QANTAS Airways Ltd v Danniel Amadio

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 1282712(33) - FLYING KANGAROO (Words) - filed in the name of Danniel Amadio.

Delegate:

Iain Thompson

Representation:

Opponent: Mr Matthew Darke of Counsel instructed by Li Yen Ng assisted by Ms Tova Gordon, of Minter Ellison Lawyers

Applicant: Ken McInnes of Hodgkinson McInnes Patents

Decision:

2011 ATMO 84

s52 opposition - ss42(b) & 60 of the Act. Use as trade mark by opponent not established under s60 but public use of sign sufficient to trigger s42(b) of the Act via section 52 of the Trade Practices Act 1974.

Application refused registration

Background

These proceedings under the Trade Marks Act 1995 (‘the Act’) arise from the filing of a trade mark by Danniel Amadio of Felixstow, South Australia. Current details of this application are:
Application No:        1282712
Priority Date:            29 January 2009
Goods:Class 33: Wines, white wines, red wines, sparkling wines, beverages containing wines
Trade Mark:              FLYING KANGAROO
(‘the opposed trade mark’)
After examination of the application it was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 28 May 2009.
On 28 August 2009 QANTAS Airways Limited of Mascot, New South Wales, (‘the opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The grounds cited in the Notice include those under sections 42(b) and 60 which were subsequently argued at the hearing. For the sake of completeness, I find that the other grounds cited in the Notice (those under sections 39, 41, 43, 44, 58, 59, 61 and 62) have not been established.
The opponent filed evidence in support of its opposition, a statutory declaration by Cassandra Jane Hamlin who is Company Secretary of the opponent. The applicant has not served and filed evidence in answer.
The matter came before me as a delegate of the Registrar of Trade Marks at a hearing in Sydney on 17 February 2011. Mr Matthew Darke of Counsel instructed by Li Yen Ng, assisted by Ms Tova Gordon, of Minter Ellison Lawyers (‘Minters’) represented the opponent. Ken McInnes of Hodgkinson McInnes Patents represented the applicant.
The Evidence
Ms Hamlin explains that the opponent was established in 1922 and has come to be an airline employing approximately 35,000 people and offers services across a network spanning 173 destinations in 42 countries around the world (including those covered by code-share partners) in Australia, Asia and the Pacific, the Americas, Europe and Africa.
Ms Hamlin states that the opponent has, over the years, used a depiction of a kangaroo in mid-hop on its aircraft, and elsewhere, as a trade mark. This graphical device has come to be known as ‘the flying kangaroo’.
A brief history of the use of a depiction of this kangaroo on its aircraft occurs on the QANTAS website and is exhibited with Ms Hamlin’s evidence. According to the website:
The original Kangaroo symbol appearing on Qantas aircraft was adapted from the Australian one penny coin. This design was used subsequently by TAA (later Australian Airlines) as part of its emblem and now features as the centrepiece of the roundel adopted by the Royal Australian Air Force in 1956. It later became part of the insignia of all Australia’s Armed Services.
The kangaroo was painted beneath the cockpit of Qantas’ first Liberator aircraft G-AGKT during its conversion at Brisbane’s Archerfield airport in October 1944, following Qantas’ decision to name its Indian Ocean passage the Kangaroo Service. The symbol featured on all later aircraft.
The winged kangaroo symbol was created by Sydney designer Gert Sellheim, and first appeared in January 1947 to coincide with Qantas’ introduction of Lockheed L749 Constellations. These aircraft began operating on the UK service in December 1947. They were the first Qantas aircraft to carry the Flying Kangaroo and the first to operate right through to London with Qantas crews. The Flying Kangaroo was later placed in a circle.
In June 1984 Qantas unveiled an updated logo conceived by Tony Lunn of the Lunn Design Group, Sydney. The Flying Kangaroo lost its wings once again and was refined to a more slender, stylised presentation.
A logo created for the airline’s 75th anniversary year was added to all Qantas jet aircraft in 1995. Designed by Ken Cato, it brought together the Flying Kangaroo symbol and the words ‘75 years’ to mark Qantas’ contribution to civil aviation.
In July 2007, Qantas unveiled a new interpretation of its iconic logo, designed to reflect the changing structure of the airline’s new generation aircraft, and keeping with Qantas’ increasing focus on contemporary design for its in-flight and on-the-ground products.
Designed by Hans Hulsbosch of Hulsbosch Communications, the new Flying Kangaroo is sleeker and more contoured than previous versions.
It is also useful to my reasoning in this decision to consider this history in the words of Ms Hamlin:
In 1943, the Opponent began offering flights between Sydney and London via an Indian Ocean route. It coined this service the “Kangaroo Service” or “Kangaroo Route”. This was the first time that a trade mark with a kangaroo association was used by the Opponent. Advertisements for the “Kangaroo Service” featured:
(a)         the words “Kangaroo service”;
(b)         a picture of a kangaroo in mid hop (with or without wings);
(c)a logo showing a kangaroo in mid hop in a circle with the words “Kangaroo Service”; or
(d)         a combination of any of the above three features.
Exhibited hereto and marked Exhibit CJH-1 are copies of posters for the Kangaroo Service produced in approximately 1954.
The original design of the Opponent’s kangaroo logo was developed in 1944 for the Opponent’s Kangaroo Service and showed a realistic depiction of a kangaroo in mid hop in a circle with the words “QANTAS EMPIRE AIRWAYS” and “KANGAROO SERVICE” appearing prominently. This original kangaroo logo was adapted from the Australian one penny coin. It was painted underneath the cockpit of the Opponent’s first Liberator aircraft and was then used on all of its other aircraft.
