Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi

[2012] ATMO 124

TRADE MARKS ACT 1995

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

Re:Opposition by Pottle Productions Inc to protection of International Registration Designating Australia, IR No. 1032857, Australian trade mark application 1354866(35, 38) - WORLD’S NEXT TOP MODEL (Logo) - filed in the name of Rute Ithalat Ve Ihracat Anonim Sirketi.

Delegate:

Iain Thompson

Representation:

Opponent: Ms Fiona Brittain of Davies Collison Cave

Holder: Did not appear or file written submissions

Decision:

2012 ATMO 124

Regulation 17A.29 opposition to protection: section 60 reputation of the Opponent’s trade mark in relation to television programs; likelihood of deception.

Extension of protection refused

Background

1. Australian Trade Mark Application 1354866, an International Registration Designating Australia (‘IRDA’), was filed under the Trade Marks Act 1995 (‘the Act’) in the name of Rute Ithalat Ve Ihracat Anonim Sirketi (‘the Holder’).  Details of the IRDA are:

Application No: 1354866

IR No:  1032857

Filing Date:  12 February 2010

the ‘Services’:                   Class 35: Advertising, marketing studies, public relations and related services, organization of exhibitions for commercial or advertising purposes and organization of trade fairs for commercial or advertising purposes; office services; business management and organization consultancy, business management assistance

Class 38: Telecommunications

Trade Mark:  

(‘the Trade Mark’)

1. The IRDA was examined and advertised as accepted for possible protection in the Australian Official Journal of Trade Marks on 22 September 2011.

2. On 9 March 2012, after seeking and receiving an extension of time in which to do so, Pottle Productions Inc. (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the extension of protection to the IRDA.

3. The Notice recites all available grounds of opposition under regulation 17A.29 including those argued at the hearing under subparagraph 42(b) and sections 59, 60 and 62A of the Act. The hearing was before me as a delegate of the Registrar of Trade Marks in Melbourne on 14 November 2012. Ms Fiona Brittain, solicitor, of Davies Collison Cave, represented the Opponent. The Holder was not present or represented at the hearing nor did it file written submissions.

4. I have only found it necessary to consider the Opponent’s section 60 grounds in this decision. For the sake of completeness I note that the grounds other than that under section 60 have not been established and that in an appeal from this decision the Court will consider the matter de novo and any ground may thus be relied upon.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to [32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

2. The date at which the grounds of opposition must be established is the date of filing of the application for protection (‘the relevant date’): see Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

Evidence

1. The evidence in support of the opposition comprises a statutory declaration by Rebecca Borden who is Vice President and Assistant Secretary of the Opponent.  The Holder has not served and filed evidence in answer.

2. Ms Borden states that the Opponent is a television production company, a subsidiary of the American broadcaster CBS Corporation, and owns and distributes a television series called AMERICA’S NEXT TOP MODEL (‘the ANTM Series’) in the United States and elsewhere in the world, including Australia.  The ANTM Series is a reality show in which women compete for the title of ‘America’s Next Top Model’ and a chance to start a career in the modeling industry.  The ANTM Series was created and is hosted by international fashion model Tyra Banks who also serves as the head judge and executive producer of the show.  The ANTM Series has been licensed for broadcast in many countries throughout the world, including:

   Albania, Argentina, Australia, Bosnia-Herzegovina, Brazil, Canada, China, Croatia, Austria, Benelux, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Paraguay, Poland, Portugal, Slovenia, Spain, Sweden, United Kingdom, Egypt, Iceland, Netherlands (Holland), Namibia, Macedonia, Mongolia, Morocco, Mozambique, Russian Federation, Serbia and Montenegro, South Korea, Switzerland, Turkey, Ukraine, Zambia, Caribbean/Trinidad and Tobago, India, Poland, and South Africa.

3. In Australia, 137 episodes of the series have aired since 2004 (nearly all of these before the relevant date) on the Fox 8 channel.  The worldwide license fees for the broadcast of the ANTM Series have generated millions of dollars.

4. The Opponent uses the trade mark AMERICA’S NEXT TOP MODEL in plain word form and in the form shown below in relation to a range of merchandise – it is not clear whether such branded merchandise has been sold in Australia:

1. Ms Borden further states that, due to the success of the ANTM Series over the last decade, production companies and broadcasters from around the world have sought to obtain a license from the Opponent for the right to produce a local program based on the format of the famous ANTM Series, and to use, under license, a national NEXT TOP MODEL trade mark as the name of the local program (for example, AUSTRALIA’S NEXT TOP MODEL in Australia).

2. In Australia, seven cycles of the AUSTRALIA’S NEXT TOP MODEL series have aired since January 2005, with the seventh cycle having commenced on 8 August 2011.

3. In the internationally franchised iterations of the program, the name of the program varies only by taking on the name of the country or region followed by the words NEXT TOP MODEL – (‘the (National) NEXT TOP MODEL trade marks’).

