Re: Opposition by Enterprise Above and Beyond Pty Ltd to registration of trade mark application number 1698527 (classes 16, 25 and 41) - State of Origin in the name of Australian Rugby League Commission Limited

[2020] ATMO 150

TRADE MARKS ACT 1995

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

Re: Opposition by Enterprise Above and Beyond Pty Ltd to registration of trade mark application number 1698527 (classes 16, 25 and 41) – STATE OF ORIGIN - in the name of Australian Rugby League Commission Limited.

DELEGATE:

Louise Tuohy

REPRESENTATION:

Opponent: Fred Nugent

Applicant: Peter Giurissevich, Legal Counsel for the Applicant

DECISION:

2020 ATMO 150

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 41, 42, 43, 44, 58, 62A considered – no grounds established – trade mark to proceed to registration.

Background

1. This is an opposition filed by Enterprise Above and Beyond Pty Ltd (‘the Opponent’) under s 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of trade mark application 1698527 (‘the Trade Mark’) in the name of Australian Rugby League Commission Limited (‘the Applicant’). The relevant details of the Trade Mark are set out below:

Trade Mark:               STATE OF ORIGIN

Application No:         1698527

Filing Date:                9 June 2015 (Divisional from parent 1585168 filed 10 October

2013)

Specification:             Classes 16, 25 and 41 (‘the Applicant’s Goods and Services’) (see Annexure A)

1. Following examination, IP Australia advertised the acceptance of the application for possible registration in the Australian Journal of Trade Marks on 16 September 2017, with the following endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied;

s44(4) and/or Reg 4.15A(5) applied; and Evidence and/or other circumstances provided under subsection 41(4).

1. On 2 May 2017 the Opponent filed a Notice of Intention to Oppose the registration of the Trade Mark.

1. On 24 May 2017 the Opponent filed its Statement of Grounds and Particulars (‘the SGP’), then filed Additional Information to the SGP on 8 June 2017, completing the Notice of Opposition.

1. A Notice of Intention to Defend the opposition was filed by the Applicant on 13 July 2017.

1. Thereafter the Opponent and Applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (‘the Regulations’).

1. As neither party had requested a hearing, IP Australia informed the parties on 5 June 2018 that the opposition was to be decided on the papers. This matter was allocated to me for a decision on the written papers on 17 August 2020.

Grounds of Opposition, Relevant Date and Onus

1. In the SGP the Opponent nominates the grounds of opposition under ss 41, 42, 43, 44, 58, and 62A of the Act.

1. The date at which the rights of the parties are to be determined is 10 October 2013 (‘the Relevant date’), being the priority date and filing date of the parent application of this valid divisional application.1

10.The Opponent bears the onus of establishing at least one of the grounds of opposition.2 The standard of proof is the ordinary civil standard of the balance of probabilities.3

1 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595], see also s 29(1) of the Act.

2 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

3 Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].

Evidence and Written Submissions Evidence in Support

·     Declaration of Fred Nugent, Director of the Opponent, made on 17 October 2017, with Exhibits A, A1 to A34, AFL State of Origin Request, B, BA, C, C1, D, F, G, H, I, K to R, R1 to R5, S, T, T1, U, UU, UUU, V1, W, W1, X, Y, Y1, Z, Z1, Z2 (‘Nugent 1’).

Evidence in Answer

·Declaration of Peter Giurissevich, Legal Counsel authorised to act for the Applicant, made on 15 January 2018, with Exhibits PG1 to PG139 (‘Giurissevich’).

Evidence in Reply

·Declaration of Fred Nugent, Director of the Opponent, with Exhibit Answers 1, 1.1, 1.2 1.3, 2, 3, 3.1, 6.1, 7, 8, 8.1, 8.2, 9, 10, 10.1, 11, 12, 13, 14, 14.1, 15, 15.1, 15.2, 15.3, 16, 17, 18, 18.1, 19, 20, 20.1, 25, 26, 26.1, 26.2, 28, 30, 31a, 31, 32, 33, 34, R1, CC, I and UU, (‘Nugent 2’).

Additional Material

·Written submission of Michael Deacon and Chris Bevitt for the Applicant, dated 4 July 2018 (‘the Applicant’s submission’).

·The Opponent did not file written submissions.

