Playboy Enterprises Inc v Auszan Pty Ltd

[2006] ATMO 9

TRADE MARKS ACT 1995

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

Re:Opposition by Playboy Enterprises International Inc to registration of trade mark application 976439(11, 21) - BAR BUNNY - filed in the name of Auszan Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Khajaque Kortian of  Spruson & Ferguson Attorneys

Applicant: Ms Sue Chrysanthou of counsel instructed by Rutland’s Law Firm

Decision:

Section 52 opposition – ss44 and 60 grounds not establishe – s43 ground established – registration refused – costs awarded against applicant

Background

1. The applicant, Auszan Pty Ltd, filed trade mark application for the following trade mark:

Application Number:	976439
Trade Mark:
Goods:	Class 11: Lamp Class: 21 Wine bottle holders, mugs, bottle holders
Priority date:	31 October 2003
Advertised:	4 March 2004

1. The opponent, Playboy Enterprises International Inc, filed notice of opposition to the trade mark's registration on 4 June 2004.  That notice listed effectively all of the available grounds of opposition provided in the Trade Marks Act1995 ("the Act"). 

2. The opponent duly served and filed evidence in support. The applicant did not serve or file any evidence.

3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Sydney on 19 October 2005. Mr Khajaque Kortian of Spruson & Ferguson, Attorneys, represented the opponent. Ms Sue Chrysanthou of counsel, instructed by Rutland’s Law Firm, represented the applicant.

The Evidence

1. Details of the evidence filed and served is shown in the following table:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Khajaque Kortian	3.12.04	KK-1	First Kortian
Khajaque Kortian	4.02.05	Annexure A	Second Kortian
Howard Shapiro	1.02.05	HS-1 to HS-10	Shapiro

1. The first Kortian declaration is made by the solicitor responsible for the conduct of the opposition proceedings on behalf the opponent.  It annexes a cease and desist letter on behalf the opponent and sent to the applicant in relation to the sale of cigarette holders in other smokers articles bearing the opponent's well-known playboy word trade mark and rabbit head device trade mark.

2. The second Kortian declaration annexes a schedule of Australian trade mark registrations of the opponent.  The schedule had been referred to in the Shapiro declaration.

3. The Shapiro declaration is made by the Executive Vice President, Law and Administration, of the opponent.  It details the history of the opponent, and the opponent's present business including publishing, entertainment, licensing, and advertising and promotion.

4. The opponent has numerous trade mark registrations both internationally and in Australia.  The most common involve the playboy word trade mark and rabbit head device trade mark, and also variations of playmate and bunny. 

5. A ‘playmate’ is a model who appears, usually nude, in Playboy magazine.  Playmates also apparently feature on videotapes, DVDs and Internet web sites.

6. A ‘bunny’ is a waitress at a ‘Playboy Club’, which provides entertainment, casino and resort facilities. The bunnies wear a stylized costume comprising a satin bodice, sheer black tights, fluffy tail, head band with rabbit ears, a bow tie, and shirt cuffs.  Trade mark 190198, shown below, is a representation of a ‘bunny’ wearing the costume.

7. The Shapiro declaration also annexes and annual report for the financial year 2003 pursuant to the United States Securities and Exchange Commission requirements.  The United States financial year apparently coincides with a calendar year.  The annual report provides details in respect of financial years of 2001, 2002, and 2003.

8. I do note that while the Shapiro declaration makes occasional references to Australia, there is no specific attribution of income or expenditure derived from the opponent's operations in Australia.

Grounds of opposition

1. While the opponent did not abandon any of its grounds of opposition at the hearing, it chose to concentrate on three Grounds opposition, being those under sections 43, 44 and 60 of the Act. Mr Kortian, for the opponent, drew my attention to the following trade marks registered in the name of the opponent:

190198	184647	954951
Class: 33 Wines, spirits and liqueurs	BUNNY Class: 33 Wines, spirits and liqueurs	Class: 21 Household or kitchen utensils and containers (not of precious metal or coated therewith), including bottle openers and magnetic bottle openers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in buildings); glassware, porcelain and earthenware not included in other classes

Onus of Proof

1. It is necessary for the opponent to establish at least one of the grounds set out in its notice of opposition in order to succeed, and that the decision to reject must be made upon positive satisfaction that the ground has been made out.  The Registrar is required to approach the question of registration with the presumption of registrability in mind: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, Lomas v Winton Shire Council [2003] AIPC-91-839, Kowa Company Ltd v N V Organon [2005] FCA 1282 paragraph [139].

Ground 1 – section 44: conflicting trade mark

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.

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. Each of the three trade marks highlighted by the opponent’s representative has an earlier priority date than the applicant’s trade mark. However, it is obvious that only registration 190198 (“the bunny device”) is arguably identical or similar to the applicant’s mark, and this was also the approach taken by counsel for the applicant.

