R & C Products Pty Ltd. v Technicolor Inc

[1992] ATMO 11

TRADE MARKS ACT 1955


DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by TECHNICOLOR INC. to Application No. 440891 in the Name of R & C PRODUCTS PTY LIMITED

Application no. 440891 in the name of R & C PRODUCTS PTY LIMITED, a company incorporated under the laws of the Australian Capital Territory, of 845 Pacific Highway, Chatswood, New South Wales ("the applicant"), was lodged on 18 February 1986 and advertised accepted on 3 March 1988. The trade mark sought to be registered consists of the words DECORE TECHNICOLOUR in respect of the following specification of goods:

Hair care preparations and treatments in this class including shampoos and conditioners; all other goods in this class

being International Class 3.

On 3 June 1988 in accordance with the provisions of s49 of the Act notice of opposition to the registration of the trade mark was lodged by TECHNICOLOR INC., a corporation organized and existing under the laws of the State of Delaware, of 4050 Lankershim Boulevard, North Hollywood, California, United States of America ("the opponent").

Evidence in support of the opposition consisting of a declaration by Andros Chrysiliou was served on the applicant on 5 September 1989  The applicant's evidence in answer to the opposition was served on the opponent on 25 October 1989. It comprised a declaration by Gail Maree Hill. The opponent completed service of its evidence in reply to that declaration on 25 November 1990. The evidence consisted of declarations by Andros Chrysiliou and affidavits by Anne Priscilla Johnson, Bernard O'Donoghue, Richard Malcolm White and David Abdoo. The matter came on for hearing in Sydney on 30 July 1990. The opponent was represented by Mr Andros Chrysiliou of Chrysiliou Moore Chrysiliou and Ms Gail Hill of F.B. Rice & Co appeared for the applicant.

Although the notice of opposition was widely drawn Mr Chrysiliou stated at the outset that the opponent intended to rely on three main grounds: the proprietorship of the mark, section 28 of the Act and the Registrar's discretion to refuse the application.

On the question of proprietorship Mr Chrysiliou referred me to Aston v Harlee Manufacturing Co (1960) CLR 391 where it was said by Fullagar J that a claim to proprietorship contained three elements: the authorship of the mark, the intention to use the mark in connection with certain goods and the applying for registration. He submitted that this could not apply to the situation where a trader in this country adopts from overseas a famous mark which is also an invented word, which is so in the case of "technicolour". The applicant by combining a famous trade mark with its own leading house mark was seeking to take advantage of the goodwill of the opponent. He submitted that the word "technicolour" is not an ordinary dictionary word but that its only significance is as a proprietary name and trade mark of the opponent. In this regard he referred to Levi Strauss & Co. v Amco Clothing Co. Pty Ltd [1968] AOJP 1581 where the Assistant Registrar pointed out that there was no decision of the courts which indicated that the casual, careless or humorous use of what might be a trade mark necessarily caused it to become a generic term. He also referred to the Manganin case [1967] RPC 271 where it was found that dictionary definitions are not always reliable. Registration of the applicant's mark, he said, would interfere with the rights of other persons: Re Hicks' Trade Mark (1897) 22 VLR 636; Aston v Harlee (supra). The registration should not be allowed because the opponent's trade mark was a valuable coomercial property in the nature of an acquired right and registration by the applicant would interfere with the opponent's right of commercial exploitation of its famous mark. The applicant was seeking to usurp the opponent's right.