The Opponent’s Evidence

11.It is clear from the evidence that there are a number of broader disputes between the Opponent and the Applicant and members of the Applicant relating to their past relationships, with all sides seeking to register various trade marks connected with the State of Origin series. In my summary I will focus on the information relevant to determining the various grounds of opposition to the registration of the Trade Mark.

12.Nugent 1 claims the following:

·The declarant Fred Nugent is the sole director of the Opponent which was incorporated in 1999.4 The Opponent and the declarant Fred Nugent are joint proprietors of the business name registration State of Origin.5 Fred Nugent is also the registrant of the domain name <stateoforigin.com.au> which has operated as a retail shopping website since 2004. The website sells different types of State of Origin merchandise, including but not limited to products in relation to the Australian Football League and Queensland Rugby League, as well as some generic products.6

13.The Opponent has promoted its State of Origin trade mark through its website, invoices, magazines, swing tags, radio, other organisations websites and google ads.7

14.Nugent 2 makes the following statements in relation to nominated grounds of opposition:8

·The Trade Mark cannot be registered because it is still in use by the Australian Football League (‘AFL’) and other sporting bodies and organisations, as well as by the Opponent.

·The Opponent unsuccessfully applied to register trade mark number 1075619 for the term WWWSTATEOFORIGIN.COM.AU in 2005.

·The Trade Mark is a reference to a person’s State of Origin, thus other sporting bodies would in the ordinary course of running inter-state competitions and related matters, without improper motive, desire to use the Trade Mark.

·If the Trade Mark is approved it would break the law because of the doctrine of laches and estoppel, because the Applicant has unnecessarily delayed the filing of the application or is otherwise estopped from filing due to its prior conduct.

·Consumers and other businesses address the Opponent as State of Origin because it is the Opponent’s business name and the name of its website and the term appears on its receipts, invoices and business documentation.

·The application for the Trade Mark was made in bad faith because Applicant was aware that the Opponent had been using the term State of Origin as the domain name for its website.

4 Nugent 1 [Exhibit A].

5 Nugent 1 [Exhibits B, C].
6 Nugent 1, 8.
7 Nugent 1, 70 [Exhibits A30, A31, A32a, A32b, A32c, A33, A34].

8 Nugent 2.

The Applicant’s Evidence

15.  Giurissevich claims the following:

·The Applicant is the peak body responsible for the governance, growth and development of the sport of rugby league in Australia.9 New South Wales Rugby League Limited and Queensland Rugby League Limited are members of the Applicant.

·The Applicant administers the State of Origin series which is an annual best of three series of rugby league matches between professional rugby league teams representing the States of New South Wales and Queensland.10

·The Trade Mark has been used in Australia in various formats by the Applicant and  its predecessors and licensees since 1980.11

16.Giurissevich provides the Applicant’s revenue from sponsorships, royalties and sales for the goods and services under the Trade Mark for the years 2009 to 2014.12

17.In Giurissevich the Applicant has provided examples of how the Trade Mark has been promoted and advertised online via websites and social media particularly Facebook, Twitter and Instagram,13 and through television, events, tickets, players jerseys, player clothing, support staff clothing, supporter flags, banners, signage, flyers and related merchandise.14

9 Giurissevich 2.

10 Giurissevich 44-46.
11 Giurissevich 50.
12 Giurissevich 122-130 [Exhibits PG121-130].
13 Giurissevich 88-90 [Exhibits PG41-43].

14 Giurissevich 69-121[Exhibits PG46-120].

18.  Giurissevich provides a breakdown of spectator attendance figures for State of Origin matches for the period 2000 to 2013, and audience figures for every State of Origin match that has been televised free-to-air in Australia since 1980.15

Consideration and Reasons Section 41

19.Section 41 of the Act relatively 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.

(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.

(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.

15 Giurissevich 91-104 [Exhibits PG44-65].

20. In the SGP the Opponent particularises the s 41 ground of opposition as follows:

The applicant TM is needed by other parties and traders, state of origin means exactly that, a person state of origin. I’m sorry but this mark cannot be allowed to be registered. The applicant TM in its own right is not capable of distinguishing any parties goods and or services.

21.The well-established test for determining whether a trade mark is inherently adapted to distinguish is set out in Clark Equipment Co v Registrar of Trade Marks by Kitto J:

[T]he question whether a mark is adapted to distinguish be tested by reference to the likelihood that 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.16

22.The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited endorsed the test but it used new descriptive terminology to describe the test. The Majority view stated that:

The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.17

23.In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Federal Court summarised the governing principles as follows:

16 Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, [515].

