Re Opposition by Crocmedia Pty Ltd to registration of trade mark application 1853209 (16, 25, 35, 38, 41) - Football Nation Radio - in the name of Football Nation Radio Holdings Pty Ltd
[2020] ATMO 78
•11 May 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by Crocmedia Pty Ltd to registration of trade mark application 1853209 (16, 25, 35, 38, 41) – Football Nation Radio – in the name of Football Nation Radio Holdings Pty Ltd
Delegate: Robert Wilson
Representation: Opponent: KCL Law
Applicant: Milicevic Lawyers
Decision: 2020 ATMO 78
Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 41, 42(b), 44 and 60 considered – no grounds established – trade mark may proceed to registration
Background
This decision concerns an opposition brought by Crocmedia Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 to registration of the trade mark the subject of the application detailed below. The application is in the name of Football Nation Radio Holdings Pty Ltd (‘the Applicant’):
Application Number:
1853209
Filing Date:
21 June 2017
Goods and Services:
Class 16: (including) printed matter; all of the previous products relating to football; all of the previous products related to soccer
Class 25: (including) clothing; footwear; headgear; all of the previous products relating to football; all of the previous products relating to soccer
Class 35: (including) advertising; business management; radio commercials; all of the previous services relating to football; all of the previous services related to soccer
Class 38: (including) radio broadcasting services (whether free to air or subscription); all of the previous services relating to football; all of the previous services related to soccer
Class 41: (including) education; entertainment; fan club services; all of the previous services relating to football; all of the previous services related to soccer
The full specification appears in the Annexure.
(‘the Applicant’s Goods and Services’)
Trade Mark:
Football Nation Radio
(‘the Applicant’s Trade Mark’)
Any references to sections or regulations below are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.
On 16 November 2017, the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration on 11 January 2018 and a Statement of Grounds and Particulars (‘the SGP’) on 17 January 2018. The SGP nominated grounds of opposition under ss 41, 42(b), 44 and 60. The Applicant filed a Notice of Intention to Defend on 6 February 2018.
Evidence
The Opponent filed Evidence in Support of its opposition being:
·Statutory Declaration made on 11 May 2018 by Jodie Anne Simm, Chief Operating Officer of Pacific Star Network Ltd a related entity of the Opponent, with Exhibits JAS-1 to JAS-46 (‘Simm 1’). Prior to being appointed as COO of Pacific Star Network Ltd, Ms Simm was employed as Chief Financial Officer and General Manager of the Opponent; and
·Statutory Declaration made on 18 May 2018, by Alex Garfinkel, a lawyer at KCL Law, the representatives of the Opponent. This declaration solely corrects an omission in the jurat of Simm 1.
The Applicant filed Evidence in Answer being:
·Statutory Declaration made on 24 August 2018 by David Bozinoski, a Director and Chief Executive Officer of the Applicant, with Exhibits DB-1 to DB-16 (‘the Bozinoski declaration’).
The Opponent filed Evidence in Reply being:
·Statutory Declaration made on 2 November 2018 by Jodie Anne Simm, with Exhibit JS-1 (‘Simm 2’).
Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. No hearing request or submissions were filed by either party in response to this opportunity. Simm 1, Simm 2 and the Bozinoski declaration all include statements in the nature of submissions. Those statements will treated as the parties’ submissions where they are applicable.
As a delegate of the Registrar of Trade Marks it has fallen to me to decide the matter on the material discussed above.
The Opponent
According to Simm 1:
[The Opponent] was registered with ASIC on 11 February 2008.
At present, [the Opponent] has approximately 79 employees.
[The Opponent] operates in the sports media sector, and creates and disseminates a number of popular sports-related radio, TV and podcast programs as well as provide event management, talent management and creative agency services. …
[The Opponent’s] business was co-founded by its now CEO Craig Francis Hutchinson in 2008. Mr Hutchinson is a sports media personality with over 30 years’ experience working on television and radio …
One of [the Opponent’s] principal activities is providing commentary and broadcasting of sporting events, particularly games of the Australian Football League (AFL) … National Rugby League (NRL) … and Football Federation Australia’s ‘A-League’ …
‘AFL Nation’ is the trade mark that is used as the name of [the Opponent’s] AFL‑related broadcasting and news service. The trade mark ‘AFL Nation’ is used under an exclusive licence granted by the AFL to [the Opponent].