With respect to s28 of the Act Mr Chrysiliou submitted that the test to be applied was that set out in Smith Hayden & Co Ltd's Application (1946) 63 RPC 97 ,that is, whether because of the opponent's reputation in the mark a substantial number of persons would be deceived or confused by the use by the applicant in a normal and fair manner of the mark applied for in connection with any of the goods covered by the proposed registration. The onus was on the applicant to show that deception or confusion would not be caused: Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; the Hermes case 2 IPR 432. In regard to the opponent's reputation he referred me to the evidence, particularly the affidavits of White, Johnson and Abdoo and to an undeclared statement by the film critic Bill Collins as to the fame of Technicolor in connection with films. This evidence must be given more weight, he said, because it had not been countered: Fletcher Challenge [1981] NSWLR 196. He further submitted that in the light of modern character merchandising and licensing practices use of the mark would lead many people to conclude that there was some licensing arrangement between the opponent and the applicant. He referred me to Nicholas v Borg (1986) 7 IPR where the court restrained the use of the words "Melbourne Cup" in connection with beers and wines and to the P & O case 29 VLR 331 where a connection was assumed between whisky sold under that mark and the P & O shipping line. The fact that the the mark TECHNICOLOUR was used in conjunction with the applicant's house mark was of no assistance to it: "Bulova Accutron" Trade Mark [1969] RPC 102. Mr Chrysiliou then referred to Radio Corporation Pty Ltd v Disney (1937) 57 CLR 448. In that case registration of the words "Mickey Mouse" and "Minnie Mouse" were refused registration in respect of radio receiving sets. The High Court dismissed an appeal from that decision on the ground that the evidence showed that the public generally connected the appearance on an article of those names with Walt Disney and it was therefore impossible for the appellant to negative all likelihood of confusion.

On the question of the Registrar's discretion Mr Chrysiliou submitted that it was the duty of the Registrar to consider all possible grounds and not only the strict provisions of the Trade Marks Act 1955 : CUB v Miller Brewing 9 IPR 295. He further submitted that registration of the mark would contravene s28(b) of the Act inasmuch as use of the mark would be contrary to law because it would be against the policy of the Trade Practices Act 1974 which is to protect public consumers of goods and services and would also constitute  a passing off of the applicant's goods as the opponent's. He submitted that the Trade Marks Act should be read subject to  the provisions of the Trade Practices Act because the latter Act was later. He submitted further that the Registrar's discretion should be exercised against the applicant because the application could not be regarded as having been made in good faith: Lincoln Industries v Wham-O 3 IPR 115. He also referred to the position overseas, especially the decisions of the German courts in the Rolls Royce and Dimple Haig cases. All of the above considerations, he said, were relevant to the exercise of the Registrar's discretion and in the case of any doubt about the registrability of the mark that discretion should be exercised against the applicant who bore the onus of showing that the mark should be registered.

Ms Hill agreed that the three factors set out in Aston v Harlee (supra) were the relevant ones but submitted that on those factors the applicant was entitled to be considered the proprietor of the mark applied for. Authorship, she said, was not equivalent to invention, the applicant had submitted a statement as to its intended use of the mark and it had applied to register the mark. That claim to proprietorship could only be defeated by proof of prior use of the mark in Australia in respect of the goods for which registration of the mark was sought. That use had to be in Australia: Hicks' Application (supra). The opponent had adopted its mark in relation to colour processing of film and its reputation was confined to the fields of movies, TV etc. There was some evidence of diversification but it was all tied to the movie or photography industries. There was no evidence of any expansion into other unrelated fields. It was conceded that in those fields the opponent had a substantial reputation but its reputation was not all-encompassing. In particular the opponent's rights did not extend to goods in Class 3. In terms of the Hicks case, therefore, there were no rights to be interfered with since there was no commercial connection between the opponent and the relevant goods. In the Southern Cross case (supra) there was some natural business connection because the two sets of goods  were stocked in the same outlets. With regard to the business opportunity test, too, there must be shown to be some real commercial connection. Here there was no connection btween the respective goods and services, no evidence of any character merchandising or of any move to expand into the area of the applicant's business in any of the 75 countries where the opponent operated.