17 Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48; 254 CLR 337, [59].

(1)  In deciding whether or not a trade mark is capable of distinguishing the designated services from the services of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others…

(2)   In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends 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 connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.

(3)    The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise 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 the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.

(4)   Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to  make’  to  those  goods”: Cantarella  Bros  Pty  Limited  v  Modena  Trading   Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

(5)   The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

(6)    In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].

(7)   In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

(8)  Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].

(9)   Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].

(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].

(11)   Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not

to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other   traders   might   legitimately   need   to   use   the   word   in   respect    of    their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under  the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].18

24.  It is appropriate to first consider the ‘ordinary signification’ of the Trade Mark. It is, in my consideration, to fall into error to assume that the ‘ordinary signification’ of a word or words that form a trade mark is indicated only by the dictionary definition of the words. Consideration must be afforded to the ‘ordinary signification’ of the words and is to be considered from the perspective of ‘any person in Australia concerned with the goods and services to which the Trade Marks are to be applied’19. This consideration includes how the words are used in the relevant trade and how they are likely to be understood by the public.

25.The Trade Mark is STATE OF ORIGIN and the owner of the Trade Mark is the Australian Rugby League Commission. The goods and services claimed in classes 16, 25 and 41 are limited to goods and services promoting or marketing or otherwise relating to or associated with or indicating a connection with the game or sport of rugby league.

26.In this case the meaning of the term STATE OF ORIGIN in the context of rugby league means a sports competition between players representing their States or Territories.20

27.The Opponent argues that the Trade Mark has no inherent adaptation to distinguish and is needed by other traders and while I agree that the term is one which has been freely used in the past by other sporting associations in relation to similar goods and services, in this instance the Applicant’s Goods and Services are limited to those indicating a connection with

18 Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [236].

19 Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48; 254 CLR 337, [70].

20 Giurissevich 44-52.

the game or sport of rugby league. As a result I consider that the Trade Mark has some slight inherent adaptation to distinguish and should be considered under s 41(4) of the Act in relation to the Applicant’s printed goods in class 16 and its services in class 41 relating to educational, recreational, sporting, gambling, entertainment and cultural services (‘the remaining Goods and Services). However, I am satisfied that the Trade Mark is capable of distinguishing the Applicant’s other goods and services in classes 16, 25 and 41.

28.In terms of s 41(4) of the Act I am to assess whether the evidence of use or the intended use of the Trade Mark by the Applicant already distinguishes the Applicant’s remaining goods and services, or whether it is, on balance, likely to distinguish.

29.The evidence of use of the Trade Mark by the Applicant and its predecessors and licensees set out in Giurissevich in respect of the Applicant’s remaining Goods and Services since 1980 is significant. In my assessment the revenue from sponsorships, royalties and sales is high and the Trade Mark has been well advertised and promoted via social media particularly Facebook, Twitter and Instagram, and through television, radio, websites, events, players jerseys, player clothing, support staff clothing, supporter flags, banners, tickets, signs, flyers and related merchandise.

30.Additionally, spectator attendance at every State of Origin match is in the tens of thousands and the series has been televised free-to-air in Australia since 1980, reaching millions of Australian television viewers each year, with the commercial signage displaying the Trade Mark everywhere at the game being televised across the country.

31.The Trade Mark as it appears in the front cover of the official program:21

32.The Trade Mark as it appears on the match ground, clothing and on a banner (2011 State of Origin series):22

33.I am satisfied that as a result of the use of the Trade Mark by the Applicant in respect of the remaining Goods and Services since 1980, the Trade Mark distinguishes those from the goods and services of other traders.

21  Giurissevich [Exhibit PG-29].

22  Giurissevich [Exhibit PG-56].

34. The Opponent has not established its ground of opposition under s 41 of the Act.

Section 42

35.Section 42 of the Act provides:

42    Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a)the trade mark contains or consists of scandalous matter; or

(b)its use would be contrary to law.

36. In the SGP the Opponent particularises the s 42 ground of opposition as follows:

The applicants behaviour is scandalous, they have agreed that the TM belongs to Enterprise Above and Beyond Pty Ltd, we have both been using the mark now for almost 18 years, the applicant has agreed that Enterprise Above and Beyond Pty Ltd owns it. We applicant is aware that we have invested large sums of money into the trademark because the applicant or its predecessors didn’t want the mark.

