Qantas Airways Limited v Luke Edwards
[2014] ATMO 40
•9 May 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Qantas Airways Limited to registration of trade mark application 1356461 (25) - Kangaroo on T-shirt Device - in the name of Luke Edwards
Delegate: Michael Kirov Representation: Opponent: Justine Beaumont of Counsel, instructed by Ema O’Brien, Solicitor, of Minter Ellison Lawyers
Applicant: Luke EdwardsDecision: 2014 ATMO 40
s 52 opposition: Grounds under ss 42(b), 43, 44, 58 and 60 pressed – trade mark neither substantially identical with, nor deceptively similar to, Opponent’s trade marks – neither deception nor confusion likely – opposition not successful. Costs awarded against the Opponent.Background
This is an opposition brought by Qantas Airways Limited (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below filed by Luke Edwards (“the Applicant”):
Application Number: 1356461
Trade Mark: (“the Opposed Mark”)
Priority Date: 16 April 2010 (“the Priority Date”)
Goods:Class 25: Clothing; footwear; headwear; shirts; T-shirts
I heard the matter as a delegate of the Registrar of Trade Marks on 14 February 2014 in Sydney, with the Applicant present and representing himself. Justine Beaumont of Counsel, instructed by Ema O’Brien, a solicitor with Minter Ellison Lawyers, appeared for the Opponent. The parties’ oral submissions were supplemented by written submissions exchanged in the days leading up to the hearing.
Grounds of Opposition
The Notice of Opposition (“the Notice”) was filed on 7 October 2010 and lists 14 grounds corresponding to various provisions of the Act. Ms Beaumont nevertheless confirmed the Opponent would only be pressing those grounds based on sections 42(b), 43, 44, 58 and 60 of the Act and these are discussed below in the order dealt with by Ms Beaumont. I treat the remaining grounds listed in the Notice as abandoned.
Onus and Standard of Proof
To succeed in its opposition the Opponent bears the onus of establishing at least one of the five grounds pressed at the hearing. I confirm I am proceeding on the basis that the relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[1]
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].
The Relevant Date
As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[2] (“Southern Cross”) the relevant date at which the rights of the parties are to be determined is the 16 April 2010 priority date of the opposed application.
[2] (1954) 91 CLR 592 at 595.
The Evidence
The parties rely on the following Statutory Declarations or Declarations:[3]
[3] Some of the Declarations in evidence were made pursuant to the Act and some were made pursuant to the Statutory Declarations Act 1959 (Cth).
Evidence in Support
▪ Cassandra Jane Hamlin made 6 July 2011, with Exhibit CJH-1 (comprising Tabs 1 to 30)
Evidence in Answer
▪ Kenneth J. McInnes made 4 July 2012, with Exhibit A
▪ Luke John Roo Edwards made 6 July 2012, with Exhibits LJRE 1 to LJRE 15Evidence in Reply
▪ Lynne Elizabeth Anne Peach made 20 December 2012, with Annexure LEAP-1
▪ Taryn Leigh Morton made 21 December 2012, with Exhibit TLM-1 (comprising Tabs 1 to 4)Further Evidence (in Answer)
▪ Luke John Roo Edwards made 27 May 2013, with Exhibits LJRE 20 to LJRE 55
Further Evidence (in Reply)
▪ Anthony Cohen made 13 September 2013, with Annexures A-F
▪ Lynne Elizabeth Anne Peach made 16 September 2013Additional Further Evidence (in Answer)
▪ Luke John Roo Edwards made 8 January 2014
▪ Luke John Roo Edwards made 8 January 2014
▪ Luke John Roo Edwards made 8 January 2014
▪ Luke John Roo Edwards made 8 January 2014
▪ Luke John Roo Edwards made 8 January 2014
▪ Luke John Roo Edwards made 8 January 2014
▪ Luke John Roo Edwards made 8 January 2014
▪ Luke John Roo Edwards made 8 January 2014
▪ Sherylene Edwards made 8 January 2014Additional Further Evidence (in Reply)
▪ Zachary Spencer Vogel made 30 January 2014, with Annexures ZSV-1 to ZSV-13Discussion
Section 44
Only s 44(1) of the Act is relevant in this case and this is reproduced below:
(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.The ground based on s 44 is indicated in the Notice as follows:
The Opposed Trade Mark is substantially identical with or deceptively similar to a trade mark or trade marks in the name of another person, having an earlier priority date, and registered or applied for in respect of goods/services that are the same as, closely related to or are goods/services of the same description as those of the Opposed Application, including the following marks. [Section 44]
Number Mark Classes 329022
39
330916
39
330932
42
413608
16
413609
39
624758*
39
624759*
42
624760*
39
624761*
42
711454
35, 36
712579
9
790154
9
847633
42
926962
39, 43
1188902
39, 43
1254612
16, 35, 39, 41, 43 1367086
9, 16, 35, 36, 39, 41, 43 1367260
9, 16, 35, 36, 39, 41, 43
I note all of the above trade marks are owned by the Opponent and all are currently registered except 624758, 624759, 624760 and 624761 (marked with an asterisk), which were removed from the Register on or about 29 September 2011 following their non-renewal. All the marks in the table have a priority date earlier than that of the opposed application except registrations 1367086 and 1367260 (marked with a ). That said, Ms Beaumont included an amended list excluding these six registrations as “Annexure 1” to her written submissions, further specifying that:
The Opposed Mark is substantially identical or deceptively similar to each of the marks the subject of the Opponent’s registrations set out in Annexure 1 to these submissions and, in particular, registration no. 711454 which (as described in the Register) depicts a leaping kangaroo silhouette in a triangle, and is registered, inter alia, in relation to merchandising services.