The ‘AFL Nation’ arm of [the Opponent’s] business began in 2016 (prior to January 2017, this arm of [the Opponent’s] business was named ‘AFL Live’). [The Opponent] offers a range of services under and by reference to the ‘AFL Nation’ trade mark. These services include:
(a) radio broadcasts and podcasts;
(b) news publications through …
(c) AFL Nation’s own AFL ‘tipping’ competition, which hosts approximately 9,500 users as at the date of this declaration.
The AFL is the owner of the registered trade mark shown below.
Trade Mark Number:
1772870
Priority Date:
25 May 2016
Services:
Class 38: Broadcasting of programmes by radio; Data broadcasting services; Radio broadcasting; Wireless broadcasting; Providing online forums; Webcasting services; Audiovisual communication services
Class 41: Arranging of entertainment; Dissemination of entertainment material; Entertainment information; Information services relating to entertainment; Information services relating to sport; Sports information services; Production of audio/visual presentations; Production of radio and television programmes; Production of radio programmes; Production of sound recordings, other than advertising; Production of webcasts, other than advertising; Providing online electronic publications (not downloadable); Publication of multimedia material online; Syndication of radio programmes; Distribution (other than transportation) of audio recordings; Distribution (other than transportation) of radio programmes; Distribution (other than transportation) of sound recordings; Information services relating to recreation
(‘the AFL Services’)
Trade Mark:
AFL NATION (‘the AFL Trade Mark’)
The Applicant
According to the Bozinoski declaration, the Applicant was registered with ASIC on 7 April 2017, and:
The Applicant runs, operates and manages the first and only radio station that prioritises football (also known as soccer) every hour, every day. It provides football news, entertainment, feature interviews and player, coach and club education. The Applicant is committed to a comprehensive whole of game coverage, from grassroots to elite football in Australia and overseas. The Applicant provides these services by, including but not limited to:
(a)Internet broadcasts through the App and/or online of shows on Soundcloud.
(c)Facebook live broadcasts.
(d)News, video and audio publications from ‘(FNR website’)
(e)FNR members.
(f)FNR Executive Network.
(g)FNR Outside Broadcasting.
(h)FNR Twitter Page.
(i)FNR Instagram Page.
The Applicant currently has six employees and contracts with up to 10 other on-air contributors.
The Applicant has been very active in its use of [the Applicant’s Trade Mark] from 7 April 2017 following incorporation and was broadcasting football content through the website following registration of on 4 March, being the registration date of the Applicant’s website …
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 41, 42(b), 44 and 60. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 21 June 2017, being the filing date of the application (‘the Relevant Date’).[3] The Relevant Date is also the priority date for the purposes of ss 44 and 60.
Discussion
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].
Section 41
Section 41 provides:
41 – Trade Mark not distinguishing applicant’s goods or services
(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3)This subsection applies to a trade mark if:
(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4)This subsection applies to a trade mark if:
(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b)the time of production of goods or of the rendering of services.
Note 2: For goods of a person and services of a person see section 6.
Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
This ground of opposition was particularised in the SGP as follows:
[The Applicant’s Trade Mark] is not capable of distinguishing the goods and services of the applicant. The words FOOTBALL NATION RADIO are descriptive of and/or connote radio-related services provided in connection with football games, provided on a national basis. They are not otherwise sufficiently adapted to distinguish the goods and services of the applicant.
The case law setting out the necessary considerations for determining whether a trade mark is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd (‘Du Cros’), Lord Parker of Waddington said:
The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods.[4]
[4] (1913) AC 624, 634-5.
In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks stated:
[W]hether a mark is adapted to distinguish [will] be tested by reference to the likelihood of other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[5]
[5] (1964) 111 CLR 511, 514.