In relation to the s28 objection Ms Hill submitted that there was a generic, descriptive use of the word "technicolour" which was generally recognised by the public at large. She conceded that the marks were deceptively similar but that the goods were not goods of the same description. This had been tacitly admitted by the opponent in that no reliance had been placed on s33 despite the fact that the opponent was the registered proprietor of several registered marks in respect of the mark TECHNICOLOR. If this was the case then there was no likelihood of deception or confusion and no objection under s28. It had to be assumed that the applicant would use the mark in a fair and normal manner and not that it would seek to appropriate the opponent's advertising slogans in order to trade on its reputation. She referred to a registered mark, no. 102104, METRO GUM IN TECHNI-COLOR, in respect of confectionery, which she said just as close, or as remote, a connection with the opponent's services as the goods of the present application. The word "technicolour" was not synonymous with beauty, glamour or colour as the opponent had argued. As to the opponent's right to the commercial exploitation of its mark, why now after some 75 years should a business opportunity to exploit the mark present itself in respect of these particular goods? Even if it could be shown that there was a possibility of deception or confusion that in itself, following the decision of the High Court in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd 18 IPR 385 (the Moo case), was not conclusive. It had also to be shown that the mark would not be entitled to protection in a court of justice: The Titan Manufacturing Co Pty Ltd v Coyne (1991) AIPC ¶90-808. Moreover, the question of whether the evidence was sufficient to establish passing off or a breach of the Trade Practices Act was not a matter that was within the competence of the Registrar to decide. There was no evidence of any blameworthy conduct on the part of the applicant such as would render the mark not entitled to protection in a court of justice since there was no commercial connection between the goods of the application and the reputation of the opponent, a search of the Register prior to lodgment of the application would have revealed the existence of the earlier registered trade mark for confectionery referred to above and the dictionary definitions of the word suggested that the word "technicolour" had descriptive connotations in current usage.

With respect to the Registrar's discretion Ms Hill submitted that it was not open to the Registrar to find that use of the applicant's mark would constitute passing off or a breach of the Trade Practices Act. It was not possible to conclude that the use of the mark would be contrary to the public interest. It was conceded that the opponent enjoyed a considerable reputation but in respect of a limited range of goods/services. Moreover, the Trade Marks Act itself, in the provisions relating to registration in Part D of the Register, provided a mechanism for the protection of famous marks. The opponent had not availed itself of those provisions if it considered it a matter of vital interest to protect the mark for the goods in question here. Most of the cases cited by the opponent, such as the Levi's case (supra) concerned the same class of goods. With respect to the P & O  case it was common for institutions such as hotels, shipping lines etc. to provide a range of ancillary goods so that a commercial connection did exist in that case. In the present case there was no evidence of licensing by the opponent in respect of any goods.

Mr Chrysiliou contended that there was a real commercial connection in that registration of the applicant's mark would prevent the commercial exploitation by the opponent of its mark. It would lead to dilution of the mark and a loss of reputation if the mark were associated with inferior goods. The opponent's mark had a strong connection with colour and where colour is important, as with the applicant's goods, a connection did exist. Although the mark was used descriptively by some people it was still recognised by them as a trade mark. The cases showed that it was not necessary for an objection under s28 that the goods/services be the same: Mickey Mouse case, Melbourne Cup case (supra). There was no evidence of the use of the METRO GUM mark which had now been cancelled at the instance of the opponent. In any case the Registrar, as he had frequently held, was not bound by what was on the Register. The only mark now on the Register consisting of or containing the word TECHNICOLOR was the opponent's. There was no evidence of anyone using the mark except the opponent. The applicant had not explained how it came to adopt the word "technicolour" as part of its trade mark yet it was a famous mark and an invented word: res ipsa loquitur. The opponent had to protect its goodwill  or the mark would become generic  and lose its registrability. There was no requirement for a registered proprietor of a famous mark to register its mark in all classe in order to protect its goodwill. It was still entitled to protectio even in the absence of such a registration. The Levi's case concerned dilution of marks and it did not matter that the goods were of the same class.