Ms Beaumont subsequently focused her submissions at the hearing on registration 711454, agreeing that the Opponent’s case under s 44 was at its strongest with this registration in terms of both the nature of the registered mark itself (which I will refer to hereafter as “the 1984 Mark” since its use actually commenced in 1984) and the nature of the services covered by the registration’s Class 35 specification. At best, accordingly, the other registrations listed in Annexure 1 to the submissions are redundant, since if the Opponent were to succeed under s 44 based solely on registration 711454 then it would have the result it seeks. Conversely, if its s 44 ground based on registration 711454 were to fail then reliance on the remaining registrations would not advance its case any further. Indeed, I do not consider that any of these other registrations could successfully underpin the Opponent’s s 44 ground in any event, because on the face of it none covers goods similar to, or services closely related to, the Class 25 goods of the opposed application (“the Applicant’s Goods”).
In the case of registration 711454 itself, Ms Beaumont confirmed that it was only the “merchandising services” in Class 35 it covered to which the Opponent considered the Applicant’s Goods were closely related. For the sake of completeness, nevertheless, I mention that the full coverage of the registration is as follows:
Class 35: Advertising, marketing and merchandising services
Class 36: Financial, investment and banking services associated with the use and promotion of credit cards and charge cards
To establish its section 44(1) ground then, the Opponent needs to establish on the balance of probabilities that:
•the Applicant’s Goods are closely related to the “merchandising services” covered by registration 711454; and
•the Opposed Mark is substantially identical with, or deceptively similar to, the 1984 Mark.
It is convenient to begin with the issue of substantial identity. As Ms Beaumont noted, the generally accepted test for assessing substantial identity is as set out by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd, [4] where his Honour said:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
[4] (1963) 1B IPR 523; 109 CLR 407 at IPR 528; CLR 415.
The parties’ marks are shown side by side below:
(the Opposed Mark) (the 1984 Mark)
Ms Beaumont submitted that:
The kangaroos are each stylised to appear “mid hop” (or “flying”) and have the following common features:
(a) a right-hand profile silhouette of the kangaroo;
(b) the torso is leaning forward over its heels;
(c) the ears are pointing backwards;
(d) the head is facing forward;
(e) the front paws are facing downwards.
The shapes encompassing the silhouetted kangaroo (eg. Triangle shape in the Opponent’s [1984 Mark] and the outline of a T-shirt in the Opposed Mark) are not the essential features of the trade marks as they simply create the negative space in which to present the kangaroo silhouette. Particularly in the absence of any words or brand indicia, there is a total impression of sameness or similarity amongst the marks. [See Cohen at para 12.]
The submissions reflect the points made by Anthony Cohen, the Opponent’s “Manager, Brand Design & Marketing Programs”, who says at paragraph 12 of his declaration:
Comparing the marks side-by-side, it is clear that the prominent feature in both is the silhouetted image of a kangaroo. The kangaroos are each stylised to appear “mid hop” (or “flying”) and incorporate the quintessential styling of the Opponent’s “flying kangaroo” – a right-hand profile silhouette of the kangaroo; torso is leaning forward over its heels; ears are pointing backwards; head is facing forward; front paws are facing downwards downwards towards the heals. The shapes encompassing the silhouetted kangaroo (i.e. triangle shape and the outline of a baseball cap[5]) are insignificant and inconsequential features of the trade marks as they simply create negative space in which to present the kangaroo silhouette.
[5] The Applicant’s application 1504855 in Class 25 is also being opposed currently by the Opponent and Mr Cohen’s reference to “the outline of a baseball cap” is on the face of it a copying error from evidence used in that other opposition. I assume, along with Ms Beaumont, that Mr Cohen nevertheless intended to make the same observation of “the outline of a T-shirt” featured in the Opposed Mark.
I cannot agree with this analysis. In my view a total impression of resemblance does not emerge when the parties’ marks are viewed side by side. Although both trade marks feature a representation of a stylised kangaroo, the particular points of similarity highlighted in Mr Cohen’s evidence might in principle be noted across any number of diverse representations of a kangaroo. I do not think it unusual for a kangaroo to be seen or imagined in mid-hop, leaning forward over its heels and with its head facing forwards, ears back and front paws facing downwards. Indeed it is difficult to imagine a natural representation of a kangaroo in mid-hop that did not capture these elements.
These somewhat superficial points of resemblance are to my mind outweighed by the more significant differences between the representations of the kangaroos in the parties’ marks and the overall differences between the marks as wholes. On a side by side comparison it is immediately apparent that the Opposed Mark, unlike the 1984 Mark, does not contain a whole animal. The back of the kangaroo and its hind legs are missing and the representation only hints at the shape of the legs and tail. On close inspection the manner in which the animals’ front paws, head and ears are represented is in fact quite different in each mark. Moreover, notwithstanding Mr Cohen’s view and Ms Beaumont’s submissions to the contrary, I find it difficult to accept that the T-shirt shape on the one hand and the triangle shape on the other, which form the respective backgrounds for the kangaroos, are “insignificant and inconsequential features of the trade marks.” To my mind the very different background shapes readily allow the Opposed Mark to be distinguished from the 1984 Mark and I do consider them to be significant features of the respective marks as wholes. Taking these matters into account, I conclude that the Opposed Mark is not substantially identical with the 1984 Mark.
