PGA Australia Ltd v LPGA

[2003] ATMO 66

TRADE MARKS ACT 1995

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

Re:Opposition by Professional Golfers' Association of Australia Limited to registration of trade mark application 808471(25) - LPGA AND DEVICE - filed in the name of Ladies Professional Golf Association.

Date of Decision:

30 October 2003

Delegate:

Jock McDonagh

Representation:

Opponent: Martin Pollock of Spruson & Ferguson, Attorneys

Applicant: (none)

Decision:

1.  Section 52 Opposition. Opposition not established, application to be registered.

2.  Costs awarded against opponent.

Background

1. The applicant, Ladies Professional Golf Association, filed trade mark application 808471 on 28 September 1999.  The application was for Clothing, footwear and clothing in Class 25 for the following trade mark:

1. 
   Following examination, the Registrar advertised the trade mark as accepted for registration in the Australian Official Journal of Trade Marks on 17 August 2000.  The opponent, Professional Golfers' Association of Australia Limited, filed notice of opposition to the trade mark's registration on 16 November 2000.  That notice listed ten grounds of opposition provided in the Trade Marks Act 1995 ("the Act"). At the hearing only three ground were relied upon.

2. The opponent duly served and filed evidence in support. The applicant duly served and filed evidence in answer. There was no evidence in reply.

3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Sydney on 25 July 2003.

4. Mr Martin Pollock, of Spruson & Ferguson Attorneys, represented the opponent. There was no appearance for the applicant.

Evidence

1. The opponent’s evidence in support consists of a declaration by the Chief Operations Officer of the opponent, Ian Robilliard, dated 28 November 2001. It contains Annexures A to G.  The evidence demonstrates the opponent’s history and activities in Australia since its formation in 1911, and displays a number of the trade marks it uses with Class 25 goods. These include the word marks 466466 pga, 486 pga national and 592182 pga tour.  The following device marks were also referred to:

411847                476269                709411

1. The applicant’s evidence in answer consists of a declaration by senior Vice President and Chief Legal Officer of the applicant, Elizabeth A. Galloway, dated 11 October 2002. It contains Annexures A to I.  This evidence also details the history of the applicant and the use of the applicant’s mark on goods in Australia and overseas.  The mark is also registered in Australia in Class 28 as registration 810088.

Submissions

1. At the hearing, the opponent’s representative gave detailed submissions relating to the law applicable to deciding the case. I shall not refer to them in detail, and will refer to the gist of them as appropriate in this decision.

2. The fact that the applicant was not represented at the hearing does not mean that the hearing officer is required to become an advocate for the absent party.  However, it does not change the evidentiary onus on the opponent to establish the grounds of opposition.  Recently in Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited & Anor [2003] FCA 901, Bennet J, at paragraph 22, stated that ‘[an] opposition should be upheld only if the Court is satisfied that the trade mark should clearly not be registered’. Her Honour was of the opinion that this applied to opposition proceedings such as this, as well as appeals in the Federal Court.

Ground 1: s44 Identical etc. trade marks

1. The relevant parts of section 44 read:

   44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a) the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar goods or closely related services; or
   (ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For similar goods see subsection 14(1).
   Note 3:  For priority date see section 12.

2. Therefore, the issues that I need to consider are:

(a) the priority dates of the competing marks,

(b) whether the goods are similar goods, and

(c) whether the trade marks are substantially identical or deceptively similar.

1. In this case, it is clear that the opponent’s marks have earlier priority dates and the goods are similar.  The opponent did not suggest that the marks were substantially identical.  Thus the only issue to determine is whether the marks are deceptively similar.

2. For deceptive similarity, a different comparison is made than that for substantial identity. Here the question is one of impression based on recollection of the mark (Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 (‘Shell’) at 415). While it is not necessary to prove actual deception, neither is a mere possibility of confusion sufficient: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (`Southern Cross'); there must be real, tangible danger of confusion occurring (Woolworths). It is sufficient if, by reason of use of the mark, a number of people would wonder if two products came from the same source (Southern Cross).