More recently, in Cantarella Bros Pty Limited v Modena Trading Pty Limited,[6] the High Court adopted a two step test for determining whether a sign is inherent adaptation to distinguish. The first step requires assessing the ordinary signification of the sign, in Australia, to persons who will purchase, consume or trade in the relevant goods and/or services. If there is no ordinary signification the sign is to be considered inherently adapted to distinguish. Where there is an ordinary signification the second step is necessary. That step involves determining whether there is a legitimate desire for other traders to use the sign. If such a desire is likely, the sign is not inherently adapted to distinguish. Such legitimate desire exists on a continuum. At one end of the continuum are signs for which there is a high likelihood that other traders will desire to use them; such signs are generally considered to be bereft of inherent adaptation to distinguish. At the other end of the continuum are signs which it is highly unlikely that other traders will have a desire to use. Such signs approach inherent adaptation to distinguish.
[6] [2014] HCA 48.
There exist on the Register what might be termed ‘families’ of trade marks. These families of trade marks consist of trade marks which have adopted certain forms. Those forms have historically been, and continue to be, considered inherently adapted to distinguish. These include families of trade marks such as: [descriptive word] WORLD; WORLD OF [descriptive word]; [descriptive word] LAND; and, LAND OF [descriptive word]. As examples, the following trade marks were considered to be inherently adapted to distinguish when examined and are currently registered without there having been a need for their owners to provide evidence of their use:
Trade Mark
Goods/Services include
TOY WORLD
Games, all other goods in class 28
SHAVER WORLD
Retail of electric shavers
WORLD OF PLASTER
Retail services, plastering services
WORLD OF CLOGS
Clogs
RICE LAND
Rice and rice products
LAND OF ROOIBOS
Rooibos tea
Trade marks of the form [Descriptive word] NATION constitute yet another family of trade marks. Currently registered trade marks of this type include:
Trade Mark
Goods/Services include
PEDAL NATION
Pedals for bicycles
DENIM NATION
Clothing
CONCERT NATION
Production of live concerts
HAIR NATION
Hair care services
The Applicant’s Trade Mark, FOOTBALL NATION RADIO, can be considered to be a member of the NATION family of trade marks. This is so despite the additional descriptive (in respect of some of the Applicant’s Goods and Services) RADIO element. In keeping with other NATION trade marks, there is nothing before me that satisfies me that the FOOTBALL NATION part of the Applicant’s Trade Mark is other than inherently adapted to distinguish the Applicant’s Goods and Services. The descriptive RADIO element does not erode the distinctive nature of the FOOTBALL NATION part or the Applicant’s Trade Mark as a whole. The Applicant’s Trade Mark can be contrasted with a sign such as NATIONAL FOOTBALL RADIO for radio services. Such a sign may well be considered to lack inherent distinctiveness in respect of those particular services.
I am satisfied that the Applicant’s Trade Mark is inherently adapted to distinguish the Applicant’s Goods & Services from those similar goods and services of other persons. The Opponent has, therefore, failed to establish this ground of opposition.
Section 44
Section 44 is reproduced below:
Section 44 - Identical etc. trade marks
(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.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.Section 10 - Definition of deceptively similar
For the purposes of this Act, 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.
The Opponent particularised this ground of opposition as follows:
[The Applicant’s Trade Mark] is deceptively similar to [AFL Trade Mark]. That registered trade mark has an earlier priority date (25 May 2016) than the application (21 June 2017). ‘AFL’ is an acronym strongly associated with football in Australia.
To successfully oppose the application pursuant to s 44 the Opponent must establish that the AFL Trade Mark:
· is registered by a person other than the Applicant (‘the first requirement’); and
· has a priority date which is earlier than the Relevant Date (‘the second requirement’);
· is in respect of at least some goods which are similar to the goods, or closely related to the services, claimed by the Applicant (‘the third requirement’); and
· is substantially identical with or deceptively similar to one or both of the Applicant’s Trade Marks (‘the fourth requirement’).
The first requirement
The AFL Trade Mark is registered by a person other than the Applicant, thus satisfying the first requirement.
The second requirement
The AFL Trade Mark has a priority date which is earlier than the Relevant Date, thus satisfying the second requirement.
The third requirement
The AFL Services include radio broadcasting in Class 38. The Applicant’s Goods and Services include radio broadcasting services (whether free to air or subscription). It is clear that the third requirement is therefore satisfied in respect of at least some of the Applicant’s Goods and Services.
