Playgirl Keyclub Inc v Speedlight Pty Ltd

[2005] ATMO 5

TRADE MARKS ACT 1995

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

Re:Opposition by Playgirl Keyclub Inc to registration of trade mark application 851398(9) - PLAYGIRL - filed in the name of Speedlight Pty Ltd.

Delegate:	Jock McDonagh
Representation:	Opponent: Ian Tannahill of Ahearn Fox, Attorneys Applicant: no representation or appearance
Decision:	S52 opposition - grounds under sections 42 and 59 established – registration refused. Costs awarded against the applicant.

Background

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

Application Number:	851398
Priority date:	22 September 2000
Goods:	Class 9:   Spectacle frames and sunglasses
Trade Mark:	playgirl
Advertised:	12 April 2001

1. The opponent, Playgirl Keyclub Inc, filed notice of opposition to the trade mark's registration on 12 July 2001.  That notice listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("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 16 February 2004. Mr Ian Tannahill of Ahearn Fox, Patent and Trade Mark Attorneys, represented the opponent. The applicant was not represented at the hearing, and did not file any written submissions.

   Evidence

4. The evidence consists of the following declarations:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Daniel Patrick FOX	10.10.2001	DPF 1 & DPF 2	Fox
Ian Robert TANNAHILL	10.10.2001	IRT-1 and Annexures A – J	Tannahill 1
Ian Robert TANNAHILL	23.12.2002	IRT-1 & IRT-2	Tannahill 2
Ian Robert TANNAHILL	12.04.2003	IRT-1 to IRT-6	Tannahill 3
Ian Robert TANNAHILL	12.01.2004	IRT-1 to IRT-6	Tannahill 4

1. The Fox declaration states that the opponent, Playgirl Key Club, Inc, is the owner of the trade mark the playgirl in Australia. Further, the opponent has continuously used that trade mark in Australia in respect of printed publications since at least 4 August 2000, and were still using the trade mark in respect of those goods on 22 September 2000.  Enclosed with declaration was a copy of the cover of Playgirl magazine dated January 2000, and a copy of the page taken from the attorney firms petty cash receipts book confirming expenditure of petty cash on the magazine.

2. The Tannahill 1 declaration includes as an exhibit a report by a trade mark investigator, which concluded that the investigator was unable to find any evidence of use of trademark playgirl by the applicant.

3. The Tannahill 2 declaration includes a copy of an auction conducted on eBay of a pair of Playboy sunglasses from the 1970s.

4. The Tannahill 3 declaration includes two examples of the opponent's Playgirl magazines, which Ian Tannahill had purchased from Inhibitions, a retail outlet that specialises in the sale of sex-related aids and toys, magazines, articles of clothing, and related accessories.  The declaration also states that Mr Tannahill purchased sunglasses, magazines and a video tape, each bearing the playboy trade mark.

5. The Tannahill 3 declaration also includes copies of various pages downloaded from the website which relates to the offer for sale of Playboy magazines, Playboy clothes, and Playboy sunglasses.  One of the pages is entitled "Shop the Playboy store.  Live the PLAYBOY LIFESTYLE."

6. The Tannahill 4 declaration provides the details of an excursion by the declarant, whereby he purchased a number of adult magazines and videos at a Brisbane "adult shop".

   Grounds of opposition

7. At the hearing, the opponent only relied on two grounds of opposition; namely, those under sections 42 and 59 of the Act.

   The section 42 ground - use of trade mark contrary to law

8. Section 42 states:

   42. An application for the registration of a trade mark must be rejected if:

   (a) the trade mark contains or consists of scandalous matter; or
   (b) its use would be contrary to law.

9. The opponent submitted that use of the trade mark would be contrary to section 52 of the Trade Practices Act 1974, which provides that: “(1) a corporation  shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.”