37.Under s 42(a) of the Act a trade mark must be rejected if the trade mark contains or consists of scandalous matter. Therefore, I must decide whether the Trade Mark should be regarded as shameful, offensive or shocking, and therefore be rejected.23

38.In this case the Trade Mark is the term STATE OF ORIGIN and in the context of rugby league competition means a sporting event between players representing their State or Territory and on this reading or from a number of meanings that could be attributed to the term, I find that the Trade Mark does not consist of or contain elements that would cause scandal.

39.Under a s 42(b) ground of opposition the onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.24

23 Trade Mark Office Manual Part 2, 2.1.

24 Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

40.  In Nugent 2 the Opponent submits that the Trade Mark cannot be registered by the Applicant because it would be contrary to law under the common law doctrines of laches and estoppel. However, there is not enough evidence before me to establish that these Equity doctrines have been breached and the Opponent has not filed any submissions which would shed light on how these doctrines would apply to the Trade Mark application.

41.The Opponent has not established a ground of opposition under s 42 of the Act.

Section 43

42.Section 43 of the Act provides:

43     Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

43. In the SGP the Opponent particularises the s 43 ground of opposition as follows:

The use of he work TM would clearly conveys a connection with Enterprise Above and Beyond Pty Ltd, we have both been using the mark now for almost 18 years, the applicant has agreed that Enterprise Above & Beyond Pty Ltd owns this mark in a contract, this allowed the applicant to use the trademark in its own right, as a result the mark itself doesn’t distinguish the applicants good from other traders such as Enterprise Above and Beyonds Pty Ltd Goods.

44. To establish a ground of opposition under s 43 of the Act, there must be a connotation inherent within the trade mark itself.

45.In Pfizer Products Inc v Karam, Gyles J commented:

‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question.25

25 Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599, [53].

46.  The SGP suggests that use of the Trade Mark would clearly convey a connection with the Opponent, however, in Winton Shire Council v Lomas, Spender J said:

Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.26

47.Accordingly, the statements made by the Opponent are not relevant considerations under s 43 of the Act.

48.The Opponent has not established a ground of opposition under s 43 of the Act.

Section 44

49.Section 44 of the Act relatively provides:

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.

(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.

(3)    If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

26 Winton Shire Council v Lomas [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].

(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.

(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.

50. In the SGP the Opponent particularises the s 44 ground of opposition as follows:

Section 44/regulation 4.15A, substantially identical/deceptively similar to application no 1588430 logo, 1588254, 1673749 logo and 1673750. The word “state of origin” appears in tm 1578151.

51. To make out the ground under s 44(1) the Opponent must establish the following:

·that at least one of the trade marks upon which the Opponent relies has an earlier priority date than that of the Trade Mark;

·that the Trade Marks is substantially identical or deceptively to the Opponents trade marks; and

·that the Trade Mark is in respect of similar or closely related goods and/or services to the Opponents goods and services.

Priority date

52.In the SGP the Opponent has nominated trade mark numbers 1588254, 1588430, 1673749 and 1673750 and all these applications are in the name of the Opponent. However, all of these trade marks have a priority date which is later than the Relevant date of the Trade Mark and therefore cannot be considered. In relation to trade mark number 1578151 which I note is not owned by the Opponent, it does have an earlier priority date than the Relevant date of the Trade Mark. Its details are set out below:

Trade Mark:  (‘the Polo trade mark’) Application No: 1578151

Priority Date:             3 September 2013

Ownership:                POLO Enterprises Holdings Pty Limited Specification:             Classes 25, 35, 41 (see Annexure B)

Substantially Identical Trade Marks

53.In assessing whether trade marks are substantially identical the test stated by Windeyer J in

Shell Company of Australia v Esso Standard Oil (Australia) Ltd is applied:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. 27

54.  Furthermore, the Full Federal Court has said that to correctly apply the test set out by Windeyer J in determining whether the trade marks are substantially identical, first determine the essential features of each of the trade marks under comparison. More recent case law has used other words to express this test but the substance of the test itself has not changed.28

27 The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407, [414], (‘Shell’).

28 Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [206].

