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

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’)

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.

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

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.
I will note now that the refused application for an extension of time filed by the Applicant on 26 April 2017 was…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2018] ATMO 182
Decision Date: 7 November 2018

CaseChat Overview and Summary

This matter concerned an opposition to a trade mark application brought by Darrel McLean (the Opponent) against Peter G Brock Pty Ltd (the Applicant). The dispute centred on the Applicant's proposed use of the trade mark "King of the Mountain" in relation to sporting memorabilia. The decision was made by Iain Campbell Thompson.

The court was required to determine whether the Opponent had established a ground of opposition under section 43 of the relevant Act. This section concerns the prevention of deception or confusion in relation to goods or services. The court considered the relevant date for assessing this ground to be the filing date of the opposed application.

The court reasoned that the expression "King of the Mountain" was widely known to connote the late racing driver Peter Brock, particularly among motorsports enthusiasts and many Australians. Evidence, including a declaration from Mr Franklin and supporting online resources, established this widespread recognition. In the context of sporting memorabilia, the court found that the use of this mark would imply an endorsement or licensing by Peter Brock's eponymous company. Consequently, the court concluded there was a reasonable likelihood of deception or confusion among the public, leading them to believe there was sponsorship or endorsement by the Opponent.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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 theTrade Marks Examiners Manual1 but observe that it shows that the Applicant is involved inthe 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 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. 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. The Opponent bears the onus of establishing a ground of opposition which is detailed in the SGP on the balance of probabilities.2 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. 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 Section 43 of the Act provides: In McCorquodale v Masterson (‘McCorquodale’) Kenny J stated:4 In Pfizer Products Inc v Karam Gyles J observed:5 Further, in Winton Shire Council v Lomas Spender J stated:6 In McCorquodale Kenny J observed:7 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.