The kangaroo logo was subsequently updated in 1947 to depict a stylised kangaroo figure with wings, which was referred to as the FLYING KANGAROO. In this Statutory Declaration, I refer to this logo and its subsequent incarnations as the “FLYING KANGAROO logo”. The original FLYING KANGAROO logo was designed by Gert Sellheim, a Sydney designer and was first used in January 1947 to coincide with the Opponent’s introduction of Lockheed L749 Constellation aircrafts.
The FLYING KANGAROO logo has undergone modifications since that time, but has retained the key feature of a FLYING KANGAROO. Since its first adoption, the FLYING KANGAROO logo has featured on all the Opponent’s planes, the Opponent’s other goods and services and extensively in its inflight magazines and its marketing and advertising campaigns. As stated above, every year, millions of passengers fly with the Opponent and are exposed to the FLYING KANGAROO logo.
In short, both the opponent, and its very well-known KANGAROO logo which appears below in its 1985 iteration have come to be known and referred to by itself and the public as ‘the flying kangaroo’.
(‘the QANTAS logo’)
This use of the expression ‘the flying kangaroo’ occurs in at least one of the opponent’s advertisements, the titles and content of newspaper and magazine articles and is used by the travel industry generally to refer to the opponent.
The opponent claims in its evidence that this use of the expression ‘the flying kangaroo’ by itself and others to refer to both the leaping kangaroo logo and itself has been as a trade mark in its own right. In the words of Ms Hamlin:
Furthermore, the FLYING KANGAROO logo is universally recognised and has such distinctiveness that the words “flying kangaroo” which initially may have been descriptive of the logo, have now achieved recognition as a trade mark in their own right; such that when commentators and third parties refer to the Opponent, they often refer to the FLYING KANGAROO. Indeed, as the examples set out in this Statutory Declaration show, the words FLYING KANGAROO are synonymous with the Opponent. In addition, consumers and third party commentators who encounter the FLYING KANGAROO logo form a direct association with the Opponent in their minds. When they refer to or speak about the FLYING KANGAROO logo, they refer to it as the “FLYING KANGAROO”. In this way, the significant use of the FLYING KANGAROO logo by the Opponent, reinforces and strengthens the reputation of the FLYING KANGAROO trade mark.
Examples in evidence of the uses of the words ‘the flying kangaroo’ in relation to the opponent include:
The following publications contain the following sentence: “The flying kangaroo was now a familiar figure in 23 countries on five continents right around the globe”:
(a)The publication “Wagon Wheels”, published in approximately 1966, Exhibit CJH-6 contains an excerpt of the publication.
(b)The publication “Pioneers of Flight, An abridged history of Qantas Airways”, published in approximately 1971, Exhibit CJH-7 contains an excerpt of the publication.
(c)The publication “The Spirit of Australia, Qantas Airways” that was published in approximately 1980, Exhibit CJH-8 contains an excerpt of the publication.
(d)The publication “Beyond the Dawn, A brief history of Qantas Airways” that was published in approximately 1995 also contained the words “The Qantas Flying Kangaroo was now a familiar sight at airports in 23 countries”. Exhibit CJH-9 is an excerpt of that publication.
(e)In a television commercial produced by the opponent and included as Exhibit CJH-4 to Ms Hamlin’s declaration. The following lines are quoted from the transcript:
“They’re the Aussies who own Qantas, you’re one of them— yes you, The all Australian owners of the Flying Kangaroo”
The opponent does not give a date for the advertisement referred to in subparagraph (e) above, which was aired on national television during, I believe, the late 1970s or early 1980s.
The opponent also presses its connection and reputation in relation to ‘wines’.
Ms Hamlin states that the opponent’s connection and reputation in relation to wines, particularly Australian wines, can be gauged by considering her evidence of the opponent’s:
·     In-flight wine service
·     In-flight Guide to Wine, a guide to wines available to first-class and business passengers provided on board its aircraft.
·     Promotion and support of the Australian wine industry
·     Wine panel which selects wines to be included for in-flight service
·     Sommelier in the Sky training program
·     Offers of wine tours on its website
·     Recognition by the wine and related industries for excellence.
Ms Hamlin provides extensive evidence supporting each of the above claims. For example:
Sommelier in the Sky wine training program
The Opponent has also established the “Sommelier in the Sky” wine training program. The Sommelier in the Sky program is an innovative and exhaustive wine education course taken by particular flight attendants so that they may attain a knowledge of wine that is comparable to that of sommeliers in fine dining restaurants. The program was developed in conjunction with Wine Australia’s education program, “Australia: World Class”, an online wine education platform, accessible from Flight attendants who have completed the Advanced level of the Sommelier in the Sky program wear a silver badge with a picture of grapes on the lapels of their uniform. A picture of the silver badge is seen at page 9 of Exhibit CJH-18.
Wine tours
The Opponent also offers various international and national wine tours under its “Activities and Experiences” offering. These tours are advertised on the Opponent’s website which always prominently features the FLYING KANGAROO logo.