The fourth requirement
Substantially identical?
The particulars in the SGP do not assert that the AFL Trade Mark is substantially identical to the Applicant’s Trade Mark. I am satisfied on the usual side by side comparison[7] that there are sufficient differences between the trade marks such that they are not substantially identical.
Deceptively Similar?
[7] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).
Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.
Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[8]
[8] [1963] HCA 66, [13].
Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgement of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.[9]
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.[10]
Third, allowance must be made for imperfect recollection.[11]
Fourth, the effect of the spoken description must be considered.[12]
Fifth, it is necessary to show a real tangible danger of deception or confusion.[13]
Sixth, 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 the two products come from the same source.[14] …
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.[15]
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.[16]
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[17] However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[18] [19]
[9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.
[10] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Windeyer J).
[11] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74].
[12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.
[13] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5.
[14] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
[15] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
[16] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, 632 (Mason J).
[17] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79].
[18] Ibid [100].
[19] [2012] FCA 1022, [37]–[46].
Under the heading ‘Opposed trade mark likely to mislead/deceive’, it is submitted in Simm 1 that:
The Applicant’s use of the mark ‘Football Nation Radio’ is likely to cause confusion among consumers or potential consumers of [the Opponent’s] services provided under and by reference to the ‘AFL Nation’, ‘NRL Nation’ and ‘AFL Nation’ [sic] trade marks for the reasons set out below.
‘NRL Nation’ was not referred to in the SGP in respect of s 44 (nor any other ground). Consequently, that trade mark will not be considered further here. Simm 1 continued:
First, consumers are likely to confuse ‘Football Nation Radio’ as a service that provides commentary about Australia Rules Football.
This is because Australian Rules Football is widely reported as the most popular sport in Australia and one which has attracted more overall interest among Australians than any other sporting code.
This is demonstrated by the fact that the AFL has a significantly larger viewership than the A-league. …
Additionally, a survey from Roy Morgan Research found that approximately 8.4 million people watched the 2017 AFL Grand Final. …
By comparison, the 2017 A-league Grand Final was reported to have an audience of approximately 553,000 viewers …
Therefore, given the close association between Australian Rules Football and the word ‘football’, consumers are likely to presume that ‘Football Nation Radio’ is a radio service for Australian Rules Football.
The submissions, above, concern deception as to the nature of the services provided by the Applicant on the basis of a connotation contained in the Applicant’s Trade Mark, rather than deception or confusion as to the trade source of goods or services arising out of the similarity of trade marks. This is a consideration relevant to s 43, not s 44. Section 43 is not particularised in the SGP and the alleged confusion arising out of any connotation will not be considered further. There are no submissions from the Opponent which compare the Applicant’s Trade Mark with the AFL Trade Mark and address the likelihood of deception or confusion which might arise out of any similarity between those trade marks.
The relevant trade marks are reproduced below for ease of reference.
FOOTBALL NATION RADIO
AFL NATION
In respect of many of the Applicant’s Goods and Services, RADIO is a descriptive term and can be discounted to a large extent. A useful starting point for the consideration of deceptive similarity is, therefore, a comparison of the distinctive parts of the respective trade marks. In the case of the Applicant’s Trade Mark this is FOOTBALL NATION. In the case of the AFL Trade Mark, the trade mark as a whole is distinctive. Additionally, AFL may be considered a distinctive element in its own right—this is discussed further below. I note that AFL is the subject of a registration for many classes and is owned by the Australian Football League.
In the SGP the Opponent stated that AFL ‘is an acronym strongly associated with football in Australia’. There are a number of codes of football played in Australia, including, association football (soccer), rugby league, rugby union, Gaelic football, American football and Australian rules football. AFL is strongly associated only with the last of those codes. Indeed, it appears that the code itself is sometimes referred to as AFL. For example, the question, ‘What is your favourite code of football?’, may well elicit the response ‘AFL’. It may be that AFL as a sign has to a greater or lesser extent become the name of a thing—in this case a code of football—in the same manner as many trade marks before it: such as a Hoover, Yo-Yo and Jeans. It is unnecessary this possibility be considered further here. Nevertheless, in my view, the term ‘football’ is not equivalent to AFL.
