Opposition by The Hospital Research Foundation Incorporated to registration of trade mark application number 2032950 (class 28, 41) - CHRISTMAS HOME LOTTERY (Figurative) - in the name of St John Ambulance Australia...
[2022] ATMO 23
•15 February 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Hospital Research Foundation Incorporated to registration of trade mark application number 2032950 (class 28, 41) - CHRISTMAS HOME LOTTERY (Figurative) - in the name of St John Ambulance Australia South Australia Inc.
Delegate: Timothy Brown Representation: Opponent: Paul Bullock of counsel; Von Muenster Solicitors & Attorneys Pty Limited
Applicant: Hamish Bevan of counsel; Cowell Clarke Commercial LawyersDecision: 2022 ATMO 23
Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 41 and 43 – no grounds established – Trade Mark to proceed to registration.Background
This is an opposition brought by The Hospital Research Foundation Incorporated (‘Opponent’) to the registration of the following trade mark:
Trade Mark Number: 2032950
Trade Mark: (‘Trade Mark’)
Owner:St John Ambulance Australia South Australia Inc (‘Applicant’)
Priority Date: 11 September 2019
Specification: Class 28: lottery tickets
Class 44: Operating lotteries; prize draws (lotteries); conducting lotteries; lottery services
(‘Applicant’s Goods and Services’)
The Trade Mark was advertised for acceptance in the Australian Official Journal of Trade Marks on 12 February 2020.
A Notice of Intention to Oppose was filed by the Opponent on 18 February 2020, followed by a Statement of Grounds and Particulars (‘SGP’) on 18 March 2020. The Applicant filed a Notice of Intention to Defend on 16 June 2020.
On 22 September 2020 the Opponent filed Evidence in Support. The Applicant filed Evidence in Answer on 18 December 2020. Evidence in Reply was then filed by the Opponent on 11 February 2021.
Both parties requested to be heard. The matter was heard before me, a delegate of the Registrar of Trade Marks on 16 November 2021. The Opponent was represented by Paul Bullock of counsel, instructed by Ethan Graham of Von Muenster Solicitors and Attorneys. The Applicant was represented by Hamish Bevan of counsel with instruction from Andrew Bullock of Cowell Clarke.
Evidence
Opponent
The Opponent’s evidence consists of the following declarations:
Evidence in Support
·Declaration made by Paul Flynn on 22 September 2020 (‘Flynn Declaration’) and Exhibits A to K.
Evidence in Reply
·Declaration made by Paul Flynn on 9 February 2021 (‘Second Flynn Declaration’).
Mr Flynn, Group Chief Executive of the Opponent, explains that the Opponent is a research foundation that works with hospitals, research organisations and health industry partners to fund areas of medical research and patient case activities.
The Opponent is the owner of the following trade mark:
Trade Mark Number: 1714687
Trade Mark: (‘Opponent’s Trade Mark’)
Filing Date: 14 August 2015
Specification: Class 41: Conducting lotteries; Lottery services; Operating lotteries; Prize draws (Lotteries)
Mr Flynn explains that the Opponent has run the ‘Hospital Research Home Lottery’ ('Opponent’s Lottery’) since 2004. The Opponent’s Lottery was initially known as ‘The Queen Elizabeth Hospital Research Foundation Home Lottery’.
Mr Flynn declares that since 2004 the Opponent has built a valuable reputation around its ‘Home Lottery Brand’, which is now recognised as a major fundraising venture. The Opponent’s Lottery has been run on 32 separate occasions since 2004, during which it has sold 2,656,041 tickets and raised over $100 million.
The Opponent’s Lottery has been advertised across multiple publication platforms, including Facebook, Instagram, The Advertiser newspaper, various television marketing campaigns, and direct email.
The Opponent operates a website at < (‘Opponent’s Website’). The Flynn Declaration exhibits website analytics for the period of 28 August 2019 to 19 September 2019 showing traffic volume from the Opponent’s Website in comparison to competing lotteries run during the same period.
The Flynn Declaration exhibits market research conducted by the agency Branded Culture to demonstrate the brand identification and market share of the Opponent and the Opponent’s Trade Mark within the charity market.
Mr Flynn explains that while both parties have charitable goals, they are direct competitors who operate very similar businesses within the same market. The Opponent’s concerns regarding potential consumer confusion between the Opponent and the Applicant were communicated to the Applicant in a letter dated 17 September 2019.
Applicant
The Applicant’s evidence consists of a declaration made by Steven Robert Yeo (‘Yeo Declaration’) and Annexures SY-1 to SY-4.
