Oppositions by Groupe Canal+ to registration of trade mark application numbers 2111055 BRAZZERS+, 2111056 BRAZZERS+ Logo, and 2111057 BRAZZERS+ (colour) (classes 9, 25, 35, 38, 41 & 45) - in the name of Licensing...

[2022] ATMO 40

TRADE MARKS ACT 1995

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

Re:Oppositions by Groupe Canal+ to registration of trade mark application numbers 2111055 BRAZZERS+, 2111056 BRAZZERS+ Logo, and 2111057 BRAZZERS+ (colour) (classes 9, 25, 35, 38, 41 & 45) - in the name of Licensing IP International S.a.r.l.

Delegate:	Tracey Berger
Representation:	Opponent: Corrs Chambers Westgarth Applicant: FB Rice Pty Ltd
Decision:	2022 ATMO 40 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under s 42, 44 and 60 considered- no grounds established – trade marks to proceed to registration

Background

1. This is a decision on the oppositions by Groupe Canal+ (‘Opponent’) to registration of trade mark numbers 2111055, 2111056, and 2111057 (‘Applications’) filed by Licensing IP International S.a.r.l. (‘Applicant’) for the marks detailed below:

2.     Trade Mark Number	Trade Mark	Endorsement
2111055	BRAZZERS+
2111056	“The trade mark [application/registration] is limited to the colours black, white and yellow as shown in the representation of the trade mark filed with the application.”
2111057	“The trade mark [application/registration] is limited to the colours black and yellow as shown in the representation of the trade mark filed with the application.”

(“Applicant’s Trade Marks’)

1. Each of the Applicant’s Trade Marks was filed on 12 August 2020 claiming a priority date of 28 July 2020 (‘Relevant Date’) and covers the following goods and services:

   Specification:             Class 9:  Downloadable applications for mobile phones, tablet computers, handheld computers to enable the streaming of videos, photography

   Class 25:Clothing for men, women; clothing for men, women, namely, shirts, t-shirts, jackets, tops, sweat shirts, headwear, hats, caps; footwear
   Class 35:  Marketing, advertising and promotion services; online advertisements; advertising, marketing and promoting the goods and services of others by means of providing photo and video
   Class 38:  Photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among internet users; telecommunications services, namely, electronic transmission of images, audio-visual and video content, photographs, videos, data, text, messages, advertisements, media advertising communications and information; peer-to-peer network computer services, namely, electronic transmission of images, audio-visual and video content, photographs, videos, data, text, messages, advertisements, media advertising communications and information; providing access to computer, electronic and online databases; providing online forums for communication, namely, transmission on topics of general interest; providing email and instant messaging services; chatroom services for social networking; providing online communications links which transfer web site users to other local and global web pages
   Class 41:  Entertainment provided via computer, electronic and online databases; publication of electronic journals and blogs featuring user generated or specified content; publishing services, namely, publishing of electronic publications for others
   Class 45:  Online social networking services; providing information in the fields of social networking via a database

(‘Applicant’s Goods and Services’)

1. The Applications were examined, accepted for possible registration, and subsequently advertised for opposition on 29 December 2020.  The Opponent filed notice of its intention to oppose registration of the Applicant’s Trade Marks on 26 February 2021 and statements of grounds and particulars (‘SGP’) on 25 March 2021. The Applicant filed notice of intention to defend each opposition on 12 May 2021.

2. The parties were given the opportunity to file evidence in accordance with the timetable set out in reg 5.14 of the Trade Marks Regulations 1995 (Cth).[1]  The Opponent filed Evidence in Support (‘EIS’) on 13 August 2021.  The Applicant informed this office that it did not intend to rely on Evidence in Answer.

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

3. The parties were given the opportunity to either request an oral hearing or to file written submissions.  The Opponent did not request an oral hearing or file written submissions.  The Applicant filed written submissions only (‘Applicant’s Written Submissions’).  These matters were allocated to me to determine in my capacity as a delegate of the Registrar of Trade Marks based on the material filed during the proceedings being the SGP, EIS and the Applicant’s Written Submissions.

