Re Opposition by Long Way Home Holdings Pty Ltd to registration of trade mark application 1875547 (41) - Lion - in the name of Saroo Brierly Enterprises Pty Ltd
[2020] ATMO 109
•23 June 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSReOpposition by Long Way Home Holdings Pty Ltd to registration of trade mark application 1875547 (41) – LION – in the name of Saroo Brierly Enterprises Pty Ltd
Delegate: Robert Wilson
Representation: Opponent: Simpsons Solicitors
Applicant: Gestalt Law Pty Ltd
Decision: 2020 ATMO 109
Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 58, 60 and 62A considered – name of a film not a trade mark – no grounds established – trade mark may proceed to registration
Background
This decision concerns an opposition brought by Long Way Home Holdings 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 in the name of Saroo Brierly Enterprises Pty Ltd (‘the Applicant’):
Application Number:
1875547
Filing Date:
5 October 2017
Specification:
Class 41: Theatre productions; Musical performances; Presentation and production of live performances; Production of stage performances, stage plays and shows; Production of shows; Theatre services; Theatre booking services; none of the foregoing relating to sports, food liquor, hospitality and beverage industries
(‘the Applicant’s Services’)
Trade Mark:
LION
(‘the 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.
Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration and a Statement of Grounds and Particulars (‘the SGP’). The SGP nominated grounds of opposition under ss 42(b), 58, 60 and 62A. The Applicant subsequently filed a Notice of Intention to Defend.
Evidence
The Opponent filed Evidence in Support of its opposition, being:
·Declaration made on 12 September 2018 by Rebecca Elizabeth Hardman, the Head of Legal & Business Affairs (Australia) for the Australian company See‑Saw Films Pty Ltd (‘See-Saw’), with Annexures RH-1 to RH-23 (‘Hardman 1’). Ms Hardman indicates in her declaration that the Opponent is a wholly owned subsidiary of See‑Saw.
The Applicant filed Evidence in Answer, being:
·Declaration made on 20 December 2018 by Saroo Brierley, the sole director/secretary of the Applicant, with Annexures SB-1 to SB-31 (‘the Brierley declaration’); and
·Declaration made on 20 December 2018 by Jasmine Waddell, a paralegal employed by Gestalt Law Pty Ltd, the representative of the Applicant, with Annexure JW-1 (‘the Waddell declaration’).
The Opponent filed Evidence in Reply, being:
·Declaration made on 1 March 2019 by Luke Francis Davies, a screenwriter, novelist and poet, with Annexures LD-1 to LD-4 (‘the Davis declaration’); and
·Declaration made on 4 March 2019 by Rebecca Elizabeth Hardman with Annexures RH-1 and RH-2 (‘Hardman 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. Neither party requested to be heard but both filed written submissions. The Opponent’s submissions were prepared by its representatives, Simpsons Solicitors. The Applicant’s submissions were prepared by its representative, Gestalt Law Pty Ltd.
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 Hardman 1:
See-Saw is an Australian independent film and television production company. The business of See-Saw was founded by Iain Canning and Emile Sherman in 2008 and is operated through See-Saw and the See-Saw group of companies (‘See-Saw Business’). This includes the companies in the See-Saw group and companies in the US and UK that manage See-Saw’s operations in those countries.
Since 2008 the See-Saw Business has gone on to become one of Australia’s leading independent film and television production companies. The See-Saw Business has produced numerous popular and critically acclaimed films and television productions including:
(a) The Kings Speech, a 2010 film that won numerous awards both in Australia and overseas. Most notably it was nominated for 12 Academy Awards in 2011 and won three of those including Best Picture of the Year; …
See-Saw also produced a highly successful film called Lion. That film is discussed in more detail below.
The Applicant/Saroo Brierley
According to the Brierley declaration:
I am the sole director/secretary of the Applicant. (A company extract provided in annexure SB-1 to the Brierley declaration shows that Mr Brierly is also the sole shareholder of the Applicant) …
I reside in Hobart Tasmania. I was born Sheru Munshi Khan in Ganesh Talai, a suburb within Khandwa, Madhya Pradesh, India.
In 1986, aged only five years, I lost all contact with my family when I was at a train station waiting for my brother who never returned. After living on the streets of Calcutta for three weeks by myself, I was then placed into a local orphanage where an Australian family adopted me. I then grew up with my adopted parents (Sue and John Brierley) in Hobart, Tasmania where I spent the next 25 years. I grew up in Australia with the name Saroo Brierley. …
In February 2002, after 25 years of separation, I was finally reunited with my mother. A couple of hours later a local police officer alerted the media to this reunion and my story. The story immediately went viral and spread throughout the world via the internet. …
As a result of this publicity, I was approached by a number of different publishers in Australia to obtain book rights for my memoir. I ultimately settled on Penguin Group (Australia) (‘Penguin’) …
Penguin introduced me to writer Larry Buttrose who I selected to perform the role as a ghost writer for my memoir. I wrote approximately 90% of the book myself. Larry assisted with research, writing, re writing and editing. We performed this work during the latter half of 2012.