Mr Yeo explains that the Applicant is a charity operating in South Australia. The Applicant performs non-emergency ambulance services, first aid training, education, and social inclusion programs. The Applicant began operating its ambulance services in South Australia in 1952.
Mr Yeo declares that because of the Applicant’s long history and community involvement in South Australia, it is well known and one of the leading charitable organisations in South Australia.
Since late 2019 the Applicant has run the ‘St John Christmas Home Lottery’ (‘Applicant’s Lottery’) to raise funds for its charitable operations. The Applicant’s Lottery offers ticket holders the opportunity to win various prizes, including a home. In 2019, the Applicant’s Lottery sold in excess of 106, 000 tickets.
The Applicant commissioned the design of the Trade Mark in or around July 2019.
The Applicant has promoted the Trade Mark via the website < the Applicant’s own website, <stjohnsa.com.au>, television, radio, newspapers and various social media platforms, including Instagram and Facebook.
Grounds of Opposition, Onus and Relevant Date
The nominated grounds of opposition are sections 41 and 43 of the Trade Marks Act 1995 (Cth) (‘Act’).
The Opponent bears the onus of establishing one or more of the grounds of opposition.[1] The required standard of proof is on the balance of probabilities.[2] The date at which the rights of the parties will be determined is 11 September 2019, being both the filing date and priority date of the Trade Mark.
Discussion and Reasons
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).
[2] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Section 41
Section 41 of the Act relevantly provides:
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Whether the Trade Mark is capable of distinguishing the Applicant’s Goods and Services requires consideration of the extent to which the Trade Mark is inherently adapted to distinguish those goods and services from those of other traders.
The Opponent submits that the Trade Mark is incapable of distinguishing the Applicant’s Goods and Services from those of other traders for the following reasons:
·The Trade Mark is devoid of any reference to the origin of the Applicant’s Goods and Services, and is missing information that would distinguish the Applicant’s Goods and Services from those of other traders.
·There is considerable likelihood of other traders wishing to use the words ‘Christmas Home Lottery’ to describe a lottery conducted around Christmas, the main prize of which is a home.
·The word portions of the Trade Mark are purely descriptive of home lottery services, and figurative elements of the trade mark amount to little more than graphical flourishes.
·The use and reputation of the Opponent’s Trade Mark and its similarity to the Trade Mark would render the Trade Mark incapable of serving as a badge of origin.
The test for assessing whether a trade mark is ‘inherently adapted to distinguish’ was framed by Kitto J in Clark Equipment Co v Registrar of Trade Marks:
[t]he question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[3]
[3] (1964) 111 CLR 511, 514.
In Cantarella Bros Pty Limited v Modena Trading Pty Limited the High Court emphasised that ‘consideration of the “ordinary signification” of any word or words (English or Foreign) which constitute a trade mark is crucial’[4] and that ‘[o]nce the “ordinary signification” of a word, English or foreign, is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods’[5].
[4] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).
[5] Ibid.
The Applicant submits that the Opponent’s analysis of the Trade Mark is an erroneous departure from the established principles of section 41. In particular, that by focusing on the words CHRISTMAS HOME LOTTERY, the Opponent has failed to give due consideration to the impression formed by the interrelationship of the Trade Mark’s various features.
I accept that the words CHRISTMAS HOME LOTTERY describe a lottery run at or around the Christmas period, for which a home is the prize. However, the Trade Mark is a composite of a number of elements, and the descriptiveness of its word elements alone does not determine whether the Trade Mark is inherently adapted to distinguish the Applicant’s Goods and Services from those of other traders. It is the total combination of elements of the trade mark that must be considered, not the constituent parts.[6] In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) Dodds-Streeton J stated:
It is established that a combination mark may be capable of distinguishing by the overall impression it creates, even if the individual elements in isolation lack any such capacity, because, for example, they are commonplace in a trade, or, by parity of reasoning, merely or highly descriptive.[7]
[6] Diamond T Motor Car Co’s Application (1921) 38 RPC 373, 380 (Lawrence J).
[7] [2012] FCA 81, [61].
The Opponent submits that the likelihood of the Applicant’s competitors wishing to use the words CHRISTMAS HOME LOTTERY, and the risk of those competitors would face in potentially infringing the Trade Mark should be considered.