Grounds and Onus

1. The SGP nominated grounds of opposition under ss 42, 44, and 60.

2. The Opponent bears the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2]  The rights of the parties are assessed as at the Relevant Date,[3] being 28 July 2020.

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

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

Evidence

1. The EIS consists of a declaration of Justine Pajot, Intellectual Property In-house Counsel of the Opponent, made on 11 August 2021 with Annexures JP-1 to JP-8 (‘Pajot Declaration’).

2. Ms Pajot declares that the Opponent is a French corporation founded in 1983, as a subsidiary of a publicly listed media conglomerate, which produces and broadcasts television programs in over 80 countries.  The Opponent has around 8,000 employees globally and offices in Europe, Asia, Africa, and the Pacific including Australia and New Zealand.

3. The Pajot Declaration provides the following information about the Opponent and its activities:

• Various revenue figures for 1 January 2020 to 30 June 2020 as well as total and regional subscriber numbers for its Pay TV services.

• The Opponent has approximately 4,000 trade mark registrations for its Canal+ or CANALPLUS trade marks in over 80 countries including registrations in Australia.

• Details of 22 television channels provided by the Opponent under marks containing a plus symbol including CANAL+, CANAL+CINEMA, CANAL+SPORT, CANAL+FAMILY, GOLF+PACIFIC+, CUISINE+, and INFOSPORT+, amongst others (‘Canal+ Channels’).  These channels are distributed globally through the Internet, ADSL, DTV, cable, fiber and satellite as well as the Opponent’s myCanal app identified by the device mark ‘’ . 

• Information about advertising and examples of use predominantly of the mark Canal+ on the above Canal+ Channels, on websites of companies in same corporate group including the Australian subsidiary CanalPlus Australie, and local and international social media accounts (Facebook, Intagram, Twitter).

• The Opponent is the European leader in the production and distribution of movie and television series for international audiences.  The Opponent’s products and services are produced in French but many of the Canal+ Channels have an option for English subtitles.

• The Opponent’s subsidiary StudioCanal owns the third largest film library in the world with over 6,000 titles including English and French films.  These products can be accessed by satellite subscription or the MyCanal app and are distributed globally through third parties.  In Australia, Sony Pictures Home Entertainment has been the distributor for StudioCanal films for DVD and Blu-Ray since 2015 for films such as Terminator 2: Judgement Day, JFK, Basic Instinct, Under Siege and Free Willy.

• The Opponent’s Pay TV broadcasts have included the Oscars, Cannes Film Festival, Formula 1, and third party movies and televisions series such as BILLIONS and THIS IS US.  These services are available in Australia through paid satellite subscription.

• Information about the Applicant which the Opponent alleges is a Canadian pornographic video production company with an online network of about 30 hardcore pornography websites containing over 10,000 pornographic videos. The Applicant confirms this information in the Applicant’s Written Submissions.

Discussion

Section 44

1. To successfully oppose the Applicant’s Trade Marks pursuant to s 44, the Opponent must rely on at least one pending or registered trade mark with a priority date earlier than the Applications, and which is in the name of a person other than the Applicant. The earlier mark must be substantially identical or deceptively similar to the Applicant’s Trade Marks and must claim similar or closely related goods and services.

2. In support of the s 44 ground, the Opponent relies on its own registered trade marks shown below:

Trade Mark Number	Trade Mark	Class(es)	Priority Date	Endorsements
533535	9	1 May 1990	Registration of this trade mark is limited to the colours BLACK, WHITE, ORANGE, YELLOW, GREEN and BLUE as depicted in the representation attached to the application form Registration of this trade mark shall give no right to the exclusive use of the PLUS SYMBOL
533536	38	1 May 1990	Registration of this trade mark is limited to the colours BLACK, WHITE, ORANGE, YELLOW, GREEN and BLUE as depicted in the representation attached to the application form Registration of this trade mark shall give no right to the exclusive use of the PLUS SYMBOL
587204	CANAL PLUS	9, 38	25 Sep 1992	Provisions of subsection 41(5) applied. The applicant has advised that the translation of the French word CANAL appearing in the trade mark is CHANNEL.
720583	38	28 Oct 1996	The trade mark registration is limited to the colours RED, YELLOW, GREY, GREEN, BLACK and WHITE as shown on the representation attached to the application form