4. The Opponent has licensed or optioned its ANTM Series format  for production and broadcast in the following countries (‘the local series’):

   Argentina, Australia, Austria, Belgium, Brazil, Canada, China, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, New Zealand, Philippines, Poland, Romania, Slovenia, Spain, Sweden, Thailand, Vietnam, United Kingdom, Egypt, Netherlands (Holland), Russian Federation, Serbia, South Korea, Turkey, Ukraine, Caribbean/Trinidad and Tobago, and India.

5. The local series are televised in their territories and promoted on the Internet. Exhibited to Ms Borden’s declaration are representative screenshots and sample pages of websites for local programs licensed to use the ANTM Series format in various countries around the world. In addition, the Opponent licenses certain of the local series, created under the ANTM Series format licenses, for broadcast outside of their ‘home’ territories.  For example, the program AUSTRALIA’S NEXT TOP MODEL has been broadcast in many jurisdictions including USA, Great Britain, Benelux and Estonia and is licensed to air in China, Denmark, Finland, Ireland, Sweden, Egypt, the Netherlands, South Korea and the Ukraine.

6. The Opponent, or its Australian licensee, has sold a range of merchandise including jewellery, clothing, cosmetic bags and hair accessories in Australia bearing the trade mark AUSTRALIA’S NEXT TOP MODEL which is also used in the form below:

1. The get-up of the above trade mark is shared by each of the trade marks used in relation to the local series throughout the world with the only variations being minor changes in font and the substitution of the name of the local country for the geographical words ‘AMERICA’S’ or ‘AUSTRALIA’S’.

2. Although of incidental relevance to the ground under section 60, I note that both the Opponent’s AMERICA’S NEXT TOP MODEL and AUSTRALIA’S NEXT TOP MODEL (words) trade marks are registered in Australia and elsewhere in the world.

Section 60

1. Section 60 of the Act provides:

   60Trade mark similar to trade mark that has acquired a reputation in Australia

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

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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:For priority date see section 12.

2. In order to found this ground the Opponent must show that a trade mark other than the Trade Mark:

   ·     had a reputation at the priority date; and,

   ·     because of that reputation, the use of the Trade Mark would confuse or deceive.

Another Trade Mark

1. The Opponent relies on its trade marks AMERICA’S NEXT TOP MODEL and AUSTRALIA’S NEXT TOP MODEL both in plain type and in their logo forms. Section 17 of the Act provides:

2. Section 17 of the Act provides:

   17What is a trade mark?

   A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

   Note:For sign see section 6.

3. The Opponent uses the signs on which it relies to distinguish its television programs from those of other traders.  Further, it uses the title of its Australian program as a trade mark to distinguish its merchandise associated with that program.

Reputation

1. In McCormick & Company Inc v McCormick [2000] FCA 1335, (2000) 51 IPR 102, Kenny J said, at [81]-[82]:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

2. According to the Wikipedia extract at Exhibit ‘H’ to Ms Borden’s declaration, the AUSTRALIA’S NEXT TOP MODEL television show is the highest rating non-sports related television program on Australian subscription television.

3. Both television series, AMERICA’S NEXT TOP MODEL and AUSTRALIA’S NEXT TOP MODEL, have had exposure in the Australian press.  A selection of articles dated from 2004 until the relevant date is attached to Ms Borden’s declaration at Exhibit ‘I’.  Such articles have been published in the following publications:

   (a)      Melbourne: The Age, The Herald Sun and M X

   (b)National: The Australian, The Weekend Australian, AAP Bulletin Wire and News Wire

   (c)Sydney The Daily Telegraph, Sunday Telegraph, Sydney Morning Herald and The Manly Daily

   (d)      Hobart: The Sunday Tasmanian

   (e)      Adelaide: The Advertiser

   (f)Brisbane: The Sunday Mail, The Courier Mail and South West News

4. The above press articles uniformly refer to the high ratings and popularity of the television shows.

5. Use of the AUSTRALIA’S NEXT TOP MODEL trade mark has occurred on a range of merchandise sold in Australia including jewellery, clothing, cosmetic bags and hair accessories.

6. I consider that evidence shows that most people who have pay television in Australia would have knowledge of the Opponent’s television programs even if those people do not watch the programs.  I also infer from the evidence that a large number of Australians who do not have pay television would also be aware of the Opponent’s television programs through articles and advertisements in the above-mentioned print media.

7. I conclude that the Opponent’s trade marks AUSTRALIA’S NEXT TOP MODEL and AMERICA’S NEXT TOP MODEL had a reputation in Australia at the relevant date in relation to the programs and that the Opponent’s AUSTRALIA’S NEXT TOP MODEL trade mark had a reputation in respect of its merchandise associated with the television program.  Further, I consider that there was a public awareness that the Opponent had coined a range of such trade marks using the format (National) NEXT TOP MODEL including at least AUSTRALIA’S NEXT TOP MODEL and AMERICA’S NEXT TOP MODEL.