10. Mr Tannahill submitted that Playboy magazine is a men’s magazine that, in addition to pictorials of naked women, also contains articles relating to fashion, sports, motor vehicles, health, sex, finance, and current events.  The magazine, it was submitted, promotes a particular lifestyle and persons to whom such lifestyle is appealing are likely to purchase the Playboy clothing, sunglasses, and other Playboy branded merchandise.

11. It was further contended that the various retail outlets, supplying adult goods, by selling articles of clothing and sunglasses are attempting to satisfy their clients’ aspirations of a particular lifestyle, as promoted in magazines such as Playboy and Playgirl.

12. Mr Tannahill argued that, bearing the above in mind, it was possible that the applicant’s sunglasses could be sold in retail outlets that also sell the opponent's Playgirl magazines.  Given the nature of the sex industry, the opponent believes that concurrent use of identical or deceptively  similar trade marks by the applicant and the opponent is likely to engender confusion, will prompt some persons to purchase the playgirl sunglasses, believing that they are connected in the course of trade with Playgirl magazine. In his opinion, such use in respect of sunglasses would contravene section 52 of the Trade Practices Act.

13. It is not necessary to prove that misleading and deceptive conduct has actually taken place.  It is enough that there is a likelihood of misleading or deceptive conduct.  I refer to Shanahan's Australian Law of Trade Marks and Passing Off, 3rd edition, 2003 at page 598, which states: 'Misleading conduct does not merely cause confusion; it actually directs a person towards the wrong choice'.

14. I also refer to the case of Simplicity Funerals Ltd v Simplicity Funerals Pty Limited 1987 ATPR 40-814 at 48836. The case supports the proposition that section 52 of the Trade Practices Act also applies to conduct which is likely to mislead or deceive in the near future although not presently doing so.

15. Having regard to the opponent's evidence and submissions, I am satisfied that potential customers being confronted by sunglasses bearing the applicant’s playgirl trade mark would be likely to be misled into believing that they were connected in the course of trade with Playgirl magazine.

16. I am further satisfied the applicant is a corporation.  Therefore, I am satisfied that this ground opposition has been established.

    The section 59 ground - applicant not intending to use trade mark

17. Section 59 of the Act provides:

    59  Applicant not intending to use trade mark

    The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a)       to use, or authorise the use of, the trade mark in Australia; or

    (b)       to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

    Note:   For applicant see section 6.

18. 'Intention to use' has been judicially considered in Aston v Harlee Manufacturing Co (1960) 103 CLR 391. In that case Fullagar J said, at 401:

    [T]he making of the application itself is, I think, to be regarded as prima facie evidence of intention to use.  I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent of proving the absence of intention.

19. The opponent's evidence includes a report by Mr Ken Taylor or Trade mark Investigation Services dated 26 June 2001. Mr Taylor reports that he has undertaken investigations which reveal no use of the playgirl trade mark by the applicant in Australia.  His investigations included searches of Telstra directories, the Internet using various search engines, the Products and Tradenames Guide, relevant industry guides, the New South Wales Purchasers Index, and made relevant retail enquiries.  Discrete enquiries which were made of the applicant by the investigator did not reveal any intention to use the trade mark. 

20. Weighing these factors, I consider that, on the balance of probabilities, the opponent has prima facie established its position under section 59 and the applicant has not responded. This, in term of Jones v Dunkel (1959) 101 CLR 298 gives rise to an inference that there was no evidence to assist the applicant’s case.

21. I am satisfied that there has been no use in Australia to date. However, s.59 requires me to determine whether, on the balance of probabilities, there is a current intention to use the trade mark in Australia on the claimed goods. Here, the opponent has provided sufficient evidence to cast doubt on the requisite intention, and there has been no rebuttal, denial or answer by the applicant. Given these particular circumstances, I am satisfied that the applicant lacks the requisite s.59 intention. The ground is therefore made out.

    Conclusion and Decisions

22. The opponent has established grounds 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 851398.

    Costs

23. The opponent sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.

Jock McDonagh
Hearing Officer
Trade Marks Hearings
25 February 2005