Opposition by Viacom International Inc to registration of trade mark application number 1998719 (class 41) - BEHIND THE SONG - in the name of Helium Pictures Pty Ltd

[2021] ATMO 98

TRADE MARKS ACT 1995

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

Re:Opposition by Viacom International Inc to registration of trade mark application number 1998719 (class 41) - BEHIND THE SONG - in the name of Helium Pictures Pty Ltd

Delegate:

Timothy Brown

Representation:

Opponent: Anne Makrigiorgos of Griffith Hack

Applicant: Brian Goldberg of Trademark Ventures International

Decision:

2021 ATMO 98

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 44 and 60 – section 44 established – trade mark application refused registration.

Background

1. The is an opposition under section 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark:

   Trade Mark Number: 1998719

Trade Mark: BEHIND THE SONG (‘Trade Mark’)

Applicant: Helium Pictures Pty Ltd (‘Applicant’)

Priority Date: 27 March 2019

Specification:

Class 41: Provision of entertainment services including the production and distribution of a web series telling the stories behind the most famous songs in music (both past and present)

1. The Trade Mark was advertised for acceptance in the Official Journal of Trade Marks on 27 September 2019.

2. A Notice of Intention to Oppose was filed by Viacom International Inc (‘Opponent’) on 25 October 2019, followed by a Statement of Grounds and Particulars (‘SGP’) on 13 November 2019.

3. The Applicant filed a Notice of Intention to Defend on 6 January 2020.

4. Evidence in Support was filed by the Opponent on 6 April 2020. Evidence in Answer was then filed by the Applicant on 19 June 2020. No evidence in Reply was filed by the Opponent.

5. Following the completion of the evidence stages, both parties were invited to request a hearing. On 20 January 2021, the Opponent requested a hearing via written submissions. Written submissions were then filed by the Opponent on 21 May 2021 and by the Applicant on 27 May 2021.

6. As a Delegate of the Registrar of Trade Marks, I will now determine this matter with reference to the material filed during these proceedings.

Evidence

The Opponent

1. The Opponent’s evidence consists of a declaration made by Anne Makrigiorgos on 6 April 2020 (‘Makrigiorgos Declaration’) with Annexures 1 to 4.

2. The Makrigiorgos Declaration explains that BEHIND THE MUSIC is the name of a documentary series produced by the Opponent focusing on influential icons in the music industry. BEHIND THE MUSIC is one of a series of documentaries that the Opponent has produced using the words ‘Behind the’ in the title. Other titles in the series include BEHIND THE INK, BEHIND THE MOVIE and BEHIND THE MUSIC REMASTERED. The documentary series first aired in 1997 and ran for 244 episodes. In Australia, the series aired on the channel VH1, and is available online at < and YouTube.

3. The Opponent is the owner of the following registered trade mark in Australia:

   Trade Mark Number: 771517

   Trade Mark: BEHIND THE MUSIC (‘Opponent’s Trade Mark’)

   Priority Date: 27 August 1998

   Specification:

   Class 41: Education, teaching and entertainment services, namely, preparation of radio and television programs; production of films and live entertainment features; production of animated motion pictures and television features; motion picture entertainment, television entertainment and live entertainment performances and shows; publication of books, magazines and periodicals

The Applicant

1. The Applicant’s evidence consists of a declaration made by Brian Goldberg on 19 June 2020 (‘Goldberg Declaration’).

2. The Goldberg Declaration provides a brief outline of the examination history of the Trade Mark, noting that during examination the Trade Mark was accepted without a ground for rejection being raised under section 44 of the Act. The Goldberg Declaration also explains that the Applicant independently created the Trade Mark for an entertainment concept that they have yet to disclose.

Grounds of Opposition, Onus and Relevant Date

1. The grounds of opposition nominated in the SGP were sections 44, 60, 42 and 62A of the Act. In its written submissions the Opponent pressed only the grounds under sections 44 and 60 of the Act.

2. 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]

   [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).

3. The date at which the rights of the parties will be determined is the priority date of the Trade Mark,[3] 27 March 2019 (‘Priority Date’).