Decision

It will be convenient to deal with each of the three grounds relied on by the opponent in turn.

Proprietorship

It was common ground that Aston v Harlee was a relevant authority in the present opposition. After setting out the three elements required to establish a claim to proprietorship Fullagar J went on to say, at 399-400:

...I do not think that the requirement of "authorship" means that the applicant must be the true and first inventor...I do not think that an opponent of an application for registration of a trade mark could succeed by saying merely "I thought of it first", or even "I thought of it first, and communicated it to the applicant". It is otherwise if the opponent has used the mark in relation to goods.

In the second place, it would appear that an applicant may be the "author" of a trade mark, although he has deliberately copied or adopted a mark registered in a foreign country in respect of the same description of goods...Again, it is otherwise if the opponent or person aggrieved has used the mark, for prior user by the foreign proprietor negatives the claim of the Australian applicant to "authorship". But the user must be in Australia: the most extensive user by another person in foreign countries will not avail by itself to defeat an application for registration in this country...where there has clearly been no user at all in Australia, an applicant for a trade mark identical with a mark registered in a foreign country is entitled to be regarded, so far as Australia is concerned, as the "author" of the mark. I can see no reason why this should not be so.

In the absence of any evidence of the use of the mark by the opponent in connection with the goods in respect of which the applicant has sought registration the applicant, having met all three of the requirements stipulated, is entitled to be considered the proprietor of the mark in Australia. There is no authority to support the proposition that a famous mark which is also an invented word is to be treated any differently than any other mark.

Section 28

The Collins English Dictionary (2nd ed., 1986, p.1564) contains the following definitions:

Technicolor n Trademark the process of producing colour film by means of superimposing synchronized films of the same scene, each of which has a different colour filter, to obtain the desired mix of colour.

technicolour or technicoloured adj brightly, showily, or garishly coloured; vividly noticeable.

Much of the opponent's evidence was directed to showing that definitions of the type of the second of the above two definitions are incorrect or based on a misunderstanding, that the word does not have any currency in modern usage in this descriptive sense but retains its primary meaning as a proprietary term belonging to the opponent. James Bernard O'Donoghue, for example, in his affidavit states that since 1971 he has been a lecturer and teacher in the English language at Magdalen College, Oxford and for some years has acted as adviser on matters of English Language to the Oxford University Press which produces the Oxford English Dictionary. He states that he has been asked to consider the current use and status of the term "Technicolor" (having regard to both American and English spellings) with particular reference to usage in Australia. After considering the definitions of the word in a number of dictionaries and other reference works he is able to conclude that in England, since the 1970's the term "Technicolor" has had little or no currency in the English language other than as a proprietary name, that in America the only significance of the term is as a proprietary name and that in Australia the term exists only as a proprietary name.

With the greatest respect to such an eminent authority as this I do not believe that for the purposes of these opposition proceedings the terms "proprietary name" and "descriptive word" are necessarily mutually exclusive. At the time the hearing of this matter was conducted, for example, the well known stage musical "Joseph and the Amazing Technicolour Dreamcoat" was still running in London without, so far as I know, anyone being caused to wonder whether the opponent was connected with the production in any way. In his book Holidays in Hell (Pan Books, London, 1989) the American author P.J.O'Rourke, in a chapter entitled "In Whitest Africa", writes:

It's always hard to see hope with a hangover, nowhere more so than at the butt-end of this continent in a country that's like a nightmare laundry-detergent commercial - makes whites whiter, coloureds brighter. They're building themselves a gigantic Cinerama, Technicolor Ulster here.

More relevant still in the context of the goods of this application is the following from an article entitled "The Supermodels" in the issue of "Time" magazine for 16 September 1991:

They're the supermodels, and they're hot. When Canadian-born Evangelista dyes her trademark bob Technicolor red, it's news. The fashion world quivers as her hair goes from long to short, dark brown to platinum blond to red.