There is no doubt that trade marks within the families of trade marks referred to earlier are strongly allusive of the goods and/or services on offer; retail establishments bearing trade marks such as TOY WORLD, SHAVER WORLD, DENIM NATION and CLOG NATION are likely to hold few surprises for consumers who cross their thresholds. The words ‘toy’, ‘shaver’, ‘denim’ and ‘clog’ are all words which other traders are likely to wish to use in connection with the relevant goods and/or services for which those particular trade marks are registered. FOOTBALL and AFL (to the extent that it is used by persons to indicate a code of football, as distinct from a reference to the Australian Football League) are similarly words/signs which other traders might wish to use in connection with their goods and/or services. Consumers are accustomed to the families of signs discussed in this decision and are likely to readily distinguish between FOOTBALL NATION RADIO and AFL NATION. The differences between the FOOTBALL element and the AFL element are significant, especially when considered visually and aurally. When the trade marks are each considered as a whole the differences remain significant. The use of the Applicant’s Trade Mark is unlikely to deceive or cause confusion. Consequently, the Opponent has failed to establish this ground of opposition.
Section 60
The ground based on s 60 is particularised in the SGP as follows:
The trade mark is similar to ‘AFL Nation’ being a trade mark owned by the Australian Football League and exclusively licensed to the Opponent. That trade mark was first used before [the Relevant Date] and acquired a distinct and significant reputation in Australia in connection with broadcasting of and in connection with Australian Rules football games before [the Relevant Date].
Section 60 is reproduced below:
Section 60 - 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.
To establish this ground of opposition the Opponent must demonstrate that, before the Relevant Date, the AFL Trade Mark had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion.
In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[20] Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[21]
[20] [2000] FCA 1335, [81].
[21] [1992] FCA 159, [118].
On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its 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 [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[22]
[22] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).
Assessment of reputation
According to Simm 1, the AFL Trade Mark is used as the name of the Opponent’s AFL‑related broadcasting and news service. The AFL Trade Mark is used under an exclusive licence granted by the AFL to the Opponent. I note the commencement date indicated in the copy of the Commercial radio rights agreement provided in Exhibit JAS‑2 is 1 November 2016. There is no indication in evidence that the AFL Trade Mark was used prior to it being licensed to the Opponent. Simm 1 indicates that the ‘AFL Nation arm’ of the Opponent’s business began in 2016; however, ‘prior to January 2017 this arm of [the Opponent’s] business was named “AFL Live”’.
Simm 1 states:
The AFL Nation radio program has approximately 8 scheduled broadcasts each week during the AFL season. AFL Nation radio programs have a weekly audience of approximately 558,000 listeners from 68 radio markets and are broadcast on 240 frequencies. Now produced and shown to me and marked EXHIBIT JAS-3 is a schedule of AFL Nation programs for Round 6 of the AFL Premiership Season as at 26 April 2018.
In the absence of relevant submissions from the Opponent it is unclear what conclusions the Registrar should draw from a schedule of programming from the year following the year in which the Relevant Date appears. Simm 1 was made in May 2018. It is to be assumed from the wording of the declaration and the exhibit provided that the listener figures provided refer to listeners in 2018. This evidence does little, if anything, to assist the determination of reputation acquired before the Relevant Date.
Simm 1 further states:
On January 18 2017, [the Opponent] introduced the AFL Nation Podcast, which is now broadcast through various podcast apps. The AFL Nation Podcast has approximately 1,200 podcast subscribers and approximately 1,700 registered listeners on the AFL Nation Website and has had in excess of 60,000 episode downloads.
It is to be assumed, again, that the numbers provided are as at the date Simm 1 was made. Additionally, the subscriber numbers are modest and, assuming growth in subscriber numbers, were presumably lower, possibly significantly, before the Relevant Date: the actual number is not provided. This evidence does not assist the Opponent.
According to Simm 1 the domain name <aflnation.com.au> was first registered to the Opponent in October 2016. Exhibit JAS-6 is declared to be ‘a screenshot image of the AFL Nation Website taken in July 2017’. Exhibit JAS-7 is declared to be ‘a screenshot image … taken in March 2018’. Included in Simm 1 is ‘a chart showing internet traffic to the AFL Nation Website between September 2017 and March 2018’. This evidence post-dates the Relevant Date and does not assist the Opponent.