Turning to the issue of deceptive similarity, I note this should be judged bearing in mind how closely related the Applicant’s Goods may be to the “merchandising services” in Class 35 covered by the Opponent’s registration 711454. In this regard French J (as he then was) considered in Registrar of Trade Marks v Woolworths Ltd[6] (“Woolworths”) that the determination of whether, and to what degree, an applicant’s goods were closely related to the services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter[7] that, “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive”.
[6] (1999) 45 IPR 411 at [45].
[7] Woolworths Limited v Registrar of Trade Marks (1998) 42 IPR 615 (at 624).
In assessing whether, and if so to what extent, the Applicant’s Goods are closely related to “merchandising services” I must assume use of the respective trade marks in a “normal and fair manner” for any of the relevant goods or services.[8] It is the statutory rights granted by registration that must be compared and not the actual use (or lack thereof) that may have been made of the respective marks in the past.
[8] Smith Hayden & Co. Ltd’s Application (1946) 63 RPC 97 (Ch D); Registrar of Trade Marks v Woolworths Limited (op. cit.) at [50].
As I raised at the hearing, it is not entirely clear to me what the description “merchandising services” necessarily includes, or indeed whether it in fact excludes any services that might otherwise more commonly be described as, say, “retailing services” in Class 35 generally. I note that the description “merchandising services” is not used in the International Classification of Goods and Services (Nice Classification) published by the World Intellectual Property Organisation,[9] which forms the basis for classification by IP Australia. The word “merchandising” is however defined in the (online) Oxford English Dictionary as:
1. The transaction of mercantile business, the buying and selling of goods; bargaining; trade. (Now rare.)
2. That is engaged in the trade or sale of goods; (in later use also) concerned with or relating to the promotion of goods and services.
[9] Being the ninth edition, in force when the opposed application was filed.
Registration 711454 dates from 1996 and the language of its specification presumably reflects the “later use” definition above, (that is “trade or sale of goods…concerned with or relating to the promotion of goods and services”), rather than the “now rare” wider meaning the word “merchandising” once commonly signified.
I note that such interpretation appears consistent with Ms Beaumont’s written submissions on the nexus between the Applicant’s Goods and the Opponent’s “merchandising services”. These were brief and are set out in full below:
The [Applicant’s] Goods are closely related to services…covered by the Opponent’s [registration 711454]. In particular, “Clothing; footwear; headwear; shirts; T-shirts” are closely related to “merchandising services” which are covered by the Opponent’s registration no. 711454. It is clear from the evidence that the kinds of merchandising activities that the Opponent has engaged in have involved merchandise in the form of clothing (often for sponsorship purposes): see submissions below in relation to ss 60 and 42(b) of the Act.
The submissions in relation to ss 42(b) and 60 said to be relevant to the s 44 ground are principally based on the evidence in the Vogel declaration, Mr Vogel being the Opponent’s “Head of Group Brand”. They highlight actual use by the Opponent of two marks in particular in relation to “clothing and related goods and services” said to illustrate use for merchandising services. It is convenient to summarise that use here, although I mainly do so because it has particular relevance to my later discussion of the Opponent’s s 42(b) and s 60 grounds. The two marks concerned are the 1984 Mark used during the period 1984 to 2007 and the Opponent’s current logo (“the 2007 Mark”), adopted in 2007, which is shown below:
As Ms Beaumont summarized in her submissions, Mr Vogel’s evidence indicates use of the relevant marks in relation to “clothing and related goods and services” as follows:[10]
The Opponent has offered pyjamas bearing [the 2007 Mark] to its business class customers since 2007 … [and] offered pyjamas bearing [the 1984 Mark] to its first class passengers from at least 2005-2007 and “has provided large numbers of these pyjamas to customers on flights to and from Australia”;
The Opponent has sold and given away hats and caps bearing [the 2007 Mark] since 2007 [and] has made significant sales of its hats and caps bearing the [marks];
The Opponent has sold socks and stockings bearing [the 2007 Mark] in Australia since 2007 [and] has made significant sales;
The Opponent has used its [marks] on its staff uniforms since at least 1974; and
The Opponent has used its [marks] on t-shirts and other goods provided by way of sponsorship, including aprons, gift bags, table centrepieces, and trestle tables.
[10] Mr Vogel also attested to use after the Priority Date but this is omitted here.
Ms Beaumont also referred to the discussion by Hearing Officer Worth in Stephen R Smith v car2go GmbH,[11] a dispute over an essentially identical mark proposed by both parties for use principally in connection with motor vehicle hire services, but where the applicant had also included, inter alia, Class 25 goods in its opposed application. The Hearing Officer concluded the applicant’s Class 25 goods were closely related to the opponent’s earlier registered “Promotion (advertising) of business” services in Class 35 since:
[Clothing, headgear and footwear] are commonly used by businesses as promotional merchandise, so whilst a common manufacturer might not be assumed, deception or confusion may arise by virtue of the mistaken belief that the items are promoting the business of the [o]pponent.
[11] [2013] ATMO 103 at [45]–[52].