(‘Opponent’s Marks’)

1. All of the Opponent’s Marks meet the procedural requirements of s 44 in that they are registered Australian marks in the name of someone other than the Applicant and each has an earlier priority date than the Applications.  I will now consider the similarity of the marks.

Substantial Identity and Deceptive Similarity

1. In the SGP, the Opponent only alleges that the Applicant’s Trade Marks are deceptively similar to the Opponent’s Marks.  Whilst there is no suggestion that the Opponent claims that the Opponent’s Marks are substantially identical to the Applicant’s Trade Marks, I note that it is obvious that on a side by side comparison of the Opponent’s Marks and the Applicant’s Trade Marks, the differences are so apparent that the marks are not substantially identical.  Accordingly, I will consider whether the marks are deceptively similar.

2. Section 10 provides:

   10  Definition of deceptively similar

   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.

1. The assessment of deceptive similarity was considered by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited who observed:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. 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].[4]

   [4] [1963] HCA 66, [13].

2. In determining deceptive similarity, I am guided by the following relevant principles:

• There must be a real, tangible danger of confusion, not just a mere possibility.[5] Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[6]

• The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[7] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[8]

• Consumers may retain an imperfect recollection of a mark or its essential features.[9]

• The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or exceptionally careless or stupid.[10]

• It must be considered how the goods or services are ordinarily sold or provided.[11]

  [5] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

  [6] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

  [7] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

  [8] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

  [9] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

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

  [11] Ibid.

1. Visually and aurally, the Opponent’s Marks and Applicant’s Trade Marks are distinct. With the exception of registration number 587204, the only feature in common is the plus symbol (+). This element is non-distinctive as evidenced by the endorsements entered under the previous Trade Marks Act. Registration number 587204 does not contain a ‘+’ symbol. Instead, it contains the word PLUS which is phonetically equivalent. From my own personal knowledge, I am aware that a ‘+’ symbol or word PLUS is commonly used in the entertainment industry by other traders who offer the same sorts of goods and services as those covered by the Opponent’s Marks and those claimed by the Applicant in classes 9, 38 and 41. For example, I am aware of the following subscription streaming services namely AppleTV+, 7PLUS, Paramount+, FOXTEL+ and Binge+/BINGEPLUS. The Applicant’s Written Submissions include other examples of well-known broadcasters and digital content streaming providers using ‘+’ or PLUS.[12]

   [12] Whilst not filed in evidence, on reading the Applicant’s Written Submissions, I was immediately familiar with the examples given.

2. The other elements of the Opponent’s Marks and the Applicant’s Trade Marks are very different being either CANAL or BRAZZERS which look and sound different.  I consider that it is these elements which are more likely to be remembered by consumers as the first parts of the respective marks[13] and the more distinctive elements.  The ‘+’ symbol or word ‘PLUS’ simply suggests to consumers that the Applicant has a more extensive or better product/service which is offered under the Applicant’s BRAZZERS+ marks as compared to BRAZZERS and a similar impression would be had from the Opponent’s Marks. 

   [13] CA Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; (2000) 52 IPR 42, 74 (Ryan, Branson and Lehane JJ)

3. Even the most imperfect recollection of the Applicant’s Trade Marks is unlikely to result in consumers recalling the Opponent’s Marks.  There is no real danger of confusion between the Applicant’s Trade Marks and the Opponent’s Marks.