These tours are held in prime vineyard and winemaking destinations both nationally and around the world. Exhibited hereto and marked Exhibit CJH-19 are printouts from the Opponent’s website of information regarding the following tours:
(a)         1 Day Best of Barossa;
(b)         Hunter Valley Tour: Behind the Scenes at Boutique Wineries with tastings and Gourmet Lunch — Tour from Sydney;
(c)          The Wine Road through Provence — Tour from Nice;
(d)         Chianti Sightseeing tour;
(e)         Wine Tasting at 0 Chateau’s Wine Cellars, Paris; and
(f)          Wine Tasting at Lison Pramaggiore DOC — Small Group Tour from Venice.
The applicant, as I have noted, has not served and filed evidence in answer.
Onus
It is the practice of the delegates of the Registrar to follow Pfizer Products Inc v Karam [2006] FCA 1663, as regards onus. Gyles J said of the onus in trade mark oppositions:
I am faced with the clear words of the statute, on one hand, and the opinions of various judges, on the other. There is no binding Full Court authority. I cannot find any instance where a single judge has actually applied the higher standard. In my opinion, in this case, comity does not demand that I depart from my view as to the meaning of the statute. ‘The fundamental responsibility of a court when it interprets a statute is to give effect to the legislative intention as it is expressed in the statute’ per Mason J in Babaniaris v Lutony Fashions Pty Ltd [1987] HCA 19; (1987) 163 CLR 1; cited with approval by Mason CJ, Wilson, Dawson, Toohey and Gaudron JJ in John v Federal Commissioner of Taxation [1989] HCA 5; (1989) 166 CLR 417 at 439. I will, therefore, approach the matter on the basis that the opponent has to establish a ground of opposition, although not clearly establish such a ground, whether in a summary fashion or otherwise.
See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26]. The standard of the onus may nevertheless still be considered a live issue although, in my opinion, it has not been changed by the more recent decision of Lander J in Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94 whose words at paragraphs 54-55 were clearly obiter and his Honour was in any event discussing section 56 of the Act rather than section 52:
In Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131 I said that I should follow the decision in Lomas because it was a decision of the Full Court and I should follow Bennett J’s decision in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901; 132 FCR 326 as a matter of comity and because other judges of the Court had followed that decision.
That is still my opinion. It may be, as Gyles J has pointed out, that the decision in Lomas was obiter and does not strictly need to be followed but it is a decision of the Full Court in circumstances where there are competing lines of authority at first instance which have left judges of this Court divided. The conflict cannot be resolved at first instance and must be resolved in the Full Court. As I indicated in Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131, I favour the reasoning of Gyles J in Clinique Laboratories Inc v Luxury Skincare Brands Pty Ltd [2003] FCA 1517; 61 IPR 130 but thought because of Lomas v Winton Shire Council [2002] FCAFC 413; [2003] AIPC 91-839 and comity I should follow the other line of authority. That is still my view, notwithstanding the criticism of that approach in Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787. [Stress added]
I will accordingly decide this matter on the balance of probabilities, although if I adopted the higher standard referred to by Lander J, my decision in relation to these proceedings would be unaltered.
Submissions
It is the opponent’s submission that its evidence shows that its use of the trade mark FLYING KANGAROO (words) is such that its use by a person other than the opponent in relation to ‘wines’ would (because of the reputation of the trade mark and opponent’s connections with wines and the wine industry) be confusing or deceptive in terms of section 60 of the Act. In the alternative, the opponent submits that, failing the establishment of use by the opponent of the sign as a trade mark, the use of the expression ‘flying kangaroo’ (words) in relation to ‘wines’ would (because of reputation of the expression in connection with the opponent and with the opponent’s connections with wines and the wine industry) mislead or deceive in terms of section 52 of the Trade Practices Act 1974 (‘the TPA’).
Mr McInnes, for the applicant submitted that the uses of the expression ‘the flying kangaroo’ in the opponent’s evidence does not disclose use of the expression ‘flying kangaroo’ as a trade mark and that the opponent’s use of the QANTAS logo as a trade mark is not a use of the expression ‘flying kangaroo’ as a trade mark. He also argued that the use of the word ‘kangaroo’ and of the device of a KANGAROO by other traders in many fields in order to show their ‘Australian-ness’ are myriad and that the applicant’s proposed use is just one such use.
Section 60
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.
In terms of the arguments of the parties at the hearing, it is for the opponent to establish that:
·     the sign it relies on is a trade mark;
·     and has been used by the opponent as a trade mark;
·     which has acquired a reputation in relation to goods or services[1]; and
·     because of that reputation, the use of the opposed trade mark would deceive or confuse.
[1] See section 17 at paragraph 26.
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.
The word ‘sign’ is defined in section 6 as:
the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
And section 7 provides:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
(2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.
(3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.
(4)In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).
(5)In this Act:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