Taking the foregoing into account, I confirm I am proceeding on the basis that the description “merchandising services” primarily embraces the buying and selling (and perhaps giving away) of, in principle, any goods, although particularly where concerned with, or relating to, the promotion of, in this case, the Opponent’s principal services of interest. In this regard I am prepared to take judicial notice, as it were, of the fact that the Opponent’s principal services of interest are its airline services, a matter of course confirmed by the totality of the Opponent’s evidence.
That said, I am satisfied that there is some similarity between the Applicant’s Goods and “merchandising services” as described above. Obviously the nexus is somewhat weaker than had the Opponent’s services been, say, “retailing services”,[12] but I do not think it necessary to explore the question any further in this case and I will now turn to the issue of deceptive similarity. In this regard French J explained in Woolworths that:[13]
In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services.
[12] Even retailing services per se would not necessarily be “closely related” to the Applicant’s Goods. See the discussion on this point by Yates J in connection with ss 100 and 101 of the Act in Optical 88 Ltd v Optical 88 Pty Ltd (2010) 275 ALR 526; 89 IPR 457 at [221] and his Honour’s conclusion that, “there is no principle of general application in Australian trade mark law that use of a mark in relation to retail services for goods is use in relation to the goods themselves”.
[13] Op. cit. at [40].
As Ms Beaumont noted, s 10 of the Act provides that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”. She further noted that in order to assess deceptive similarity the parties’ trade marks should not be compared side by side. Rather, I should attempt to assess the effect or impression based on recollection of the 1984 Mark that persons of ordinary intelligence and memory would have and compare this with the impression potential purchasers would have on encountering the Applicant’s Goods advertised or sold under the Opposed Mark. Additionally, she submitted:
…the strength or “fame” of a trade mark must be taken into account when assessing the imperfect recollection of the registered mark: Adidas v Pacific Brand Footwear (No 3) [2013] FCA 905.
Ms Beaumont also referred to the affirmation by French J in Woolworths of the relevant considerations enunciated by Kitto J in Southern Cross:[14]
[14] Op. cit. at [50].
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) To show that a trade mark is deceptively similar to another 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 of deceptive similarity 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) 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.”
Ms Beaumont’s specific submissions as to the deceptive similarity of the parties’ marks essentially echoed those set out in paragraphs 15 and 16 above in relation to substantial identity. In particular, she drew my attention to various similarities in the representations of the parties’ kangaroos and reiterated Mr Vogel’s view that, “The shapes encompassing the silhouetted kangaroo (i.e. triangle shape and the outline of a [T-shirt][15]) are insignificant and inconsequential features of the trade marks as they simply create negative space in which to present the kangaroo silhouette.”
[15] See footnote 5.
In response Mr Edwards pointed out several differences in the representations of the parties’ kangaroos and also argued that the respective T-shirt and triangle backgrounds must be seen as essential, indeed “dominant”, features of the marks as wholes. He noted that the only specific element shared by the marks, use of a kangaroo device, had an overwhelming connotation of having some connection with Australia and was commonly adopted in one form or another, often as part of a logo, by a large number of traders for this purpose. The McInnes declaration, for example, annexes the results of a search of the online Trade Marks Register “in Class 25 for pending and registered trade marks with the part image of a kangaroo”, which located some 205 such registrations as at the Priority Date, (most in separate ownership and none owned by the Opponent). Moreover, Mr Edwards’ own declaration of 6 July 2012 annexes various pictures and other material downloaded from the Internet showing, as one might perhaps expect, significant third party use in Australia of marks or designs featuring a kangaroo in relation to, inter alia, clothing and headgear.
Accordingly, submitted Mr Edwards, the significance of the Applicant’s Goods and the Opponent’s “merchandising services” both having a representation of a kangaroo as part of their branding must be discounted to a large extent and more focus placed on the differences between the marks when compared as wholes.
As regards Ms Beaumont’s submission that “…the strength or ‘fame’ of a trade mark must be taken into account when assessing the imperfect recollection of the registered mark”, Mr Edward pointed out that the fame of the 1984 Mark, which he did not question as such, was entirely in connection with the Opponent’s airline services. The evidence did not disclose any independent reputation in relation to merchandising services or Class 25 goods in particular. Mr Edwards concluded, “You don’t think of an airline when you see a T-shirt”.
I agree on balance with Mr Edwards’ submissions and I have concluded that the Opposed Mark is not deceptively similar to the 1984 Mark as far as the Applicant’s Goods are concerned. I find it difficult to accept the Opponent’s contention that the quite different background shapes in each mark are for some reason not significant when the marks are compared as wholes, particularly where, as Mr Edwards highlighted, use of a kangaroo device by many different traders is undoubtedly very common as signifying some connection with Australia.
While I recognise that various court decisions since Woolworths have indicated the fame of a mark may be relevant to how faithfully it is recollected,[16] “household fame” of the sort that might I think fairly be claimed for the 1984 Mark is usually seen as a factor likely to lessen the risk of deception or confusion arising due to imperfect recollection. In the present case the evidence before me of use of the 1984 Mark over the last three decades invariably shows use with a white coloured kangaroo on a red triangle background and I believe at least these prominent aspects of the mark as a whole, that is the red and white colour scheme with the bright red triangle silhouetting a white kangaroo, would be recalled by most consumers whether or not they could recall any individual features of the kangaroo itself. I do not think a significant number of people with this recollection of the Opponent’s mark, upon encountering the Opposed Mark absent those prominent aspects, is likely to confuse the marks or otherwise to wonder about any commercial connection between the Applicant’s Goods and the Opponent’s merchandising services.
