Peter G Brock Pty Ltd v Darrel McLean

[2018] ATMO 182

TRADEMARKSACT 1995

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

Re:Opposition  by  Peter  G Brock  Pty Ltd  to  registration of trade  mark application 1747991 (16, 24) - KING OF THE MOUNTAIN - in the name of Darrel McLean.

DELEGATE:

Iain Campbell Thompson

REPRESENTATION:

Opponent: David Franklin, solicitor Applicant: Self represented

DECISION:

2018 ATMO 182

Trade MarksAct1995

Section 52 opposition to registration - section 43 established – connotation of Trade Mark confusing or deceptive.

Registration refused

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Darrel McLean (‘the Applicant’) has applied for the registration of the trade mark which appears below:

Application No:         1747991

Priority Date:             22 January 2016

Goods:Class 16: Framed pictures; Flags of paper; Paper flags; Banners of cardboard; Banners of paper; Display banners made of card; Display banners made of cardboard; Display banners of paper; Apparatus for mounting prints; Art prints; Engravings (prints); Fabric webs for use in supporting photographic prints; Fine art prints; Framed prints; Graphic prints; Iron-on-prints of paper; Photographic prints; Portfolio containers for photographic prints; Prints; Prints (engravings); Prints in the form of engraving; Advertising signs of paper; Printed signs of paper; Signs (stationery); Transfer sheets for the transfer of symbols onto the surfaces of signs; Transfer sheets for transferring graphic representations onto signs; Window signs (decalcomanias)

Class 24: Flags (not of paper); Pennants (flags), other than of paper; Textile flags used for place settings; Banners; Iron-on prints of textile

Trade Mark:               KING OF THE MOUNTAIN

(‘the Trade Mark’)

1. The Trade Mark was examined as prescribed by section 31 of the Act and advertised as accepted for possible registration on 16 June 2016 in the Australian Official Journal of Trade Marks.

1. On 10 August 2016, Peter G Brock Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose.

1. Thereafter, the proceedings have followed the timetable outlined below:

   ·     23 August 2016, Statement of Grounds and Particulars filed by the Opponent – specifies grounds under sections 41, 60, 42, 43, 58, 59, and 62A of the Act;

   ·     27 September 2016, Notice of Intention to Defend filed by the Applicant;

   ·     4 January 2017, Evidence in Support filed by the Opponent – declaration of David Franklin, Legal Practitioner, made on 4 January 2017 with annexures A to F;

   ·     3 April 2017, Evidence in Answer filed by the Applicant – declaration of the Applicant made on 12 March 2017;

   ·     26 April 2017, Application for extension to serve evidence in Answer filed by Applicant which was refused;

   ·     10 October 2017, Evidence in Reply filed by the Opponent after seeking and receiving an extension of time in which to do so – declaration of Robert Brock made on 9 October 2017.

2. I will note now that the refused application for an extension of time filed by the Applicant on 26 April 2017 was accompanied by a further declaration by Applicant which was not admitted into evidence (‘the excluded declaration’). I do not regard the excluded declaration as being crucial to this decision in terms of the discussion at Part 51.2.6 of the

   Trade Marks Examiners Manual1 but observe that it shows that the Applicant is involved in

   the marketing of sporting memorabilia. The subsequent declaration of Robert Brock, son of the late racing driver Peter Brock, is entirely focused on a critique of the excluded declaration and is thus not relevant to these proceedings. Further, the Applicant’s declaration of 3 April 2017 is in the nature of submission concerning the validity of Mr

1 declaration. The submission is not relevant to these proceedings as it mistakenly questions Mr Franklin’s capacity to declare on the Opponent’s behalf and the submission has been previously addressed by an Assistant Hearing Officer.

1. It follows in terms of the above discussion that the sole declaration that I am to consider in this matter is that of Mr Franklin.

1. The Opponent also filed written submissions well after the due date for such submissions had ended and this decision had been drafted. I have read these submissions and they do not affect the outcome of these proceedings.