2. Pursuant to section 14(1) of the act, ‘similar goods’ are goods that are the same as the other goods or of the same description as that of the other goods.  It is obvious that ‘lamp’ [sic], ‘wine bottle holders, mugs, bottle holders’ are not relevantly similar to ‘wines, spirits and liqueurs’.

3. Therefore, this ground cannot be made out. I dismiss this ground of opposition.

Ground 2 – section 60: Reputation in the opponent’s trade mark

1. Section 60 provides:

   60. 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.

1. To satisfy section 60, an opponent has the burden of establishing the following elements:

• a pre-existing trade mark;

• substantial identity or deceptive similarity between the applied-for trade mark and the pre-existing trade mark;

• the acquisition of a reputation in Australia by the pre-existing trade mark; and

• a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

1. The opponent has nominated a range of pre-existing Australian trade marks related to its international business.  It would be fair to say that the opponent is well known to a substantial portion of the adult (certainly adult male) population of Australia.  There is evidence that since 1997, approximately 9,000 Playboy magazines are distributed monthly in Australia.  The sample Playboy magazine and representative content as at the priority date provided by the opponent consistently feature the playboy word trade mark and rabbit head device trade mark, invariably ‘playmates’ and occasional ‘bunnies’.  The playmates and bunnies are usually portrayed in their professional role, rather than in a trade mark user sense.

2. However, of the various trade marks owned by the opponent, only the bunny device is arguably substantially identical or deceptively similar to the applicant’s mark.

3. I am not satisfied that the opponent has shown a sufficient reputation in its Australian trade mark 190198 to satisfy the requirements of subsection 60(b), that the reputation acquired in the opponent’s mark would be likely to deceive or cause confusion.

4. It is not necessary to prove reputation by direct evidence of consumer appreciation; it is commonplace to infer reputation from a high volume of sales, together with substantial advertising and other promotions: McCormick & Co Inc v McCormick, (2001) 51 IPR 102 at 129.

5. Reputation in Australia cannot be assumed - it must still be established as a question of fact - per Lockhart J in Conagra Inc v McCain Foods (Aust) Pty Ltd, (1992) 23 FCR 302.

6. There is insufficient evidence of sales, advertising or other promotions in Australia provided by the opponent.  While there were many Playboy magazines sold in Australia at the priority date, none of the examples included in evidence appeared to include the bunny device being used in a trade mark sense..  Nor was there any evidence of any income or expenditure referable to trade mark 190198, or indeed any other of the opponent’s trade marks, in Australia.

7. While it is arguable that the playboy word trade mark and rabbit head device trade mark are so notorious as to enable me to take judicial notice of their existence, I do not consider the same can be said for the opponent’s other trade marks.

8. I dismiss this ground of opposition

Ground 3 – section 43: Connotation in the applied for trade mark

1. Section 43 provides:

   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. 'Connotation' in s.43 refers to that which is implied within the trade mark itself, as a secondary implied or associated meaning. As was said in Down to Earth (Victoria) Co‑Operative Society Ltd v Schmidt (1998) 41 IPR 632 at 644:

   ‘considerations under s43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public. For example, deception or confusion could arise in regard to the character of the services (or goods) or the implied endorsement or licence of services (or goods) by a person or organisation’.

3. Section 43 looks to the inherent qualities of the trade mark of which registration is sought for the purposes of identifying whether the use of the trade mark would be likely to deceive or cause confusion: Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411 at [79] per Branson J.

4. It is apparent that a sign contained within a trade mark might contain a deceptive or confusing connotation if it resembles or signifies a particular sign which is so ubiquitous, of longstanding, or notorious that it has entered Australian parlance or is shown to have become accepted generally in Australia as connoting a particular person, entity or event or connoting a particular meaning (whether or not that particular sign has trade mark significance).   

5. It is clear that the opponent’s present business including publishing, entertainment, and licensing – involving especially the playboy word trade mark and rabbit head device trade mark – are well known to a substantial portion of the adult  population of Australia, and most adult Australians would be aware of the ‘Playboy lifestyle’ promoted by the opponent.  The expression ‘bunny girl’ can be found within dictionaries which are published within Australia. 

6. The applicant’s trade mark clearly incorporates a shapely female wearing rabbit ears, a rabbit tail, and high heel shoes.  The device is clearly a ‘bunny girl’, which is reinforced by the words ‘bar bunny’.

7. In my estimation, the elements listed above within the opposed trade mark will connote to most Australians that the applicant’s goods are those of the opponent, or endorsed or licensed by the opponent.

8. The opponent has established its opposition under section 43 to my satisfaction.

Decision

1. The opponent has established a ground of opposition on which it relied so that the opposition has been successful. Pursuant to section 55 of the Act, I refuse to register application 976439.

Costs

The opponent sought its costs in this matter. The general rule in awarding costs is that costs are usually awarded against the unsuccessful party, unless there is some conduct on the part of the successful party that would justify a departure from the general rule.

1. I see no reason why costs should not follow the general rule. I award costs against the opponent and direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh

Hearing Officer

Trade Marks Hearings

20 January 2006