[16] See for example CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 at [52]; Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 at [90]; and Kimberley-Clark Worldwide, Inc v Goulimis (2008) 78 IPR 612 at [43].
In summary, the Opponent’s arguments have not satisfied me that a person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the Applicant’s Goods come from the Opponent merely because the Opposed Mark contains a representation of the head and torso of a kangaroo. To establish deceptive similarity the Opponent must show there is a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient. As indicated above, my conclusion is thus that the Opposed Mark is not deceptively similar to the 1984 Mark and the Opponent has accordingly not established its ground of opposition under s 44.
Section 60
The ground based on s 60 is indicated in the Notice as follows:
Another trade mark had, before the [Priority Date], acquired a reputation in Australia and because of that reputation the use of the Opposed Trade Mark on the goods of the Opposed Application would be likely to deceive or cause confusion. [Section 60]
Section 60 of the Act itself is reproduced below:
Trade 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.
Ms Beaumont noted that the Opponent first used the device of a kangaroo as part of its branding in 1943 when it commenced flights between Sydney and London. Since then the Opponent’s principal trade mark, always featuring a representation of a kangaroo, has been through several iterations,[17] culminating in the two trade marks identified earlier.[18] As mentioned, the 1984 Mark was used during the period 1984 to 2007 and the 2007 Mark, the Opponent’s current logo, was adopted in 2007. It is upon the reputation at the Priority Date of these two trade marks (collectively hereafter “the s 60 Marks”) in particular that the Opponent’s s 60 ground is principally based, although I do accept that the Opponent had also used earlier iterations of a kangaroo based logo between 1943 and 1984. I should also clarify that whereas the 1984 Mark is registered with the triangle background and the 2007 Mark as reproduced in paragraph 24 above has no particular background as such, the evidence shows the 2007 Mark is still used almost exclusively in advertising and on the tails of the Opponent’s aircraft themselves featuring a white kangaroo against a red triangular background. Indeed, the differences between the 1984 Mark and the 2007 Mark as used in this manner is quite minimal and would I think escape the notice of most consumers.
[17] The five different marks involved are shown in paragraph 67 below.
[18] See paragraphs 14 and 24.
As with s 44, then, what needs to be considered in the case of s 60 is the notional use the Applicant might make of the Opposed Mark rather than any actual use that he may have made of it in the past. The issue is whether such use would be likely to deceive or cause confusion in light of the reputation of the s 60 Marks as at the Priority Date.
Ms Beaumont accepted that the relevant reputation in the s 60 Marks was overwhelmingly associated with the Opponent’s airline services rather than its dealings in Class 25 goods. In this regard I note the evidence shows any actual revenue generated through the activities summarized in paragraph 25 above is negligible compared to that generated by the Opponent’s airline services. However she argued the words of Hearing Officer Thompson in Hugo Boss AG v Jackson International Trading Company Kurt D Bruhl Gessellschaft MBH & Co KG were relevant in this case:[19]
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the “recognition” component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the “esteem” component of the reputation as do the public events and other trader's marks with which owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, “contra deals” and so forth.
[19] (1999) 47 IPR 423 at 436.
She continued:
The public perception of how a trade mark is being used, developed and exploited by its owner also factors in to that reputation. This includes a trade mark owner’s propensity towards brand extension and a diversified portfolio of goods and services: Hugo Boss [at 437].
The Opponent submits that the greater the reputation of a trade mark, the wider the range of goods and/or services with which the trade mark is associated, and the closer the similarities between the trade mark and an opposed mark, the greater the chances of the opposed mark being likely to deceive or cause confusion because of the reputation of the other mark.
That the Opponent’s name, business, reputation and marks (especially the [1984 Mark] and the [2007 Mark]) are well known throughout Australia (and internationally) is irrefutable.
In addition to the instances of use of the s 60 Marks for “clothing and related goods and services” summarized in paragraph 25 above, Ms Beaumont went on to highlight the Opponent’s long use of the marks “in relation to its airline and air transport related goods and services and all other goods and services provided by the Opponent over 7 decades”, the extensive revenue generated by the Opponent’s activities and the Opponent’s advertising and marketing activities over the years. She noted, too, that the “Opponent’s planes have borne the [s 60 Marks] on their tails for decades” and that, “In each of the 3 years preceding the [Priority Date], over 26 million passengers flew with [the Opponent] on aircraft bearing [the s 60 Marks].”
Mr Edwards did not dispute the fame of the s 60 Marks, although he did again stress that the reputation enjoyed by the marks was in relation to airline services and that such services were far removed from goods in Class 25.
For my part, I accept that as a consequence of their use over several decades in relation to the Opponent’s airline services and in the Opponent’s associated merchandising and sponsorship activities, the s 60 Marks had the kind of reputation contemplated by s 60 as at the Priority Date. However that reputation notwithstanding, I am not satisfied in this case that use of the Opposed Mark for the Applicant’s Goods was likely to deceive or cause confusion amongst a significant or substantial number of consumers. Indeed, as mentioned in connection with s 44, I believe the extensive and longstanding reputation of the s 60 Marks, almost invariably used as the evidence shows with a white kangaroo on a red triangular background, would in this instance tend to lessen the likelihood of any significant confusion or deception.