The cases show that the questions of whether a sign is a trade mark and whether that sign has been used by a person as a trade mark are intertwined. In The Coca-Cola Company v All-Fect Distributors Ltd (T/As Millers Distributing Company) (1999) 47 IPR 481, Black CJ, Sundberg and Finkelstein JJ said at pages 489 to 490:
Under the 1955 Act a registered mark was infringed by someone who “uses a mark which is substantially identical with, or deceptively similar to, the trade mark, in the course of trade”. In Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407; 1B IPR 523 it was said to be implied in both ss 58(1) and 62(1) of the 1955 Act that the “use” there referred to is limited to use “as a trade mark”. Section 120 of the current Act expressly incorporates that requirement. Counsel for the respondent submitted that whether the respondent was using the sign as a trade mark depended on the answer to the question — “Do I, just by looking at the confectionary, conclude that the shape is put there to tell us that the Coca-Cola Co is the manufacturer of those goods?” This formulation, it was said, was an adaptation of what Kitto J had said in Shell. In our view counsel’s formulation is not a correct adaptation and does not ask the right question. Use “as a trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods: see Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 341, 351; 21 IPR 1. That is the concept embodied in the definition of “trade mark” in s 17 — a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.
The authorities provide no support for the view that in determining whether a sign is used as a trade mark one asks whether the sign indicates a connection between the alleged infringer’s goods and those of the registered owner. Cases such as Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 at 204–5 ; 1A IPR 470, the Shell case at CLR 425, Johnson & Johnson at FCR 347–8, 351, Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89 at 134–45 ; 28 IPR 193 and Musidor BV v Tansing (t/as Apple House Music) (1994) 29 IPR 203 at 213, 216 show that the question is whether the sign used indicates origin of goods in the user of the sign; whether there is a connection in the course of trade between the goods and the user of the sign. Thus in Shell at CLR 424–5; IPR 534 Kitto J, with whom Dixon CJ, Taylor and Owen JJ agreed, said:
Was the appellant’s use, that is to say its television presentation, of those particular pictures of the oil drop figure which were substantially identical with or deceptively similar to the respondent’s trade marks a use of them “as a trade mark”?
With the aid of the definition of “trade mark” in s 6 of the Act, the adverbial expression may be expanded so that the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connection in the course of trade between the petrol and the appellant. Did they appear to be thrown on to the screen as being marks for distinguishing Shell petrol from other petrol in the course of trade?
And later his Honour said:
no viewer would ever pick out any of the individual scenes in which the man resembles the respondent’s trade marks, whether those scenes be few or many, and say to himself: “There I see something that the Shell people are showing me as being a mark by which I may know that any petrol in relation to which I see it used is theirs.”
The emphases are ours.
It is possible to paraphrase the above quotation from Shell, in the context of the present opposition, as follows:
Were the opponent’s uses of the sign FLYING KANGAROO (words), that is to say in the books, newspaper and magazine articles, industry commentary and the 1980s television advertisements, of that particular expression which were substantially identical with or deceptively similar to the opposed trade mark a use of them “as a trade mark”?
With the aid of the definition of “trade mark” in section 6 of the Act, the adverbial expression may be expanded so that the question becomes whether, in the setting in which the particular words referred to were presented, they would have appeared to the reader or hearer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to airline services for the purpose of indicating, or so as to indicate, a connection in the course of trade between the services and the opponent. Did they appear to be published by the opponent as being trade marks for distinguishing QANTAS airline services from other airline services in the course of trade?
The newspaper and magazine articles and industry commentary in evidence in which the expression “flying kangaroo” appears are not in the character of devices or brands that the opponent used in relation to airline services. Necessarily, those words were being used by the writers of articles about the airline.
Similarly, the uses of the words in books, albeit books which have been sold by the opponent, appear to me to have even less claim to any status of use as a trade mark than the oil drop characters in Shell’s television commercial. In the context of these books, the words “flying kangaroo” appear in the expression “The flying kangaroo was now a familiar figure in 23 countries on five continents right around the globe.” In the context of a substantial publication, the expression disappears in a mass of text and is furthermore not used in the course of trade in relation to any particular goods or services.
The highest, I consider, that the evidence comes to show use of the words “flying kangaroo” by the opponent as a trade mark comes within the 1980s television commercial at CJH-4 to Ms Hamlin’s declaration which evidences use of the words:
“They’re the Aussies who own Qantas, you’re one of them— yes you, The all Australian owners of the Flying Kangaroo”.
