitors may well have carried with them the reputation of the theme park which had been built up by the applicant well before applying for registration of the subject marks.   From the various State and National tourism awards between 1986 and 1992 listed by Mr Moore and, according to Mr McHugh, the over 20 million domestic tourists who have visited the Gold Coast in 10 years, many of whom would have known of the theme park there without having entered it, considerable reputation of the theme park in Australia is unquestionable.  While the reputation acquired through use of the marks by the opponent and its predecessor in reespect of the theme and amusement parks may be very substantial in the United States, evidence is lacking to support the contention that in this country, in the minds of a significant number of Australians, that reputation has been eclipsed by the renown of the Sea World park at the Gold Coast which, as said in Mr McHugh's declarations, has become a major attraction not only for Australians, but also for numerous international guests.  Thus, in failing to establish that the reputation in its marks in Australia is such that use of the applicant's marks would be likely to deceive or cause confusion, contrary to its assertions, the opponent has not made out a case in terms of paragraph 28(a).

In view of the above, it is not necessary to proceed further in relation to the opponent's grounds under section 28.  For the sake of completeness and clarification, however, I make the following comments. 

Relying on the decision Campomar v Nike, supra, Mr Cobden has advocated change of the practice followed by the Registrar in relation to the interpretation of section 28 since the High Court decision in New South Wales Dairy v Murray Goulburn Co-operative, supra, which has been set out in the Trade Marks Office decision Titan Manufacturing Co Pty Ltd v Coyne (1991) 22 IPR 613. In line with this practice, paragraph 28(a) has been read conjunctively with paragraph 28(d), in proceedings before the Registrar, meaning that, should I find that the applicant's marks would be likely to deceive or cause confusion, then it would also be necessary for me to find blameworthy conduct on the part of the applicant which would disentitle the applicant's marks to protection in a court of justice. The Registrar's practice, as noted by Mr Yates, has been endorsed by Tamberlin J in Canon v Brook, supra, and by Heerey J in Nettlefold v Nettlefold Signs, also supra. 

The Campomar v Nike case, supra, did not deal with registration of a trade mark but with expungement of a trade mark from the Register.  Having discussed the issue concerning paragraph 28(a), Burchett J said, at p 14:

My rejection of the respondents' attack on Campomar's registrations as having offended s 28(a) at their dates relieves me of the task of determining whether expunction on that ground would require a finding of blameworthy conduct.  However, I think I should make some comments bearing on a related question.  It was argued that certain dicta in Canon Kabushiki Kaisha v Brook (1996) 69 FCR 401 were wrong in requiring blameworthy conduct to be shown before opposition proceedings could succeed in reliance on s 28(a). In my opinion, this argument is correct, although it does not impugn the actual decision. The majority of the High Court found the roots of the implication which is explained in New South Wales Dairy Corporation, as the judgments show, in the proprietary right of the registered proprietor of the mark; there is no basis for the same implication to be made in favour of a mere applicant for a mark.  Before Canon Kabushiki Kaisha v Brook, the requirement of blameworthy conduct was always stated in relation to expunction applications, and I think it is properly confined to them.

Sackville J did not broach the subject, but Lehane J at p 41 indicates that "I have read, and respectfully agree with, what Burchett J has written about the dicta in Canon", as pointed out by Mr Cobden.

As their Honours were not explicitly required to decide the issue of whether blameworthy conduct on the part of the applicant should or should not be established in opposition proceedings to registration of a trade mark and, whilst the opinions expressed by Burchett and Lehane JJ are respected and will assist in resolving the contentious issue surrounding the application of blameworthy conduct in future proceedings, those pronouncements constitute obiter dicta only, and therefore at this stage will not be considered binding on the Registrar. 

Concerning the matter in suit then, being aware of each others' activities through some personal contacts, exchange of information and correspondence for a long period of time, both the opponent and the applicant have established impressive reputation in the marks independently in their respective countries.  It is also to be noted that the present applicant has held registrations of trade marks in Australia since 1974 as follows: a mark which appears to be identical with the opponent's "logo" and a mark which is identical to the one it desires to register under applications numbers 535209, 535210 and 535211, identified earlier in this decision as the "first group" of applications, as well as the word mark SEA WORLD, all three in respect of "printed matter and stationery".  Having perused the opponent's evidence, I find no improper conduct for which the present applicant could be seen to be responsible, nor any other circumstances which would disentitle the applicant's marks to protection in a court of justice in terms of paragraph 28(d).

The question concerning alleged infringement of the opponent's copyright
It has been submitted by the opponent that the applicant's use of "the logo" or dolphin device, which appears in the "first group" of the applicant's marks, was contrary to law, because it infringes the opponent's copyright of that mark.  While acknowledging that in the past the Registrar has not dealt with legal questions on copyright infringement, Mr Cobden has urged me to make an exception in the present case by relying on "Oscar" Trade Mark, supra.  In that case, applying the judgment of Whitford J in "Karo Step" Trade Mark, supra, the Registrar in Great Britain did observe that, if he were to find that the opponent's copyright had been infringed, then the opposition would succeed in terms of section 11 (equivalent to section 28 of the Trade Marks Act 1955 in Australia).  However, he also stated further, at p 179:

Nevertheless, in any case in which this question of copyright is raised it is necessary, if it is to be determined, to consider whether, on the facts of the case as well as the law, there has been infringement. Such matters are not strictly within the Registrar's province. Of course, it would be a different matter if there had been a ruling by the court on an action taken under the Copyright Act and the injured party, armed with that judgment took appropriate action under the Trade Marks Act to preserve or maintain his rights. There is, so far as I am aware, no action pending in the court concerning mark No. 976,669.

Thus, matters of alleged infringement of copyright are outside the Registrar's jurisdiction even if such matters concern grounds of objection under the provisions of section 28. The Registrar would not be prepared to act without a ruling by the court. There is no reason why, in the present case, the Registrar should be compelled to decide complex legal issues under the Copyright Act which have been raised in the present proceedings, nor does he feel competent do so. Consequently, despite the extensive submissions on the subject by the opponent, the Registrar is not in a position to determine the matter.

Decision
Having regard to the foregoing, I have decided that the opponent has failed on the grounds on which it has relied.  It follows that the opposition in these proceedings is dismissed.  Subject to any appeal from this decision, the subject applications should proceed to registration. 

I award costs to the applicant. 

Vija Zars
Hearing Officer
31 October 1998