55.  The respective trade marks to be compared are as follows:

Trade Mark	Polo trade mark
STATE OF ORIGIN

56.On a side by side comparison I find that the trade marks are not substantially identical. It is apparent that the essential and only feature of the Trade Mark is the term STATE OF ORIGIN and that this term is wholly contained within the Polo trade mark, however the Polo trade mark also contains the word POLO, a shield and polo players and the total impression that emerges from the comparison is that they are different.

Deceptively Similar Trade Marks

57.Section 10 of the Act defines a ‘deceptively similar’ trade mark as:

[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.

58.The concepts of ‘deceive’ and ‘cause confusion’ were clarified in the New Zealand case      of Pioneer Hi- Bred Co v Hyline Chicks Pty Ltd, where Richardson J said:

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.29

59.In assessing deceptive similarity, the case of Australian Woollen Mills v F. S. Walton and Company Ltd Dixon and McTiernan JJ provided the relevant test for comparison:

[T]he marks ought not…be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for

29 Pioneer Hi- Bred Co v Hyline Chicks Pty Ltd [1979] RPC 41, [423].

which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same…The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.30

60.  In this matter, the common element between the two trade marks is the term STATE OF ORIGIN. The term is the essential feature of the Trade Mark. The Polo trade mark has other elements but these other elements, being the word POLO, a shield and polo players are descriptive to varying degrees and do not diminish the prominence of the term STATE OF ORIGIN. Potential consumers with a recollection of the Polo trade mark would on encountering the Trade Mark be deceived or confused as to the trade source of the Applicant’s Goods and Services.

Goods and Services

61.The Polo trade mark covers goods in class 25 and services in classes 35 and 41  (see Annexure B), and the Trade Mark claims goods in classes 16 and 25 and services in class 41 (see Annexure A).

62.In relation to the goods, the Polo trade mark covers sports clothing in class 25 which are the same as the clothing and sportswear items claimed by the Trade Mark in class 25.

63.In relation to the services covered by the Polo trade mark in classes 35 and 41, there are no conflicts with the services covered by the Polo trade mark in class 35, however, the sporting, entertainment, education, training and cultural services covered by the Polo trade mark in class 41 are the same as the services claimed by the Trade Mark in class 41.

64.Therefore, the Trade Mark is deceptively similar to the Polo trade mark and claims the same goods in class 25 and services in class 41.

30 Australian Woollen Mills v F. S. Walton and Company Ltd [1937] HCA 51; (1937) 58 CLR 641, [658].

65. Once a ground under ss 44(1) and 44(2) is established, the onus is on the Applicant to satisfy the Registrar that it is appropriate that she exercise her discretion to accept the application under the provisions of s 44(3) or 44(4). I turn now to consider the Applicant’s evidence.

Assessing the provision of s 44(4)

66.The priority date of the Polo trade mark is 3 September 2013 and the Relevant date of the Trade Mark is 10 October 2013. Noting the Trade Mark was accepted under the provisions of s 44(4) of the Act, and in reviewing the evidence which shows strong continuous use of the Trade Mark in relation to the Applicant’s Goods and Services before the priority date of the Polo trade mark, that it remains appropriate to apply the provisions of s 44(4) of the Act.

67.Accordingly, the Opponent has not established the ground of opposition under s 44 of the Act.

Section 58

68.Section 58 of the Act provides:

58 Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

69. In the SGP the Opponent particularises the s 58 ground of opposition as follows:

Enterprise Above and Beyond Pty Ltd is the owner of this trade mark, the applicant has agreed in writing, we have clear evidence that they didn’t want the TM years ago. A number of other company’s and organisations use the mark.

Fred Nugent Manager director of Enterprise Above & Beyond Pty Ltd has been using tm 1698527 across categories 16, 25, 41, 24, 28 and many more. State of origin Business name owned by Fred Nugent supplies merchandise to the public from domain name and business since 2003.

70.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:

·that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);31

·that the Applicant’s services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);32 and

·that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).33

Substantially Identical Trade Marks

71.In the SGP the Opponent submits that its common law trade mark, reproduced below, is the same as the Trade Mark and Nugent 1 provides examples of the following trade mark as it appears in advertisement strips in Rugby League Week:34

72.It is also noted that the trade mark above is the same as the Opponent’s lapsed trade mark application number 1588430 filed on 29 October 2013.