However, it is not obvious to me why this use of the expression ‘the FLYING KANGAROO’ should be found to be trade mark use, any more than the fleeting and changing images of an oil drop were in the Shell case. And, if that use was as a trade mark, that use was (by my recollection) well over twenty years ago. It appears to me to be a stretch to find that the words “flying kangaroo” have a reputation in Australia as a trade mark, based solely on their use as words in a jingle within a television commercial so long ago. Further, the advertisement is more readily understood as referring to the then public ownership of the opponent, rather than referring to its trade mark.
There is a second strand to the opponent’s claims to have used the words “flying kangaroo” as a trade mark. It is the opponent’s submission that the QANTAS logo which appears at paragraph 10 of these reasons has been identified by the opponent, commentators and other third parties as being ‘the flying kangaroo’ (words) to the extent that the words and device have become interchangeable. However, in terms of section 7 of the Act, I may only find that the opponent has used the expression ‘flying “kangaroo’ as a trade mark if the expression is an alteration or addition to the leaping kangaroo logo which appears at paragraph 10 above (and which I do accept has enjoyed considerable use as a trade mark) does not substantially affect its identity.
The case which appears to most support the opponent’s submissions in this regard is E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 where French CJ, Gummow, Crennan and Bell JJ stated at paragraph 67:
Lion Nathan contended before the primary judge that use of a trade mark consisting of the word BAREFOOT in combination with the device was not use of the registered trade mark, which was the word BAREFOOT simpliciter. The primary judge correctly rejected this submission. The Full Court did not deal with this issue.
In support of this contention Lion Nathan relied on Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506. The registered trade mark in that case was for the word “Colorado”, which, by reason of its geographical significance, was not inherently adapted to distinguish the owner’s goods from the goods of other persons as required by s 41(3) of the Trade Marks Act. As noted by Gyles J, it was difficult to obtain registration of a geographical name as a trade mark under the Trade Marks Act 1955 (Cth) by reason of s 24(1)(d) of that Act[52]. The trade mark for the word “Colorado” had been used in conjunction with a mountain peak device, which reinforced the geographical connotation of the word. Allsop J found that the mark used was a composite mark and that the mountain peak device was not a mere descriptor but a distinguishing feature.
This is to be contrasted with the position in this case. The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which “do not substantially affect the identity of the trade mark”. Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).
However, in this matter the question is whether the expression ‘flying kangaroo’ and the QANTAS logo are interchangeable because of a lack of substantial alteration of identity, rather than if the addition of the expression ‘flying kangaroo’ to the QANTAS logo would be an alteration substantially affecting the identity of the logo.
For example, in terms of the decision in Gallo above, the representation of a plain unicorn along with the word UNICORN on the one hand might be substantially identical to the word UNICORN (or the same UNICORN logo without the word) on the other – but that does not go as far as finding that the word UNICORN and the device of a unicorn are substantially identical – although they may obviously be deceptively similar.
Furthermore, in this case, even though the QANTAS logo may have become known as the ‘flying kangaroo’, there are other more obvious methods of depicting such an animal. I therefore do not consider that the words and the logo are interchangeable. It follows that the change of the opponent’s QANTAS logo to the words “flying kangaroo” is an alteration which substantially affects the identity of the trade mark. Because such an alteration is one which substantially affects the identity of the QANTAS logo, it is not possible in terms of subsection 7(1) to find, based on the opponent’s use of the QANTAS logo, that the opponent has used the expression “flying kangaroo” as a trade mark.
I will add that there is another strand in my hesitation in accepting the submission of Mr Darke (and the thrust of the evidence) that the expression ‘flying kangaroo’ and the QANTAS logo of the opponent are interchangeable. That hesitation is brought about by the fact that the evidence shows that the expression ‘flying kangaroo’ is used as frequently to refer the opponent (QANTAS) itself as it is to the QANTAS logo. This is apparent in words of the jingle within the opponent’s 1980s television advertisement which appears above, and in the newspaper and magazine articles about the opponent.
Thus, while it may well be that the opponent has used the words FLYING KANGAROO as a trade mark, this use is not reflected in the evidence before me.
The evidence shows that the QANTAS logo and the phrase the flying kangaroo have both become synonymous with the opponent and its services (see para 88 below). It may well be therefore that the expression “the flying kangaroo” has in fact been used as a trade mark by the opponent. However, the opponent has not made out its opposition in terms of section 60 of the Act because none of the evidence before me shows the phrase “the flying kangaroo” in use as a trade mark. It has not established to my satisfaction that the expression ‘flying kangaroo’ has been used by it as a trade mark. As such, there is no trade mark of the opponent which could have a reputation in terms of section 60.
Section 42
Section 42 relevantly provides:
Trade mark scandalous or its use contrary to law
42. An application for the registration of a trade mark must be rejected if:
(a) […]
(b) its use would be contrary to law.