Section 41 of the Act is concerned with the intrinsic qualities of the trade mark itself, separate from the effects of registration.[8] Justice Kitto’s statement in Clark Equipment, ‘- will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it’[9], is not authority for the relevance of potential infringement to the question of whether a trade mark is inherently adapted to distinguish a traders goods or services from those of other traders. It is the desire of a trader to fairly use the same sign,[10] or one so nearly resembling it,[11]in connection with their own goods or services that is relevant. In Burger King Corp v Registrar of Trade Marks Gibbs J explained that the reference to ‘likelihood’ by Kitto J in Clark Equipment was a reference to the possibility that another trader might, without any improper motive, want to use the trade mark in relation to their own goods and services.[12]This is not the desire to use any trade mark, but of a sign that forms part of the common heritage.[13]
[8] Apple Inc v Registrar of Trade Marks [2014] FCA 1304, [11] (Yates J).
[9] Clark Equipment (n 3) (emphasis added).
[10] Ibid 514.
[11] Du Cros [1913] AC 624, 635 (Lord Parker).
[12] [1973] HCA 15, [8]-[9]; see also: Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110, [67] (Mansfield, Jacobson and Gilmour JJ).
[13] Clark Equipment (n 3).
The Trade Mark is a composite of three features: the words CHRISTMAS HOME LOTTERY, a rectangle shaped device, and a coiled ribbon device. The ribbon device is visually conspicuous, due to both its prominent size relative to the other elements of the Trade Mark and the gradient colour pattern of the device. Although the words of the Trade Mark are descriptive of the Applicant’s Goods and Services, the total combination and arrangement of elements is not something other traders would honestly desire to use in relation to their own goods or services. That the Opponent, or any other traders, also use a similar arrangement of elements in their own trade mark does not indicate that the arrangement of these elements possess an ordinary signification, it merely suggests that such features may be desirable subject matter for use in a trade mark.
The Opponent contends that Trade Mark is devoid of any reference to the origin of the Applicant’s Goods and Services. This contention is based on the absence of the words ‘St John’ from the Trade Mark and the Applicant’s use of a separate trade mark featuring the words ‘St John’. I note that the Applicant has applied for another trade mark featuring St John, which is reproduced below:
Trade Mark Number: 2108226
Trade Mark: (‘St John Trade Mark’)
The Applicant submits that it is not necessary for a trade mark to expressly identify the origin or source of the trader’s goods or services. It is sufficient if a trade mark acts as a badge of origin in the sense that it indicates a connection in the course of trade between the goods and services and the person who applies the trade mark.
I agree with the Applicant’s submission. Whether the additional elements present in the St John Trade Mark are better served to distinguish the Applicant’s goods and services, is of no relevance as to whether the Trade Mark itself is inherently adapted to distinguish. It is not unusual for a trader to own multiple trade marks. It is not, as the Opponent submits, a tacit acknowledgement that the Trade Mark is incapable of distinguishing the Applicant’s Goods or Services. The absence of ‘St John’ or any other words that directly refer to the Applicant, does not mean the Trade Mark, in its own right, is incapable of functioning as a badge of origin. The extent to which the Trade Mark is inherently adapted to distinguish the Applicant’s Goods and Services is something that must be determined on its own merits, not by comparison with other trade marks.
Lastly, the Opponent submits that if the Registrar is of the view that the Trade Mark may be capable of distinguishing the Applicant’s Goods or Services, the Registrar must consider:
· The extent to which the trade mark is inherently adapted to distinguish;
· The use, or intended use, of the trade mark by the applicant; and
· Any other circumstances.
Section 41(1) of the Act requires the Registrar to reject a trade mark application where the trade mark is ‘not capable of distinguishing its designated goods or services from the goods or services of other persons’. This is determined by sections 41(3) and 41(4).[14] The factors referenced by the Opponent are those listed under section 41(4)(b). Those factors only come into consideration if I conclude that the trade mark is, to some, extent, but not sufficiently adapted to distinguish its designated goods or services from the goods or services of other persons. In consideration of all the above, I am satisfied that the Trade Mark is inherently adapted to distinguish the Applicant’s Goods and Services from those of other traders. Accordingly, the ground of opposition under section 41 of the Act has not been established.
[14] Trade Marks Act 1995 (Cth) s41(2).
Section 43
Section 43 provides:
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
Section 43 requires the Opponent to demonstrate that there is a connotation in the Trade Mark, or a part of it, and that because of the connotation use of the Trade Mark would be likely to deceive or cause confusion.
The Opponent submits that use of the Trade Mark would be likely to deceive or cause confusion for the following reasons:
·Due to the reputation of the Opponent, consumers are likely to believe the Trade Mark is associated with the Opponent’s lottery services rather than the Applicant’s Goods or Services.