Discussion and Reasons

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

Section 44

1. Section 44(2) relevantly provides:

   Subject to subsections (3) and (4), an application for the registration of a trade mark  (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a) it is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)  a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

1. To succeed under this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Applicant, in respect of similar services or closely related goods.

2. The Opponent relies on the Opponent’s Trade Mark as the basis for this ground of opposition.

3. It is evident from the details provided at paragraph [10] that the Opponent’s Trade Mark has an earlier priority date than the Trade Mark, and is held in the name of another party.

4. I am also satisfied that the Applicant’s services, being a broad specification for the provision of entertainment services, are similar to the various entertainment services specified in the Opponent’s Trade Mark.

5. The remaining issue is whether the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s Trade Mark.

Substantially Identical

1. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J outlined the test for determining substantial identity:

   In considering whether marks are substantially identical they should, I think, 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.[4]

   [4] [1963] HCA 66; (1963) 109 CLR 407, [12].

2. The Opponent submitted that the words BEHIND THE are the essential features of both trade marks and that the words MUSIC and SONG ‘make a relatively unimportant contribution to the overall impression conveyed in a side-by-side comparison of the two trade marks as they are descriptive of types of entertainment’.

3. Referring to Anchorage Capital Partners v ACPA Pty Ltd[5], Accor Australia & New Zealand Hospitality Pty v Liv Pty Ltd[6] (‘Accor’), and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[7](‘Pham’), the Opponent noted that these three decisions ‘appear to expand the concept of substantial identity’. While I do not think this is necessarily the case, each of the three decisions emphasise the role essential features play in determining substantial identity. In Pham, the Full Court, referring to the Full Court’s decision in Accor, stated that:

   There is no doubt in our view that the Full Court in Accor in using the phrase “dominant cognitive cues” was making analogical reference to the “essential features” of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical.[8]

   [5] (2018) 251 ALR 436(Nicholas, Yates and Beach JJ).

   [6] [2017] FCAFC 56 (Greenwood, Besanko and Katzman JJ).

   [7] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).

   [8] Ibid [51].

1. Although I acknowledge that in the context of entertainment services, the words MUSIC and SONG are descriptive, I do not consider the trade marks substantially identical. Both terms are incorporated into the respective trade marks as part of a larger phrase. Despite their descriptive meaning, the words MUSIC and SONG are important constituents of the trade marks necessary for conveying the meaning of the phrases. I am satisfied that in a side-by-side comparison the differences between those elements are significant enough for there not to be an overall impression of resemblance between the trade marks.

Deceptively Similar

1. Section 10 of the Act defines the expression ‘deceptively similar’ as:

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

2. The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[9]

   [9] [1963] HCA 66, [13].

3. The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained.[10] Accordingly, an allowance is made for imperfect recollection of the trade marks.[11] The impression comes from the trade marks in their entirety,[12] and is informed by the look, sound and ideas conveyed by the trade marks.[13]

   [10] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [11] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).

   [12] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).

   [13] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

4. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[14] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the services come from the same trade source.[15]

   [14] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

   [15] Ibid.

5. The Opponent submitted that the Trade Mark is deceptively similar to the Opponent’s Trade Mark for the following reasons:

• The primary word elements of both trade marks are the words BEHIND THE, which also comprise the beginning of each trade mark.

• The words SONG and MUSIC only serve to give the consumer an indication about the subject of the entertainment services being provided.

• Although SONG and MUSIC look and sound different they possess the same idea and evoke similar impressions.

• The common element, BEHIND THE, is a distinctive and essential feature of both trade marks. There is no evidence that trade marks beginning with the words BEHIND THE are common in the entertainment industry.

1. The Applicant submitted that the elements of the trade marks are sufficiently different, contending that regard should be given the initial examination decision and 56 existing trade marks that incorporate the words, BEHIND THE.

2. I note that details of these existing trade marks were not included in either the Applicant’s evidence or its submissions, nor have the circumstances of their registration been otherwise made apparent to me. As such, I do not consider these other registrations to have any probative value. In respect to the examiner’s initial decision, while consistency is desirable, I will be approaching the section 44 ground of opposition afresh rather than reviewing or otherwise relying on the examiner’s decision.