Simm 1 declares that the Opponent
launched the AFL Nation Facebook page in March 2010 (originally under the name ‘AFL Live’ until approximately January 2017, when it was rebranded to ‘AFL Nation’. As at 20 March 2018, there have been over 15,000 people who have ‘liked’ the AFL Nation Facebook page and over 15,000 who ‘follow’ it.
According to Simm 1, the Opponent ‘began advertising its AFL Nation services through paid Facebook advertising in November 2016’. This apparently includes the time prior to the rebranding of the Facebook page. Simm 1 provides a figure for ‘Facebook advertising campaigns for AFL Nation since AFL Nation’s inception’; the figure is extremely modest. Exhibit JAS-8 is declared to be a schedule setting out the details of the advertising campaigns since March 2017. The schedule lists a large number of items all with ‘Reporting Starts’ of 1 November 2016 and ‘Reporting Ends’ of 2 May 2018. Simm 1 states in respect of the exhibit, ‘As can be seen … some of the advertising campaigns have reached over 67,000 Facebook users’. A significant problem with this exhibit is the time span of the reporting period. It is not apparent from the schedule when any particular user may have been ‘reached’. This evidence does little to assist the Opponent.
Simm 1 refers to a Twitter account which commenced in January 2017 and ‘as at 24 April 2018 has approximately 80,000 followers’. Also referred to is an Instagram account which was established in May 2017 and ‘as at 24 April 2018 … has approximately 3,000 followers’. Given the timeframes listed this evidence is of very little assistance to the Opponent.
Simm 1 contains statements regarding the presence of the AFL Trade Mark ‘in other publications and media’, ‘Media Coverage’ and ‘Sponsorships’. The vast majority of the evidence suffers from the problem that the commencement of use of the AFL Trade Mark was shortly prior to the Relevant Date and the figures provided span periods ending significant periods afterwards (usually April 2018) and examples post-date the Relevant Date. The evidence does very little to assist the Opponent.
Simm 1 also refers to use by the Opponent of the signs FOOTBALL NATION and NRL NATION. Neither of these signs are mentioned in the SGP. In the absence of pertinent submissions from the Opponent the relevance of those signs to this ground of opposition (or any other ground) is not apparent. I note that use by the Opponent of FOOTBALL NATION is stated to have commenced after the Relevant Date. I need not consider either of those signs further.
The evidence provided by the Opponent falls well short of establishing that the AFL Trade Mark had acquired a reputation by the Relevant Date. As this requirement has not been satisfied, s 60 has not been established.
Section 42(b)
Section 42 is reproduced below:
42 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.
The onus is on the Opponent to establish that use of the Applicant’s Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[23]
[23] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
The ground of opposition pursuant to s 42 was particularised in the SGP as follows:
Use of [the Applicant’s Trade Mark] would be contrary to law, as it would constitute passing off/breach of sections 18 and 29 of the Australian Consumer Law, given the extensive reputation of the opponent and its licensor (Australian Football League) in connection with ‘AFL Nation’, and with the licensor’s reputation in connection with football.
In the present matter the Opponent has failed to establish a ground of opposition under s 60. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60,[24] I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.
[24] See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[25] Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:
The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[26]
[25] [2003] FCA 104, [107].
[26] [1989] FCA 506, [40] (citations omitted).
For these reasons I am not satisfied that use of the Applicant’s Trade Mark would be contrary to law. Therefore, the Opponent has failed to establish this ground of opposition.
Decision
Section 55 relevantly provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, 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.
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, application 1853209 may proceed to registration after 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 either the appeal is withdrawn or a court so orders.
Costs
As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.
Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
11 May 2020Annexure
The Applicant’s Goods and Services
Class 16: Paper and cardboard; printed matter; printed advertising materials; photographs; stationery and office requisites, except furniture; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; promotional publications; books; pamphlets; newspapers; journals; magazines; notebooks; publications; periodicals; audiovisual printed materials; brochures; tickets; paper and cardboard; posters; stationery including pens; coasters; stickers; trading cards; calendars; newsletters; all of the previous products relating to football; all of the previous products related to soccer
Class 25: Clothing; footwear; headgear; including but not limited to: mens, womens and childrens clothing, footwear and headgear; sports wear; sports clothing; sports footwear; sports headgear; hats; caps; socks; long socks; shorts; pants; shirts; t-shirts; boots; shoes; runners; football boots; soccer boots; trainers; gloves; scarves; beanies; jackets; wet weather gear; sweatshirts; blouses; skirts; dresses; sweaters; fleece pullovers; sweat suits; jogging suits; polo shirts; tank tops; jerseys; woven shirts; blazers; undergarments; robes; shapewear; ponchos; rain suits; overcoats; coats; belts; athletic uniforms; sleepwear; loungewear; athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; compression garments for athletic or other non-medical use, namely, compression socks, stockings, leggings, jerseys, vests, shirts, trousers; swimwear, namely trunks, board shorts, bikinis, tankinis, bathing suits; footwear, namely boots, slippers, sandals, pumps, flats, athletic footwear; headwear, namely hats, caps, visors, head bands; wrist bands; rain jackets; jackets; apparel; ties; water resistant clothing; training clothing; tracksuits; suits; all of the previous products relating to football; all of the previous products related to soccer
Class 35: Advertising; business management; business administration; office functions; including but not limited to; Radio advertising; Digital advertising; online advertising; terrestrial advertising; Distribution of advertisements and advertising material for use in radio advertising; Radio commercials; Market analysis, research and monitoring; promotional services; Advertising survey services; Business advisory, consultancy and information services; Compilation of advertisements for use as web pages on the Internet; Computer services, namely providing an on-line directory service; E-commerce, online ordering services; Rental of advertising space on the internet; Internet banner advertising; Updating and dissemination of advertising material; Advertising via light boxes, on street furniture, vehicle and at point of sale; Billboard and multimedia advertising; Digital advertising via mobile devices; Online advertising on a computer network; All the aforesaid services also provided online via a global computer network (including the internet) or provided via any wireless medium or via podcasting; all of the previous services relating to football; all of the previous services related to soccer
Class 38: Telecommunications; including but not limited to: Communication of information (including but not limited to music, sounds, images, audio-visual items, web pages, computer programs and any other data) via a global computer network (including the Internet) or via any wireless medium or via podcasting; Communication of information by electronic means, satellite, computers, cable, radio; Radio broadcasting services (whether free to air or subscription); radio communications; internet communications; video communications; Telecommunication and communication services including wireless messaging services; internet chat rooms; Delivery of digital music, programmes by telecommunications; Data transmission services over telecommunications networks; Transmission of radio programmes; Electronic transmission (uploading, posting and displaying) of data, information, pictures, audio and /or video via online, electronic or other means; all of the previous services relating to football; all of the previous services related to soccer
Class 41: Education; providing of training; entertainment; sporting and cultural activities; including but not limited to: entertainment; sports entertainment; training; sport related activities; Radio program distribution; Radio entertainment; Online entertainment; Video entertainment services; internet entertainment services; Audio or visual entertainment services; Radio programming and radio program production; Arranging and conducting competitions; Publication of information in electronic form; Providing digital education, entertainment and information from the internet and information in the field of sport, history, music and radio, and commentary and articles about music, history, sport and radio; Provision of entertainment services via an online forum; Interactive entertainment services; production of entertainment videos, audio and printed materials; Entertainment services, including, providing a website featuring sporting and spoken word performances, videos, related film clips, photographs and other multimedia material in the field of radio and sport; Event booking or reservation services; Fan club services; information services relating to sport and entertainment; live entertainment; Providing audio, visual information via a global communications network; management of entertainment events; management of entertainment services; Provision of sport and radio programs via a web portal; All the aforesaid services also provided online via a global computer network (including the Internet) or provided via any wireless medium or via podcasting; Education; education for parents; education for fans; education for players, coaches and participants in sport; high performance education; business education; all of the previous services relating to football; all of the previous services related to soccer
Key Legal Topics
Areas of Law
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Intellectual Property
Legal Concepts
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Standing
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Statutory Construction
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Costs
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