Following the decision in Advantage-Rent -A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, delegates of the Registrar of Trade Marks have decided matters under laws other than the Act where such laws are argued in terms of subparagraph 42(b). In Advantage Madgwick J said:
I acknowledge the claim made by counsel for the Registrar that such an approach requires the Registrar to look at questions of law outside his or her expertise and that this can be difficult and may place a large and onerous responsibility upon the Registrar. However, the Registrar has the comfort that the criterion is that the use “would” not “could” be contrary to law. Further, there is no reason why the Registrar could not seek legal advice before forming his/her opinion. It should also be noted that what is required is that the Registrar form a view as to whether the use of a trade mark would be contrary to law. Such opinion does not have a similar effect to say, a judicial conclusion of law as to breach of copyright in copyright proceedings; the effect is limited to the refusal of registration. In any case, an appeal de novo lies from the Registrar’s decision to this Court where any error of the Registrar may be corrected.
Mr Darke argued, in terms of section 52 of the Trade Practices Act 1974 that the use of the opposed trade mark by the applicant would, because of the reputation and identification of the expression ‘flying kangaroo’ with the opponent, and the opponent’s connection and reputation in relation to wines and the wine industry, mislead or deceive.
Although the TPA has been superseded by the Competition and Consumer Act 2010, and there have been changes to the law brought about by the Australian Consumer Law (ACL) which forms part of the renamed TPA, what I am to consider is the law which applied at the priority date of the opposed application. In the words of Wilcox J in Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd (2004) 59 IPR 343, at [47]:
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.
Section 6 of the TPA provides that certain provisions apply to persons who are not corporations under the following circumstances:
(2) This Act, other than Parts IIIA, VIIA and X, has, by force of this subsection, the effect it would have if:
(a) any references in this Act other than in section 45DB, 55 or 75AZH to trade or commerce were, by express provision, confined to trade or commerce:
(i) between Australia and places outside Australia; or
(ii) among the States; or
(iii) within a Territory, between a State and a Territory or between two Territories; or
(iv) by way of the supply of goods or services to the Commonwealth or an authority or instrumentality of the Commonwealth;
I am satisfied that section 6 of the TPA is cast sufficiently widely that section 52 of the TPA operates in circumstances where a person (the applicant) who is not a corporation has, by virtue of the filing of an application to register a trade mark, an implied intention or capacity under the Act to use that trade mark, if registered, throughout Australia.
Section 52 if the TPA provides:
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.
(2) Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1).
The principles to be applied in the circumstances of this matter are those referred to in Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506; (1989) 16 IPR 431 at 440-442 where Hill J set out the following principles:
1. For conduct to be misleading or deceptive the conduct must convey in all the circumstances of the case a misrepresentation:
2. There will however be no contravention of section 52 of the Act unless error or misconception results from the conduct of the [person] and not from other circumstances for which the [person] is not responsible:
3. Conduct will be likely to mislead or deceive if there is a “real or not remote chance or possibility” of misleading or deception regardless of whether it is less or more than 50%. The question of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective question which the Court must determine for itself. Hence evidence that persons in the relevant class have been misled will, although admissible, not be determinative. In some cases however such evidence will be very persuasive.
4. Conduct of a [person] causing mere confusion or uncertainty in the minds of the public in the sense that they may be caused to wonder whether two products may have come from the same source is not necessarily coextensive with misleading or deceptive conduct: Since actual deception need not be shown the Court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived: The test in passing off cases is usually expressed as being whether a “substantial number of persons likely to become purchasers ... are liable to be deceived by the defendant’s use of the name. On the other hand it is not necessary to show that all, or substantially all, persons in the market associate the name with the plaintiff’s goods, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question.”
5. In a case such as the present the applicant must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant’s business in a particular country or geographical area. However at least in some circumstances very slight activities may be found to be sufficient to establish that a name has become distinctive of a person’s business in a particular country.
6. Section 52 is not confined to conduct which is intended to mislead or deceive and a [person who] acts honestly and reasonably may none the less engage in conduct that is likely to mislead or deceive.
The expression ‘flying kangaroo’ is, to judge by the evidence, widely identified with both the opponent and its operations and with its QANTAS logo which appears at paragraph 10 of these reasons. The expression ‘flying kangaroo’ is broadly used by industry commentators, in newspaper and magazine articles, and in books with the knowledge of the writers that when they use this expression it will be immediately understood by their audience as referring to the opponent or its trade mark.