3. The opponent pointed to three key similarities between the applicant’s mark and any one or more of those of the opponent.  They were the ‘golf logo’, the acronym pga, and the white images depicted on a black background.

4. I am not satisfied that the impression carried away by a person of ordinary intelligence would be that the applicant’s goods came from the same source as those of the opponent.

5. The devices of the opponent’s marks and of the applicant are quite dissimilar.  The applicant’s is rectangular, while each of the opponent’s devices is round.  The three letter acronym PGA is the dominant feature in each of the opponent’s device marks, while the four letter acronym lgpa is dominant in that of the applicant.  The white on black format is not unusual and not such as to create confusion.

6. The acronyms are dissimilar in the number of letters in each, and the commencing letter.  As discussed by Hearing Officer Thompson in ATP Tour, Inc v Australian Tennis Professional Coaches Association Ltd [2001] ATMO 99 (15 October 2001) the Australian public is quite used to acronyms in the market place and is used to distinguishing them on small differences. Thus closer similarities than normal between acronyms are expected and tolerated in the absence of demonstrated bad faith.

7. I am not satisfied that the applicant’s trade mark is deceptively similar to any of those of the opponent. I therefore dismiss the opposition in terms of section 44.

Ground 2: s43-Trade mark likely to deceive or cause confusion

1. Section 43 reads as follows:

   43. 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.

2. There are essentially two ways connotation for the purposes of section 43 can arise. Firstly, there may be something in the trade mark which, on its face, gives a misleading impression of the attributes of the products to which the mark is applied.  This connotation arises from the mark itself and not from any other source: T.G.I. Friday's Australia Pty Ltd v. TGI Friday's Inc [2000] FCA 720 (31 May 2000) at para. 43.

3. Secondly, a connotation of sponsorship, endorsement, affiliation or connection with another entity may arise.  In such cases, it is said that the other entity must have a degree of notoriety.  That notoriety may relate to a particular field of endeavour: Down To Earth (Vic) Co-Op v. Schmidt (1998) 41 IPR 632.

4. The opponent contends that the second variety of connotation arises due to the activities of the opponent in Australia, since at least 1927, causing the acronym pga achieving significant currency in the golfing world.  The opponent contends that the use of mark containing an almost identical series of letters such as lpga is undoubtedly going to cause deception or confusion in that people will consider that the mark has been authorised by or is connected with the opponent.  This is reinforced by the presence of a person swinging a golf club.

5. I am not satisfied that such deception or confusion is likely.  In the case of the golfing circles referred to by the opponent, there is likely to be knowledge of the differences between the two organisations.  That the applicant is an association for women golfers while the opponent is predominantly and traditionally for men would be known.  It is unlikely that the golfing fraternity is going to connote an association with or endorsement of the sorority.

6. However, it is conceivable that ordinary people would not know the meanings of the respective acronyms, but would appreciate that they are different.  As I have discussed earlier, the Australian public is used to dealing with and distinguishing between acronyms.

7. I am not satisfied that the applicant’s trade mark is likely to deceive or confusion.  I therefore dismiss the opposition in terms of section 43.

Ground 3: Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

1. Section 60 of the Act allows:

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1: For deceptively similar see section 10.

Note 2: For priority date see section 12.

1. It will be noted that the minimum requirement under section 60, as regards similarity of trade marks, is that the trade marks at issue be, at least, deceptively similar. I have noted, above, that the opponent's and applicant's trade marks at issue are not deceptively similar.

2. I therefore dismiss the opposition in terms of section 60.

Conclusion

1. Section 55 of the Act provides:

   55  Decision

   Unless the proceedings are discontinued or dismissed, 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.

   Note: For limitations see section 6.

2. The opponent has not established any of the grounds of opposition on which it relied.

3. The trade mark application may therefore proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. The opponent sought its costs. However, I see no reason why I should not take the usual course of awarding costs to follow the event.  I order that the opponent pay the applicant's costs in accordance with the official scale.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

30 October 2003