Onus and Relevant Date

1. The Opponent bears the onus of establishing a ground of opposition which is detailed in the SGP on the balance of probabilities.2

1. As will become clear, I consider that the Opponent has established its ground under section 43 of the Act; the relevant date (‘the Relevant Date’) at which the section 43 ground must be considered is the filing date3 of the opposed application.

The Evidence

1. Mr Franklin’s declaration establishes that the racing car driver, the late Mr Peter Brock, was known as ‘King of the Mountain’ following his performances at the Mt Panorama circuit near Bathurst, New South Wales, where he won nine races. It is an expression which I take as being well-known to motorsports aficionados and many other Australians as connoting the late Mr Brock. As well as a Wikipedia entry which reflects this, there are hyperlinks provided by Mr Franklin to numerous newspaper and magazine articles that lend support for this. There is some undated (and thus not relevant) concept artwork incorporating the expression ‘King of the Mountain’ for proposed use by the Opponent on clothing attached to Mr Franklin’s declaration. Moreover, the link that Mr Franklin provides to an Internet search provided by him for sporting memorabilia associated with the late Mr Brock (the results of which are not appended to his declaration) shows ‘today’s’ date at the time of

2 Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per

Gyles J at [6]-[26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]- [133].

3 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

writing this decision – not the state of affairs as it existed prior to the Relevant Date. However, the results do show some marketing of sporting paraphernalia and memorabilia associated with the late Mr Peter Brock.

Section 43

1. Section 43 of the Act provides:

43  Trade mark likely to deceive or cause confusion

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.

1. In McCorquodale v Masterson (‘McCorquodale’) Kenny J stated:4

The word “connotation” is defined in The Oxford English Dictionary (Oxford, 2nd ed, 1989) as meaning:

1. The signifying in addition; inclusion of something in the meaning of the word besides what it primary denotes; implication.

...

b. That which is implied in a word in addition to its essential or primary meaning.

In order for s 43 to apply, the Court must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations: see, e.g., the discussion in Down to Earth (Victoria) Co-operative Society Ltd v Schmidt [1998] ATMO 10; (1998) 41 IPR 632 at 644-5.

1. In Pfizer Products Inc v Karam Gyles J observed:5

53 ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks (TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc [2000] FCA 720; (2000) 100 FCR 358 at [43]; McCorquodale v Masterson at [25]–[26]). Section 43 might

4 [2004] FCA 1247; (2004) 63 IPR 582; [2004] AIPC 92-033; [2005] ALMD 365 at [26].

5 [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 at [56].

well prevent the registration of HERBAGRA for classes of goods with no connection with herbal ingredients.

54   The argument for Pfizer is that the use of the suffix ‘-AGRA’ will cause the requisite confusion as to whether:

(a)  the  HERBAGRA product is out of the same stable as VIAGRA;

(b)  the active ingredient in the HERBAGRA product is that in VIAGRA or is from the same family of ingredients;

(c)   the HERBAGRA product is equivalent to VIAGRA in terms of its effects or achieves similar or related effects.

55  In my opinion, there is no relevant secondary meaning connoted by the mark HERBAGRA. An implication of sponsorship or association might qualify as such a secondary meaning or connotation, but I am not persuaded that the mark itself has that secondary meaning here.

[Stress added]

1. Further, in Winton Shire Council v Lomas Spender J stated:6

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.

1. In McCorquodale Kenny J observed:7

50 In Sabrina Trade Mark,8 the opponent was a well-known British actress, who worked under the name “Sabrina”. She opposed the registration of her name as a mark for a cosmetic cream for bust development. The objection arose under s 26 of the Trade Marks Act 1955 (Cth), which required the consent of a living person where the name of that person was used as a trade mark. The applicant for registration submitted that Sabrina was not the name of a “living person” for the purposes of this provision. As to this, the Deputy Registrar of Trade Marks said, at 1990:

I am satisfied that the English actress and stage personality Miss Norma Sykes was well-known by her professional name “Sabrina” in Australia before application 137460 was lodged. I am satisfied that the average member of the Australian purchasing public would, when seeing the word “Sabrina”, immediately think of the stage personality who would be far better known by the word/name “Sabrina”, than she would be as Miss Norma Sykes. I consider also that the average purchaser would, when

6 [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72 at [19].