This last passage is particularly significant. In an article in a mass circulation magazine addressed to the general public the author is able to use the term in the clear expectation that readers of the article will understand the meaning intended to be conveyed as describing the colour of a woman's hair as "bright" or "vivid" while at the same time by the use of the capital letter recognising that it is a proprietary name. I think that this is the way the word would be seen by the average person in Australia and that for that reason that person would not assume any connection between the goods of the applicant and the opponent. Both meanings would be able to coexist in the mind of the average person.

Howeverthat may be, one could be excused for questioning the accuracy of the learned lecturer's conclusions, at least as far as they concern the usage of the word in Australia, when one comes across examples such as the following, from an article by Ian Warden in  The Canberra Times, a newspaper of wide circulation in the national capital, of 20 March 1992, entitled "Royals rock institution of marriage, again":

The vows taken, with a giggle, beside a bed of violently technicolour geraniums at Floriade while cousin Wayne tickles some Manilow from his guitar, have a certain flimsiness and frivolity about them. God is not watching.

That members of the Royal family should be so ready to undo what was done to them with so much spiritual pomp and gravity and with God and the whole of Christendom looking on, letting down everyone who was uplifted by the ceremony and letting down Dame Kiri who surely thought she was contributing with her expensive warbling to the sizzling solemnity of the occasion, sends the impressionable people of the world the message that no marriage vows, however solemn and splendid the circumstances in which they were made, are worth a fig or even a cumquat.

The meaning intended to be conveyed here appears to reflect precisely the meaning attributed to the word by the second of the definitions attributed to it by The Collins English Dictionary.

The cases cited by Mr Chrysiliou mostly concern the use of conflicting marks in relation to the same or similar goods. Of the other cases the Melbourne Cup case was an application for an interlocutory injunction in a passing off action and is not therefore strictly in point. The P & O case can be distinguished on the ground that it is, as Ms Hill submitted, common commercial practice for institutions such as hotels and shipping companies to provide their customers with ancillary goods such as those (whisky) involved in that case. There would appear to be no equivalent commercial practice concerned in the present case. As to the Mickey Mouse case there was strong evidence that there was such an association in the public mind between the characters and Disney that deception and confusion would be caused by the use of the mark in connection with the goods. As Latham C J said, at 453:

It is very seldom indeed that there can be a world-wide association of ideas in connection with a particular name or figure, but the evidence shows that this association does exist in the present case.

The Trade Marks Act does not accord any special protection to famous marks apart from the provisions for registration in Part D of the Register. The opponent has not chosen to avail itself of those provisions and its mark is therefore subject to the same considerations as any other mark.

In summary, while it may be conceded, and it has in fact been conceded by the applicant, that the opponent enjoys an enormous reputation in relation to certain goods and services all related to colour film, my finding is that that reputation would not lead a substantial number of persons to be deceived or confused if the applicant were to use the mark DECORE TECHNICOLOUR in relation to the goods in respect of which it seeks registration.

Registrar's discretion
     Whether the use of the mark would render the applicant liable to an action for passing off or would constitute a breach of the Trade Practices Act are not questions which are within the competence of this tribunal and are therfore no basis for the exercise of the Registrar's discretion. As to the question of the applicant's good faith in making the application the onus of showing lack of good faith rests squarely on the opponent and there is no evidence pointing to the absence of good faith. The mere adoption of a famous mark for use in connection with entirely unrelated goods does not in itself constitute evidence of lack of good faith. As I have found that there is no objection to registration under s28 of the Act there is no public interest in the avoidance of deception and confusion to be protected. I can find no basis therefore for the exercise of the discretion in favour of the opponent.

Conclusion

I have found against the opponent on each of the grounds on which it relied and the opposition is accordingly
 dismissed. The applicant having been successful is entitled to its costs and I so award them. Subject to any appeal against this decision I direct that the applicant's mark proceed to registration.

Michael Homann
Hearing Officer

25 March 1992