4. The s 44 ground fails as the Applicant’s Trade Marks are not deceptively similar to the Opponent’s Marks.

Section 60

1. Section 60 provides:

   60  Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note:          For priority date see section 12.

2. To establish this ground, the Opponent must demonstrate that, at the Relevant Date, there was another trade mark that had acquired a reputation in Australia and because of that reputation, use of the Applicant’s Trade Marks would be likely to deceive or cause confusion.

3. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[14] 

   [14] [2000] FCA 1335, [81].

4. Reputation may be established in a variety of ways including volume of sales, advertising expenditure and evidence of promotions.[15] The reputation must be one of which a significant or substantial number of people would be aware.[16] In Le Cordon Bleu BV v Cordon Bleu International Ltee the Court observed that what amounts to a significant or substantial amount of people will depend on the nature of the goods and services in question.[17]

   [15] Ibid [86].

   [16] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   [17] (2000) 50 IPR 1, 19-20 (Heerey J).

5. The Opponent relies on its “ongoing, consistent use in Australia of the sign “+” and the word ‘PLUS’ in respect of its class 9 goods and its class 38 services” since before the Relevant Date and alleges in its SGP that as a result, it has acquired a reputation in the sign “+” and word “PLUS” for its goods and services such that use of the Applicant’s Trade Marks is likely to deceive or cause confusion.

6. Although the Opponent claims a reputation in the sign ‘+’ and the word PLUS, this is not supported by the EIS.  There is little, if any, evidence that the Opponent has used either the ‘+’ symbol or the word PLUS alone.  The only evidence in the Pajot Declaration seems to be (i) a claim in paragraph 44 that the Opponent’s MyCanal app is identified by the device mark , (ii) what appears to be the cover of a French language newsletter of the Opponent titled ‘’ and (iii) a copy of the cover of ‘ Magazine’ in French.  This evidence is not sufficient to establish that the Opponent has a reputation in Australia in either the sign ‘+’ and the word PLUS.

7. The vast majority of the evidence relates to use of the mark CANAL+ and even then, it does not appear that the CANAL+ mark has been extensively used in Australia.  The number of followers of the Opponent’s Australian social media accounts and number of subscribers of the Opponent’s Canal+ pay television services in Asia Pacific is not significant in terms of the potential pool of consumers.   The Opponent may have developed a reputation in the Opponent’s Marks overseas, particularly in Europe, but I am not satisfied that any such reputation extends to Australia or would result in a likelihood of deception or confusion between the Applicant’s Trade Marks and any trade mark of the Opponent.

8. The s 60 ground of opposition is unsuccessful.

Section 42(b)

1. It is clear from the manner in which the Opponent has particularised this ground of opposition in the SGP that it relies only on s 42(b) that the use of the Applicant’s Trade Marks would be contrary to law, specifically, that such use would be a breach of ss 18 and 29 of the Australian Consumer Law.

2. For the reasons set out above in regard to the s 60 ground of opposition, I am not satisfied that use of the Applicant’s Trade Marks would mislead or deceive an ordinary or reasonable consumer of the relevant goods and services into believing that the Applicant’s Trade Marks and any of the Opponent’s Marks are related, or that there is any relationship between the Applicant or the Applicant’s Goods and Services and the Opponent.

1. Accordingly, the s 42(b) ground of opposition has not been established.

Decision and Costs

1. The Opponent has not established any of the nominated grounds of opposition. Accordingly in the absence of any appeal, the Applicant’s Trade Marks may proceed to registration one month from the date of this decision. In the event of any appeal being filed, registration of the Applicant’s Trade Marks should not occur until the appeal has been withdrawn or discontinued.

2. The Applicant has requested an award of costs. Costs generally follow the event. As there is no reason to depart from the general rule, in respect of trade mark application number 2111055, I award costs against the Opponent in the amounts listed in Schedule 8 of the Regulations.

3. In respect of trade mark application numbers 2111056 and 2111057, I award reduced costs against the Opponent in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[18]

   [18] [2001] ATMO 78.

Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
22 March 2022