7 Op cit from [50]-[55].

8 Charles Kidd & Co’s Application (1959) 29 AOJP 1988

seeing the name “Sabrina” on goods of the kind claimed by application 137460, wonder whether the goods had any association with the stage personality whom they knew by the name “Sabrina”. I think that many purchasers might consider that the person well-known by the name “Sabrina” had some direct association with the goods claimed by application 137460. The motive of the applicants in this matter in adopting the word “Sabrina” as their trade mark would not have any relevance for [the] purposes of this decision.

51 Although the word “connotation” was not used in trade marks legislation prior to its appearance in s 43 of the Act, there are in fact numerous instances under the pre-1995 trade marks legislation where registration has been refused on the basis that a mark contained some suggestion of endorsement or approval by a well-known person or entity, or that goods or services to which it was to be applied had been awarded some particular prize or commendation. Such instances include In re Ferguson and Company’s Trade Mark (1903) 29 VLR 331 (“P&O” in relation to whisky). In this case, Holroyd J observed at 334:

It appears to us that the trade mark is one well calculated to deceive. There is evidence that the Peninsula and Oriental Steamship Company is well known and commonly spoken of by the name “P.&O. Company”, or the “P&O”; and if this trade mark were allowed to be registered there would be upon the register a mark calculated to induce people to believe that the whisky in respect of which it was registered was whisky which was ordered or used by the P.&O. Company or purchased and kept by them as part of their stock on ship board.

52   In WD & HO Wills (Australia) Ltd’s Application (1922) 17 AOJP 2, the Registrar of Trade Marks refused to register the words “Government House” in relation to cigarettes, observing:

The words mean that which is literally conveyed by them, namely, a house maintained by Government. It is therefore reasonable to conclude that the inclusion of the word “Government” in the trade mark consisting of the words “Government House” might lead people to think that the applicant had Government patronage.

The Registrar made a like decision in Sniders and Abrahams Pty Ltd’s Application (1920) 15 AOJP 814 (“King’s Own” for cigarettes): contrast “Treasury” Trade Mark [1973] RPC 551. See also Saxon-Lee’s Application (1928) 23 AOJP 580 (“Dr Hope’s” suggesting an association with a qualified medical practitioner); and Balmoral Textile Mills’ Application (1954) 24 AOJP 2131 (“Schiaparelli” in relation to underwear suggesting a connection with a well-known Paris designer). In Trebor Sharps Limited’s Application [1970] RPC 212, the English Board of Trade refused registration to a mark consisting of a device of five interlocking circles, beneath which were the words GOLD MEDAL, in relation to boiled sugar confectionery. I accept, as the applicants’ counsel submitted, that there are ample instances in which registration has been refused because of a connotation contained in the mark that referred directly to

some person, entity or institution and, by doing so, suggested an endorsement or approval by that person, entity or institution.

53     Plainly enough, however, whether a mark or part of it connotes the sponsorship or approval of a person, entity or institution will depend on all the surrounding circumstances. In each case, it will be a question of fact and degree. In some cases, the implication has been insufficiently direct, as, for example, in Joseph Bancroft & Sons Co v Registrar of Trade Marks [1957] HCA 87; (1957) 99 CLR 453 (“Joseph Bancroft”). In that case, the High Court reversed the decision of the Registrar of Trade Marks, refusing to register the words “Miss America” as a trade mark in respect of textile products. The Court, which consisted of Williams, Kitto and Taylor JJ, observed at 458-459:

No doubt the words “Miss America”, just like the words “Miss Australia”, and the corresponding titles in other countries, when used in connexion with female apparel would be capable of suggesting in a vague and indefinable way to likely female purchasers that the goods were suitable in quality to be fashioned for such glamorous beauties, that such vague and indefinable suggestions, emotive as they might be, could hardly be said to refer directly to the character or quality of the goods. ... They simply refer to an annual title conferred upon the winner for the year of a beauty competition under this designation and are in essence indistinguishable from the titles conferred upon winners of musical, artistic, sporting and other competitions. ... Any reference that the words “Miss America” have to the character or quality of the goods in respect of which registration is sought or indeed to the character or quality of any goods is remote and indirect. Registration could not possibly trespass upon the rights of other traders to use ordinary English words or phrases to inform possible purchasers that the fabrics that they were offering for sale were similar to fabrics that had been worn by “Miss America” or which had in some way received her approval or patronage. Nor would registration of the words as a trade mark be likely to deceive the purchasing public into the belief that “Miss America” had ordered some of the fabrics or had otherwise approved of them. They would at most create the impression that the fabrics were suitable to be worn by a person who desired to be dressed in the same style as such a publicised, attractive, glamorous and popular lady.

54   In Imperial Tobacco Company (of Great Britain and Ireland) Ltd’s Trade Marks (1915) 32 RPC 361 (“Imperial Tobacco”) the English Court of Appeal dismissed an appeal refusing an application to remove three marks from the register. These marks comprised the words “Prince of Wales” and a feathers device. The marks had been registered for many years without objection.

55    More than forty-five years have passed, however, since the decision in Joseph Bancroft, longer in the case of Imperial Tobacco. In that time, the practice of licensing names and likenesses of well-known people has become more prevalent and even better known. Consumers in the contemporary Australian market can be taken to be aware of these practices, at least in a

general way. Referring to Radio Corporation v Disney, Tamberlin J said in Twentieth Century Fox Film Corp v South Australian Brewing Co Ltd (1996) 34 IPR 225 at 238:

That decision was given over 6 decades ago and it is important to bear in mind the great developments in broadcasting, advertising and merchandising during those decades. Nowadays, the public must be considered to be more sophisticated and aware with respect to character and personality merchandising than 60 years ago. Today there is clearly greater familiarity with licensing of products so that public awareness of the nature of the “sanction” to which Dixon J adverts is significantly more focused than in 1937.

I would agree.9

1. In the circumstances before me the connotation of the sign ‘King of the Mountain’ upon which the Opponent relies is, in the context of sporting memorabilia such as flags and banners, that of the well-known nickname of the late Mr Peter Brock and the implication is of endorsement or licensing by his eponymous company of the Goods. The Goods are of the ilk often sold as motorsport memorabilia and I consider that the Opponent’s concerns that a member of the public seeing such goods bearing the Trade Mark would be confused or deceived into wondering or believing that there is some sponsorship or endorsement by the Opponent are well placed. There is, accordingly, in my consideration, a reasonable likelihood of deception or confusion arising from the Applicant’s proposed use of the Trade Mark.

1. The Opponent has established its opposition under section 43 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

55  Decision

(1)    Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)    to refuse to register the trade mark; or

9 In addition to the cases discussed in McCorquodale by Kenny J, see also Amalgamated Television Services Pty Ltd v Sylvia Margret Clissold [2000] ATMO 14 (‘Home and Away’); Amalgamated Television Services Pty Ltd v Linda Cameron Pickard, Alexandra Cameron Pickard and Linda Louise Pickard [1999] ATMO 103 (‘Summer Bay’)

(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.

Note:       For limitations see section 6.

1. I refuse to register application 1747991.

Costs

1. The Opponent sought its cost in relation to these proceedings. It is usual for costs follow the event and there is no reason here to depart from this practice. Accordingly, I award costs against the Applicant at the official scale set out in Schedule 8 to the Trade Marks Regulations 1995.

Iain Thompson Hearing Officer
Trade Marks Hearings 7 November 2018