I am mindful, too, of the fact that the sole feature the Opposed Mark and the s 60 Marks share is a representation of a kangaroo, (albeit just the head and torso of a kangaroo in the case of the Opposed Mark). I accept Mr Edward’s evidence that many traders, including many traders in Class 25 goods, also feature a representation of a kangaroo in their branding and trade marks to indicate a connection with Australia. The Opponent is accordingly in no position to claim a monopoly in marks of this kind, and certainly not in connection with Class 25 goods in particular.
As already mentioned in the discussion on the s 44 ground, there are to my mind otherwise significant differences between the parties’ marks when considered as wholes, not the least of which being the differing “T-shirt” and triangle backgrounds. Contrary to the Opponent’s submissions, I believe these background shapes are important, memorable and integral features of the respective marks. As mentioned, I think that consumers’ relevant recollections of the Opponent’s s 60 Marks based on the marks’ reputation would almost certainly at least conjure up an image of the mark(s) featuring a white kangaroo against a red triangle background, and quite probably also the idea of airline travel. That being the case, I do not think it likely the ordinary consumer, on encountering the Opposed Mark being used in a “fair and reasonable manner”[20] for “Clothing; footwear; headwear; shirts; [or] T-shirts”, would be relevantly deceived or confused.
[20] These being the often quoted words of Evershed J (as he then was) in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97 at 101.
A matter not mentioned by the Opponent and which I accordingly raised at the hearing was possible use of the Opposed Mark in the same or similar red and white colours as the s 60 Marks. Perhaps given the Opponent’s view that the respective T-shirt and triangle backgrounds were, as Mr Vogel put it, “insignificant and inconsequential features of the trade marks as they simply create negative space in which to present the kangaroo silhouette”, this issue was not pressed. However even taking into account this possibility I believe the various other differences between the Opposed Mark and the s 60 Marks and between the parties’ principal activities of interest obviate the risk of genuine deception or confusion.
To conclude, given the differences between the s 60 Marks and the Opposed Mark when considered as wholes, the fact that it is not uncommon for traders in Class 25 goods to include a representation of a kangaroo as part of their branding or trade marks, and the obvious differences between dealing in Class 25 goods and providing airline services, I am not satisfied use of the Opposed Mark for the Applicant’s Goods would be likely to deceive, or cause confusion amongst, a significant number of consumers. The Opponent has accordingly not established its ground of opposition under s 60.
Section 42(b)
The ground based on s 42(b) is indicated in the Notice as follows:
Use of the Opposed Trade Mark would be contrary to law. [Section 42(b)]
Section 42(b) of the Act is reproduced below:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) …
(b) its use would be contrary to law.
As Ms Beaumont further explained:
The Opponent contends that because of the reputation of the Opponent and its Flying Kangaroo marks,[21] and particularly the 1984 Mark, the use of the Opposed Mark constitutes misleading and deceptive conduct or conduct likely to mislead or deceive in contravention of s 52 of the Trade Practices Act 1974 (or its statutory analogue, s 42 of the Fair Trading Act (NSW)) and/or s 18 of the [Australian Consumer Law (“the ACL”)] in that a significant (or not insignificant) number of the relevant public would be misled into believing that:
(a)The Applicant’s business is that of the Opponent;
(b)His goods bearing the Opposed Mark are those of the Opponent; or
(c)He or his goods have some kind of affiliation with or sponsorship, approval or licence from the Opponent.
…
For similar reasons, use of the Opposed Mark constitutes a false representation contravening s 29 of the ACL (formerly, s 53 of the TPA) and constitutes passing off.
[21] “Flying Kangaroo marks” as used by Ms Beaumont here refers collectively to all of the principal trade marks used by the Opponent since 1944 which included a representation of a kangaroo, (as shown in paragraph 67 below), although as with the Opponent’s s 60 ground, it is principally the 1984 Mark and the 2007 Mark that are relevant to the s 42(b) ground.
I firstly note that the Trade Practices Act 1974 (“the TPA”), which was in force at the Priority Date, is on the face of it the relevant Federal law. (Although containing essentially identical consumer protection provisions, the Competition and Consumer Act 2010, which replaced the TPA and of which the ACL forms Schedule 2, only came into force as from 1 January 2011.) In this regard I note the words of Wilcox J in Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd:[22]
I think that [Counsel] is correct to say that the application of s 42(b) of the Act should be considered as at the priority date, although looking forward to prospective conduct after registration was effected.
[22] (2004) 59 IPR 343 at [47].
Insofar as relevant, ss 52 and 53 of the TPA are accordingly reproduced below:
s 52 Misleading or deceptive conduct
(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
s 53 False or misleading representations
A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:
(a) falsely represent that goods are of a particular standard, quality, grade, composition, style or model or have a particular history or particular previous use;
(c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;
(d) represent that the corporation has a sponsorship, approval or affiliation it does not have.
Referring, inter alia, to Equity Access Pty Ltd v Westpac Banking Corp[23] and the discussion by Yates J in Optical 88 Ltd v Optical 88 Pty Ltd (No 2),[24] Ms Beaumont’s further submissions with respect to the s 42(b) ground were (with footnotes omitted):
For the purposes of the statutory prohibition on misleading or deceptive conduct, or conduct which is likely to mislead or deceive, an assessment is made having regard to the reactions or likely reactions of ordinary or reasonable members of the public in the context in which such people would encounter the conduct.