73.On a side by side comparison,35 I find that the trade marks are substantially identical. It is apparent that the essential feature in each of the trade marks is the term STATE OF ORIGIN and while the Trade Mark is presented as the plain word term STATE OF ORIGIN and the Opponent’s trade mark is in fancy script and contains the descriptors COM.AU, these differences do not outweigh the similarity between them. Accordingly, a total impression of resemblance emerges from a comparison of the trade marks.

31 Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

32 Re Hicks’ Trade Mark (1897) 22 VLR 636.
33 Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, [413].
34 Nugent 1 [Exhibit A33].

35 Shell n. 23.

74.  I am satisfied that the Trade Mark is substantially identical to the trade mark shown in evidence by the Opponent and I will proceed by addressing the third factor required to establish that the Applicant is not the owner of the Trade Mark.

Prior use

75.In relation to the question of prior use, Deane J said in Moorgate Tobacco Co Ltd v Philip Morris Ltd (No.2):

The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of ‘proprietor’ of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person.36

76.  In the SGP the Opponent submitted use of its trade mark since 2003. However, Giurissevich provides clear evidence that the Trade Mark has been used in Australia in various formats by the Applicant and its predecessors and licensees since 1980.37 Insofar as the Opponent submits that the Applicant may have abandoned the Trade Mark, this is simply not bourne out by the weight of the evidence showing its substantial and continuous use from 1980 through to the Relevant date.

77.Therefore, the Opponent has not established that the Applicant was not the owner of the Trade Mark at the Relevant date.

78.The Opponent has not established the ground of opposition under s 58 of the Act.

Section 62A

79.Section 62A of the Act provides:

62A Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

80. In the SGP the Opponent particularises the s 62A ground of opposition as follows:

36 Moorgate Tobacco Co Ltd v Philip Morris Ltd (No.2) (1984) 156 CLR 414, [432].

37 Giurissevich 50.

The applicant intention is to drive any competition from the market at any cost, even when they are well aware that other parties use the tm. The applicant signed an agreement with Enterprise above and Beyond Pty Ltd to use the mark that Enterprise Above and Beyond Pty Ltd and Fred Nugent own. They have agreed that Enterprise Above and Beyond Pty Ltd owns the mark. We own the domain name “ and the register business name “state of origin”.

81.The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some illustrations of applications made in bad faith:

·persons who monitors new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

·persons who have a history of applying for trade marks that deliberate misspellings of other registered trade marks; and

·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

82.  As these illustrations are not exhaustive, in DC Comics v Cheqout Pty Ltd Bennet J observes that all of the circumstances surrounding the application to register a trade mark are relevant.38 Moreover, conduct after the priority date can be used to shed light on the Applicant’s subjective intent at the filing date.39

83.In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry’) Dodds-Streeton J approved the following comments, in Harrison’s Trade Mark Application:40

Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

… The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his

38  DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62].

39  DC Comics v Cheqout Pty Ltd [2013] FCA 478, [71].

40 Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; Harrison’s Trade Mark Application

[2004] EWCA Civ 1028; [2005] FSR 10.

decision to apply for registration would be regarded as in bad faith by persons adopting  proper standards.41

84.  Her Honour also considered:

The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand, or unconscientious character.42

85.  In this matter, it is clear from the evidence that there are a number of broader disputes between the Opponent and the Applicant and in the SGP and in Nugent 1 and 2 there are a number of assertions that the Applicant’s conduct falls below acceptable commercial standards. However, these statements, even if proven, are not compelling evidence of bad faith. Combined with other conduct it might take on more importance, but here the evidence clearly establishes that the Applicant has used the Trade Mark since 1980, well before the Opponent established its online business.

86.On balance therefore, there is insufficient cogent evidence before me which establishes that the Applicant’s conduct in applying to register the Trade Mark might be said to infer bad faith, as is clear from Dodds-Streeton J’s ultimate determination in Fry.

87.The Opponent has not established the ground of opposition under s 62A of the Act.

Decision

88.Section 55 of the Act relatively provides:

55 Decision

(1)    Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

41 Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [147].

42 Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [165-166].

(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.

89.  The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade Mark application number 1698527 may proceed to registration not less than 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 the registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Costs

90.The Applicant has sought an award of costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Marks Regulations 1995.