Although both the word ‘kangaroo’ and the graphical device of a kangaroo are widely understood as referring to Australia, or ‘Australian-ness’, as submitted by Mr McInnis, the collocation of the words ‘flying’ and ‘kangaroo’ is one which is unusual and is almost universally identified within Australia with both the opponent and its leaping kangaroo logo.
The opponent has also associated itself strongly with the wine industry and the evidence shows that it is widely known to provide quality wines on its flights, in particular to business and first class passengers. I have quoted from Ms Hamlin’s declaration in this regard to illustrate this point – the opponent, according to this evidence, has thoroughly associated itself with the wine industry, and the wines it serves, on a number of levels and these are features of the way in which the opponent advertises and promotes its services.
Consequently, it is almost inevitable, I consider, that a significant number of people on seeing a bottle of the applicant’s wine with the trade mark FLYING KANGAROO upon it will be mislead into believing that it has the endorsement or approval of the opponent or it is a wine which has been selected by the opponent for service to passengers on its airline flights, or in the frequent flyer facilities of the opponent.
The opponent has established its opposition in terms of subparagraph 42(b) of the Act.
Decision
Section 55 of the Act relevantly provides:
Decision
55. 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 refuse to register application 1282712.
Costs
The opponent, having been successful, is entitled to its costs which I award at the official scale against the applicant.
Iain Thompson
Hearing Officer
Trade Marks Hearings
25 August 2011

[2011] ATMO 84

25 August 2011