Conduct will be likely to mislead or deceive if there is a real or not remote chance or possibility of it doing so, irrespective of whether the chance is greater or less than 50%. The conduct need not mislead all consumers in the class. The question of how many consumers of the class need to be misled has been variously expressed as a “not insignificant number” to a “significant” or “substantial” number.
The likelihood of confusion [sic] is increased by the Opponent’s history of sponsorship and merchandising activities, which includes use of the Flying Kangaroo marks on clothing and other goods.
The Opponent has used its Flying Kangaroo trade marks on t-shirts and other goods provided by way of sponsorship, including aprons, gift bags, table centrepieces, and trestle tables. See also the submissions above in the s 60 context relating to use of the Flying Kangaroo trade marks on uniforms, shoes, stockings, caps, hats and pyjamas [summarised in paragraph 25 above].
[23] (1989) 16 IPR 431.
[24] Op. cit. at [336] to [342].
While I do not disagree with these submissions as such, I remain unsatisfied that use of the Opposed Mark for the Applicant’s Goods would amount to any of the offending conduct alleged by the Opponent. Apart from the differences between the parties’ marks as already discussed, I should perhaps also point out that the figures provided by Mr Vogel as to the number of Class 25 goods bearing the Opponent’s marks sold or given away between 2007 and the Priority Date are in any event somewhat modest. Moreover with all of the Opponent’s sponsorship and merchandising efforts whatever goods they involve, it is on the face of it the Opponent’s airline services, rather than the Opponent’s direct involvement with any of the particular goods concerned, with which the public would associate the Opponent and its relevant trade marks. The Opponent’s use of the marks “on its staff uniforms since at least 1974”, or in giving away pyjamas to certain of its passengers, by way of example, does not strike me as increasing the likelihood that the Applicant’s conduct in using its mark would offend as claimed.
I note too that, unlike s 60 of the Act, ss 52 and 53 of the TPA and the tort of passing off are not concerned with behavior that “would be likely to deceive or cause confusion”. The relevant provisions of the TPA require a likelihood that Australian consumers be misled or deceived as to the true origin of the Applicant’s Goods or their connection to the Opponent, rather than mere confusion or simply being caused to wonder as is the case with s 60 of the Act. As for passing off, this has been described as “an action concerned with misrepresentation by which the goodwill of the plaintiff’s business is deflected to the use of the defendant with consequent damage (or a likelihood thereof) to that business.”[25]
[25] Shanahan’s Australian Law of Trade Marks and Passing Off, Lawbook Co., 4th ed, 2008 at [95.1005].
There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct (or, by extension, conduct amounting to the making of false representations or, indeed, passing off) than is the case with trade marks likely to deceive or cause confusion under s 60. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd,[26] by way of example, Gibbs CJ noted with respect to s 52 of the TPA:
In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.
[26] (1982) 1A IPR 684 at 688.
I consider the reasoning set out earlier in rejecting the Opponent’s case based on s 60 of the Act is no less applicable to its claims that the Applicant’s use of the Opposed Mark as at the Priority Date would have breached ss 52 or 53 of the TPA or amounted to passing off. That is to say, given the low inherent distinctiveness of the element common to the parties’ marks and given the other differences between the marks when compared as wholes, I am not satisfied that the reputation of the Opponent’s relevant marks was such that use of the Opposed Mark for the Applicant’s Goods would be likely to mislead or deceive, would amount to the representations alleged, or would constitute passing off. This is particularly so in this case given the obvious differences between the trade in Class 25 goods and the airline services in which the reputation of the Opponent and its trade marks essentially resides.
I thus find that the Opponent has not established its ground under section 42(b) of the Act.
Section 43
The ground based on s 43 of the Act is indicated in the Notice as follows:
Use of the Opposed Trade Mark on the goods applied for would be likely to deceive or cause confusion because of a connotation that the Opposed Trade Mark or a sign contained with [sic] the Opposed Trade Mark has. [Section 43]
Section 43 is reproduced below:
Trade mark likely to deceive or cause confusion
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.
It is well established that to make out this ground there would need to be some connotation inherent in the Opposed Mark such that its use was likely to deceive or cause confusion. In Winton Shire Council v Lomas,[27] for example, Spender J said:
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.
[27] (2002) 56 IPR 72 (at [19])
In Pfizer Products Inc v Karam[28] (“Pfizer Products”), to take a further example, Gyles J put it this way:
‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of some similarity with other marks…
[28] (2006) 70 IPR 599 (at [53])
Ms Beaumont’s submission was that:
In Radio Corporation Pty Ltd v Disney,[29] [“Radio Corporation”] Disney successfully opposed applications for registration of the words MICKEY MOUSE and MINNIE MOUSE in respect of radio receiving sets and kits. In considering the statutory predecessor to s 43 of the Act, Latham CJ held that:
The opponents have, in my opinion, shown that the names and the figures are so closely associated in the public mind, in Australia and elsewhere, with Walter E Disney and his activities, that the use of either the names or the figures in connection with any goods at once suggests that the goods are ‘in some way connected’ with Walter E Disney.
As established by the evidence and described above in the s 60 context, the Opponent’s Flying Kangaroo marks are so well known that they are iconic and, it is submitted, any use of such a device would necessarily imply a connection with the Opponent.