·The Trade Mark conveys a misleading connotation about the nature of the Applicant’s products.
‘Connotation’, in the context of section 43, is a secondary meaning implied by the trade mark.[15] The likelihood of deception or confusion must stem from the connotation inherent in the trade mark.[16] If no connotation can be identified then section 43 is not engaged, and the Opponent’s opposition under section 43 will fail.
[15] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J) (‘Pfizer’).
[16] Ibid.
The Opponent submits that it is the dominant provider of charitable home lottery products in the marketplace having established its reputation over nearly a 17 year period. The Opponent contends that in this context and without any additional material that would further distinguish the Trade Mark from the Opponent’s products or services, use of the Trade Mark would be likely to deceive or cause confusion.
The Applicant submits that reputation is of no relevance to section 43. Even if reputation were to be considered, the Applicant contends that the evidence does not show that the phrase ‘home lottery’ is so related to the Opponent as to create a perception that purchasers might infer some form of endorsement by, or relationship, with the Opponent.
On the relevance of reputation to section 43 of the Act, it has been held that ‘reputation is irrelevant’ to the assessment.[17] This is because the connotation must arise from the subject trade mark,[18] not from any comparison with another trade mark.[19] It is section 60 of the Act that is concerned with whether the use of a trade mark would be likely to deceive or cause confusion by reason of the reputation in Australia of another trade mark. As Spender J observed in Winton Shire Council v Lomas:
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.[20]
[17]Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [140] (Greenwood, Katzmann, and Rangiah JJ) (‘Primary Health Care’).
[18] Pfizer (n 16) [53].
[19]Ibid; Primary Health Care (n 18) [140].
[20] [2002] FCA 288, [19].
The authorities do recognise that deception or confusion may arise from perceived sponsorship or endorsement in the name of a well-known institution or celebrity persona. In McCorquodale v Masterson[21], ‘Diana’s Legacy in Roses’ together with a stylised ‘D’ was held to connote the late Princess Diana.[22] This was due to the recognised practice of licensing celebrity names and likenesses, and Princess Diana’s well-known activities in relation to fundraising and charity.[23]
[21] [2004] FCA 1247 (Kenny J).
[22] Ibid [60].
[23] Ibid.
The Opponent’s argument does not depend on a connotation in the Trade Mark but upon the Trade Mark’s similarity with the Opponent’s Trade Mark and the reputation the Opponent has acquired in the lottery market. Accordingly, the Opponent's case would be more appropriately dealt with under section 60 of the Act.
In respect to the Opponent’s second contention, that Trade Mark conveys a misleading connotation about the nature of the Applicant’s products, I note that the SGP also particularised the Opponent’s basis for this ground of opposition as follows:
The use of the Mark is likely to deceive or cause confusion because it appears prima facie to be a lottery only. The Mark lacks the requisite detail that the lottery is for fundraising purposes and is run by the Applicant’s charity.
I am unconvinced that the absence an indication that the Applicant’s services relate to fundraising activities conveys anything misleading about the Applicant’s Goods and Services. As stated above, the connotation must be inherent to the Trade Mark itself. It is a difficult proposition for the Opponent to demonstrate that a connotation arises solely from the absence of material in the Trade Mark. The fact that the Trade Mark does not reference the fundraising nature of the Applicant’s activities does not mean it connotes something inconsistent or otherwise misdescriptive of the goods and services to which it is intended to be applied. The Applicant’s Goods and Services are, in substance, lottery products and lottery services. It is also apparent from the Applicant’s evidence that it is providing those same goods and services. There is no suggestion in the Opponent’s case that the Applicant does not provide those goods and services. The only possible connotation in the Trade Mark is the provision of a lottery, at or around Christmas, with a home as a prize. This connotation is consistent with the Applicant’s Goods and Services. Accordingly, the Trade Mark does not connote something that is likely to deceive or cause confusion.
In consideration of the above reasons, I am not satisfied that the Trade Mark is likely to deceive or cause confusion because of any connotation in the Trade Mark. The ground of opposition under section 43 of the Act is not established.
Decision
Section 55(1) of the Act provides:
Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade mark 2032950 may proceed to registration one month from the date of this decision.
Should the Registrar be served with a notice of appeal before the registration of the Trade Mark, I direct that the registration of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.
Costs
Both parties sought costs. As the Opponent was not successful in the opposition, I award costs against the Opponent under section 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
15 February 2022
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