Louise Tuohy Hearing Officer

Trade Marks Hearings 8 September 2020

Annexure A

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; sporting picture programmes, programs, diaries, calendars and posters in this class; trading cards (printed matter); score cards, score books and score boards in this class; stickers, sticker books, napkins, serviettes, place mats and table cloths in this class; magazines in this class; publications in this class; books including instructional and educational books; pre-paid telephone calling cards in this class (not magnetically encoded); stamps; wrapping paper; swing tickets; book covers; pencil cases and rulers; mats for beer glasses; transparencies; decalcomanias; all of the foregoing goods promoting or marketing or otherwise relating to or associated with or indicating a connection with the game or sport of rugby league

Class 25: Clothing; footwear; headgear; hats; beanies; aprons; scarves; jumpers; sporting and athletic clothing in this class; boxer shorts; caps; visors; dressing gowns; bathrobes; jackets; jerseys; children's wear; babywear; cloth bibs; overcoats; casual shirts; shoes; boots; shorts; singlets; socks; swimwear; neckwear; neckties; neckwarmers; pants; tracksuits; T-shirts; underwear; sweatshirts; sweatpants; sweaters; knitwear; shirts; vests; pyjamas; nightgowns; sleepwear; nightshirts; hosiery; weatherproof clothing; rainwear; gloves; clothing belts; thongs; sheep-skin boots; sandals; flip flops; all of the foregoing goods promoting or marketing or otherwise relating to or associated with or indicating a connection with the game or sport of rugby league

Class 41: Educational, recreational, sporting, coaching and training activities in this class; gambling services in this class; publication services in this class; production and distribution of pre-recorded video cassettes, video tapes and videodiscs; production and distribution of pre-recorded audio cassettes, audio tapes, audio discs and phonograph records; providing on-line information in the field of entertainment, sport, training and cultural activities; educational services relating to sport and physical education; provision of sport and physical training; teaching and coaching services relating to sport and physical education; sport and physical recreation; entertainment including sport and stadium entertainment and audience participation events; sporting and cultural activities; organising sporting competitions, matches, exhibitions and events; organisation of functions and entertainment including luncheons, cocktail parties, dinners and other forms of entertainment; hosting and organising sport award functions; sports mascot performances, cheer leader performances and dance team performances; providing sports facilities; rental of sports equipment; publishing of books, magazines, texts and printed matter; television and radio entertainment; film, video and radio production; hire of film, video and sound recordings; recording and reproduction (being production and publication) of sounds, images and data (information) related to rugby league matches, services and events, being entertainment, sporting and cultural activities; sports information services; online (electronic) publication of news and other texts; all of the foregoing services promoting or marketing or otherwise relating to or associated with or indicating a connection with the game or sport of rugby league

Annexure B

Class 25: Sports caps; sports clothing (other than golf gloves); sports garments (other than golf gloves); sports jackets; sports jerseys; sports jumpers; sports shirts; sports sweaters; sports uniforms (other than golf gloves or helmets); sportswear (other than golf gloves or helmets)

Class 35: Marketing; Provision of retail services, including online

Class 41: Advisory services relating to the organisation of sporting events; arranging of sporting events; arranging of sports competitions; booking of sports facilities; coaching services for sporting activities; country clubs (providing entertainment and sporting facilities); event management services (organization of educational, entertainment, sporting or cultural events); hire of equipment for sports; hire of sports facilities; information services relating to sport; management of sporting events; officiating at sports contests; organisation of sporting activities; organisation of sporting competitions; organisation of sporting events; organisation of sports competitions; production of sporting events; providing facilities for sports events; providing information, including online, about education, training, entertainment, sporting and cultural activities; providing sports facilities; providing sports training facilities; provision of apparatus for sports; provision of facilities for sports; provision of information about sports; provision of sport facilities; provision of sporting competitions; provision of sporting events; provision of sporting facilities; provision of sports facilities; rental of equipment for use at sporting events; rental of sporting apparatus; rental of sporting apparatus and equipment (except vehicles); rental of sports apparatus; rental of sports equipment; rental of sports equipment (except vehicles); rental of sports facilities; sport camp services; sporting activities; sporting information; sports coaching; sports consultancy; sports information services; sports instruction services; sports officiating; sports refereeing; sports training; sports tuition; film production; production of audio and/or video recordings; production of live entertainment; production of live performances; production of magazines; production of music shows; production of videos; production of webcasts; management of entertainment events