[29] (1937) 57 CLR 448 at 453.
As mentioned earlier (see footnote 21 above), the words “Flying Kangaroo marks” as defined and used by Ms Beaumont above refer collectively to all of the principal trade marks used by the Opponent since 1944 which included a representation of a kangaroo. These are set out below:
1944 1947 1968
1984 2007
On the face of it the only thing these five marks have in common is that they all contain a (different) representation of a kangaroo. What the Opponent effectively submits, then, is that because these marks are “so well known that they are iconic”, “any use of such a device”, (that is, I understand, the device of a kangaroo whether or not realistically portrayed or stylised or accompanied by other elements such as words, a globe, wings or geometric shapes and so on), “would necessarily imply a connection with the Opponent”.
It goes without saying that Mr Edwards disputed this, again pointing out that use of an image of a kangaroo by traders is common and would generally suggest to consumers that the trader had some Australian connection generally rather than a specific connection with the Opponent. I agree with Mr Edwards. Using a representation of a kangaroo as part of one’s branding or trade marks in Australia is not at all comparable to the position in Radio Corporation which concerned the unauthorized use of the original names of Disney’s famous invented characters MINNIE MOUSE or MICKEY MOUSE.
I accept that there is a significant line of authority indicating s 43 might be invoked where, as Gyles J put it in Pfizer Products,[30] the connotation contained within the trade mark is “an implication of sponsorship or association”. Such, I understand, is the case the Opponent seeks to make out here. As discussed earlier, I also accept, as did Mr Edwards, that the Opponent’s marks, particularly the 1984 Mark and the 2007 Mark, would be well known to most Australians, no doubt in connection with its airline services. What I do not accept is that the Opposed Mark, because it contains a representation of the head and torso of one of Australia’s most famous animals, thereby has a secondary meaning implying that the goods with which it is used must have the sponsorship of, or an association with, the Opponent.
[30] Op cit. at [55]. See also Durkan v Twentieth Century Fox Film Corp (2000) 47 IPR 651 (BRAVEHEART THE MUSICAL), Amalgamated Television Services Pty Ltd v Pickard (1999) 48 IPR 133 (SUMMER BAY), Amalgamated Television Services Pty Ltd v Clissold (2000) 52 IPR 207 (HOME & AWAY), McCorquodale v Masterson (2004) 63 IPR 582 (DIANA’S LEGACY & Device) and Marc Chagall Committee v Elite Wines & Spirits (2007) 73 IPR 552 (MARC CHAGALL).
For essentially the same reasons canvassed earlier in connection with the Opponent’s s 60 ground and the issue of deceptive similarity, I do not believe the Opposed Mark is so similar to any of the Opponent’s “Flying Kangaroo marks” when the marks are compared as wholes that the connotation alleged by the Opponent is likely to arise at all as far as most members of the public were concerned. I do not in any event think the average consumer of Class 25 goods is likely to be deceived or confused or be caused to wonder about the existence of any formal or commercial relationship between the Applicant and the Opponent.
In McCorquodale v Masterson[31] Kenny J noted at [26] that:
In order for s 43 to apply, the court must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations: see, for example, the discussion in Down to Earth (Victoria) Co-operative Society Ltd v Schmidt (1998) 41 IPR 632 at 644–5.
[31] (2004) 63 IPR 582 at [26].
I am not so satisfied, particularly when the differences between the parties’ principal activities, or proposed activities, under their respective trade marks is also taken into account. The opposition ground based on s 43 of the Act is therefore not established.
Section 58
The ground based on s 58 is indicated in the Notice as follows:
The Applicant is not the owner of the Opposed Trade Mark. [Section 58]
Section 58 itself is reproduced below:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
To establish its s 58 ground the Opponent would need to show a party other than the Applicant first used the Opposed Mark, or a mark substantially identical thereto, in Australia, for goods or services adjudged to be “the same kind of thing” as the Applicant’s Goods. The use must have taken place before the Priority Date, or before the Applicant’s first use of the Opposed Mark for relevant goods, whichever is the earlier.[32]
[32] Re Hicks’ Trade Mark (1897) 22 VLR 636; Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375.
The Opponent points to its own use of the 1984 Mark as entitling it to claim ownership of the Opposed Mark. As Ms Beaumont put it:
There is unequivocal evidence summarised in the s 60 submissions above that prior to 16 April 2010, the Opponent has used the Flying Kangaroo marks and, in particular, the [1984 Mark], in relation to Qantas staff uniforms and also pyjamas, socks and stockings and other clothing [being polo shirts and caps]. These are plainly the same or the “same kind of thing” as the [Applicant’s] Goods.
The claim to ownership is thus dependent on, inter alia, my finding that the Opposed Mark is the same as, or substantially identical with, the 1984 Mark. Obviously the marks are not the same. I have already found that the Opposed Mark is not substantially identical with the 1984 Mark in connection with the Opponent’s s 44 ground (see paragraphs 13 to 18 above).
The opposition ground based on s 58 of the Act is therefore not established.
Decision
Section 55(1) of the Act relevantly provides that, 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.
I have found the Opponent has not established any of the grounds it pressed pursuant to ss 42(b), 43, 44, 58 or 60 of the Act. The Opposed Mark may accordingly 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
Both parties requested an award of costs in their favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.
Michael Kirov
Hearing Officer
Trade Marks Hearings
9 May 2014
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