3. Turning to the comparison of the trade marks, I note that the trade marks share a degree of visual resemblance. Both trade marks are phrases comprised of three words that begin with the expression BEHIND THE, differing only in respect to the final words, MUSIC and SONG. I accept that the words MUSIC and SONG neither look nor sound the same. In isolation the difference between the two words is obvious. However, the differences are less conspicuous when considered in the context of the trade marks as a whole. This is in part due to MUSIC and SONG being incorporated within phrases that commence with the same words, but also due to the similar meaning conveyed by both trade marks overall.

4. I appreciate that there is nuance between the meaning of SONG and MUSIC. The former refers, in general, to a piece or composition of music,[16] while the latter more broadly refers to an arrangement of sounds.[17] However, the phrases BEHIND THE MUSIC and BEHIND THE SONG convey similar ideas, indicating that the services provide some form of experience or insight behind the production or creation of a song or piece of music.

   [16] See: Macquarie Dictionary (online at 17 August 2021) ‘song’ (def 1-2).

   [17] Ibid ‘music’ (def 1-2).

5. The idea or meaning of a trade mark is a relevant factor in an analysis of deceptive similarity,[18] though not sufficient in itself to give rise to either deception or confusion.[19]  In Conde Nast Publications Pty Ltd v Taylor,[20] a decision that concerned the trade marks VOGUE and EUROVOGUE, Burchett J observed that ‘[s]ometimes a degree of dissonance between marks in sound and (speaking figuratively) in appearance may be balanced by an identity or close similarity in what has been called the “idea of the mark””[21].

   [18] Jafferjee v Scarlett (1937) 57 CLR 115, 121 (Latham CJ); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [212] (Besanko, Jagot and Edelman JJ).

   [19] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd, (1952) 86 CLR 536, 539 (Dixon, Williams and Kitto JJ).

   [20] (1998) 41 IPR 505.

   [21] Ibid 511.

6. In my view, as a whole the trade marks convey a very similar impression. A person with an imperfect recollection of the Opposed Trade Mark may be caused to wonder if entertainment services bearing the Trade Mark derive from the same trade source. This is because of the visual and aural similarity that stems from the presence of the words BEHIND THE at the beginning of both trade marks and the overall similarity in the meaning conveyed by the trade marks. These aspects of the trade marks are more likely to be remembered by consumers than the specific differences between the words SONG and MUSIC.

7. Finally, I note that the Applicant also made the following submission:

   In addition, Viacom has used their concept for their episodes under this brand with a very specific formula. This is copyright works and this has not been breached and not in question here. A trademark does not protect a concept nor copyright works. This refocuses the words to SONG which is and should be considered acceptable.

8. The Opponent made no submissions regarding any copyright that may subsist in the Opposed Trade Mark or its constituent elements. Whether or not the Opponent’s Trade Mark would protect its works under copyright is also of no relevance to the section 44 ground of opposition, nor does the absence of any claim of copyright infringement have any bearing on whether trade marks are deceptively similar.

9. Having regard to all of the above reasons, I am satisfied that there would be a real and tangible danger of confusion between the trade marks. The section 44 ground of opposition has been established.

10. Section 44(3) and 44(4) of the Act enable a trade mark, which would otherwise have been rejected under section 44(2), to be registered due to honest concurrent use, prior use or other circumstances. The Applicant did not indicate that they would be relying on the provisions of sub-sections 44(3) and 44(4), and, for completeness, I do not see any basis for the application of these sub-sections.

11. Having found in favour of the Opponent under section 44 of the Act, there is no need to discuss the other grounds set out in the SGP. However, all of the grounds of opposition may be relied on in the event of an appeal from this decision.

Decision

1. Section 55(1) relevantly 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.

2. The Opponent has established the ground of opposition under section 44 of the Act. Accordingly, I refuse to register trade mark application number 1998719.

Costs

1. The Opponent sought costs. As the Opponent established a ground of opposition, I award costs against the Applicant in accordance with Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

6 September 2021