Deception and confusion

1. The consideration of deception and confusion is informed by the factors[2] discussed in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 (‘Woolworth’s) at [50] by French J who said:

   [2] With references to ‘deceptive similarity’ redacted.

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question […] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

2. Given the similarity of the words (National) NEXT TOP MODEL in common between the trade marks of the parties, the particular get-up of the Trade Mark in comparison to that of Opponent’s trade marks is relevant to my consideration of whether confusion or deception is likely for the following three reasons.  Firstly, a similarity in both get-up and words in trade marks under consideration increases the likelihood of confusion or deception amongst the public; secondly, a strongly imitative get-up will suggest that the other similarities of the parties trade marks are not coincidental; and, thirdly, because traders know their business best,[3] the lack of coincidence may imply that at least the Holder believes that the Trade Mark is fit for the purpose alleged – to confuse or deceive.

   [3] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 657

3. The similarities in get-up and otherwise are these: the Trade Mark was created following the formula (National) NEXT TOP MODEL but substitutes the word ‘world’ for the ‘(National)’ portion of the Opponent’s trade marks.  The ‘(National) Next’ portions of the parties’ trade marks are in upper-case and are contained both on the upper line of the parties’ trade marks and also between the alphabetical letters ‘t’ and ‘d’ occurring in the words ‘top model’ which comprise the lower lines.  The words on the lower lines of the parties’ trade marks are identical, are in lower-case, the letters within the words ‘top’ and ‘model’ touch each other and the fonts, although not identical, are similar and have similarly exaggerated serifs.

4. The conclusion that the Holder has closely copied both the content and get-up of the Opponent’s trade marks is inevitable.

5. If it were necessary, I would find that the Trade Mark is substantially identical to the Opponent’s (National) NEXT TOP MODEL trade marks as the substitution of the word ‘world’s’ for the words ‘Australia’s’ or ‘America’s’ is an alteration or addition which does not substantially affect the identity of either trade mark: E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381 and see PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; (1999) 47 IPR 47; [1999] AIPC 40-117. Further, the particular get-ups of the parties’ trade marks are to all intents identical.

6. It is, of course, possible for one trader’s trade mark to reference another trader’s well-known trade mark without a likelihood of deception or confusion arising if the goods and/or services are not likely to be seen by the public to be connected: McIlhenny Co v Blue Yonder Holdings Pty Ltd formerly trading as Tabasco Design [1997] FCA 962; (‘Tabasco’).  In Coca-Cola Co v All-Fect Distributing Co trading as Millers Distributing Co [1998] FCA 1638, Merkel J said of Tabasco:[4]

   In that case, the respondent’s use of “Tabasco” in relation to its business of designing and constructing stands used at exhibitions and trade fairs, was held not to constitute misleading and deceptive conduct, or passing off, in relation to the applicant’s well known brand name and product, “Tabasco” sauce. Lehane J acknowledged that the respondent was aware of the applicant’s brand name and product, and hoped to take advantage of the well-known characteristic of the applicant’s sauce by applying it to its design business. His Honour (at 199) rejected the applicant’s claim of breach of s 52 of the TPA and passing off primarily on the basis that there was an absence of any representation of connection between the respondent or its services and the applicant and its product. Lehane J (at 199) concluded that:

   “...without any association or permission the designer has - as the fact is - perhaps cheekily used a name which, by reference to its only other known use, conjures up ‘hot’ associations.”

   The Tabasco case is an example of how commercial use of a characteristic of a product in advertising, of another product or service, does not necessarily represent a connection between the advertised product or services and the supplier of the original product.

   [4] In Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107; 47 IPR 481; [2000] ATPR 41-735; [2000] AIPC 37-086 Merkel J’s application of this discussion but not the discussion itself was criticised by the Full Bench.

1. Such is not the case here.

2. In Woolworths French J stated at [88]:

   The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

3. The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

4. The reputation of the Opponent’s trade marks is such that (whatever the nexus between the services might be) the shared get-up between the trade marks of the parties makes it likely that the ordinary person who knows only of the Opponent’s trade marks when encountering services provided under the Trade Mark must conclude that there has to be a common origin for the services because it is very unlikely that a trader other than the Opponent could have independently arrived at both the substantially identical words and also the identical get-ups within the Trade Mark.

5. I am satisfied that the use of the Trade Mark by the Holder would deceive or cause confusion.

6. The Opponent has established its ground under section 60 of the Act.

Decision

1. Regulation 17A.39 provides:

17A.34Decision on opposition

(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

(2)The Registrar must tell the International Bureau of his or her decision.

1. I refuse to extend protection to application 1354886.

Costs

1. Having been successful in these proceedings the Opponent is entitled to its costs which I award at the official scale against the Holder.

Iain Thompson

Hearing Officer

Trade Marks Hearings

20 December 2012