My memoir was first published 24 June 2013 under the title A Long Way Home. …
Worldwide sales of my memoir are currently at approximately 500,000 books. …
Neither the Opponent or [See-Saw] derive any royalties or other financial payments in relation to publication of the book. …
In commercialisation of my memoir, I kept movie rights and theatrical rights separate and sought to commercialise them separately. I did this deliberately as many film producers have no experience and skill set to produce stage shows or musicals. … The Opponent/See-Saw expressed an interest in producing a stage show. Although that business has no experience in producing stage shows or musical shows, it presented a business case that it could and therefore I have granted it an option in relation to stage rights. …
Lion Name
I had grown up believing that my given name is ‘Saroo’. However, when I reunited with my family, I was immediately advised that my name is a phonetic equivalent, namely ‘Sheru’. In research for my memoir I became aware that this means Lion in Hindi. This is referenced in my memoir …
I consider that Lion is my name and also part of my journey. …
Film
The film of my memoir was released under the title LION and had its world premiere at the Toronto International Film Festival on 10 September 2016. …
I applied to protect the name LION as a trade mark as this is a name which refers to me and is one component of my brand.
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 60 and 62A. To successfully oppose registration, the Opponent need establish only one of those grounds. The onus of proof in an opposition rests upon the Opponent.0F[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.1F[2] The date at which the rights of the parties are to be determined is 5 October 2017, being the filing date of the application (‘the Relevant Date’).2F[3] The Relevant Date is also the priority date for the purposes of s 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].
Name of a film as a trade mark
Section 7 defines a trade mark as, ‘a sign used, or intended to be used, to distinguish goods or services dealt with in the course of trade by a person from goods or services so dealt with or provided by any other person’. Pivotal to this decision is whether the title of a film fits within that definition of a trade mark. The Opponent’s submissions do not directly address this question. However, the Opponent’s evidence and submissions appear to be based on an assumption that the answer to this question is ‘yes’.
The Applicant asserts the contrary view and in doing so referred to Danjaq LLC v OHIM (T-435/05) [2009] Decision of The Court of First Instance of The European Communities (Second Chamber) (‘the Dr No case’). In that case, the court upheld a decision of the Board of Appeal of the Office of Harmonization for the Internal Market (‘OHIM’) that a film title is an indicator of artistic, but not commercial, origin and, as such, is not a trade mark. Mission Productions Gesellschaft fiir Film-, Fernseh- und Veranstaltungsproduktion mbH (‘Mission’) was an intervener. A brief summary of the relevant facts follows:
·Mission filed an application to register Dr. No as a trade mark for goods in Classes 9, 12, 18, 25 and 32. The application concerned goods such as: scientific, nautical, surveying, photographic, cinematographic, optical … apparatus and instruments, software programs, recorded image and sound carriers; vehicles; luggage; umbrellas; clothing, footwear, headgear; beers; mineral and aerated waters and other non-alcoholic beverages.
·Danjaq LLC (‘Danjaq’) opposed the application on the basis that that there was a likelihood of confusion with the earlier well-known marks Dr. No and Dr. NO. Danjaq relied on the non-registered earlier marks, and the signs, Dr. No and Dr NO, ‘used in the course of trade to designate films, DVDs, videos, comic books, music recordings, books, posters and action figures’.3F[4]
·OHIM rejected the opposition, holding that Danjaq ‘had not proved that the marks in question had a well-known character or that the non-registered marks or the signs other than trade marks had previously been used in the course of trade’.4F[5]
·Danjaq appealed the decision.
[4] Danjaq LLC v OHIM (T-435/05) [2009] Decision of The Court of First Instance of The European Communities (Second Chamber), [3] (Pelikánová, Jürimäe and Soldevila Fragoso JJ).
[5] Ibid [4].
At the appeal, Danjaq asserted, inter alia, that OHIM had misinterpreted the concept of ‘use as a trade mark’, since Danjaq had ‘used the signs referred to in order to identify its goods and the other goods distributed and marketed with its agreement’.5F[6]
[6] Ibid [19].
In considering whether Danjaq had used the relevant signs as trade marks the court found:
[I]t is settled case-law that the essential function of a trade mark is to identify the commercial origin of goods or services, thus enabling the consumer who purchases them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative …
Next, it should be pointed out that Dr. No is the title of the first film in the ‘James Bond’ series and also the name of one of the main characters in the film. Theoretically, those facts cannot prevent the use of the signs Dr. No and Dr. NO as trade marks in order to identify the commercial origin of the films or DVDs.
However, in the present case, an examination of the documents submitted by the applicant shows that the signs Dr. No and Dr. NO do not indicate the commercial origin of the films, but rather their artistic origin. For the average consumer, the signs in question, affixed to the covers of the video cassettes or to the DVDs, help to distinguish that film from other films in the ‘James Bond’ series. The commercial origin of the film is indicated by other signs, such as ‘007’ or ‘James Bond’, which are affixed to the covers of the video cassettes or to the DVDs, and which show that its commercial origin is the company producing the films in the ‘James Bond’ series. Moreover, even if the profits that the film Dr. No had generated within the Community are capable of showing the commercial success of the film in that territory, the fact remains that they cannot show that the signs in question are used as indicators of commercial origin.
In addition, contrary to the applicant’s claim, the distinction between title and trade mark is not ‘unrealistic and artificial’. The same sign may be protected as an original creative work by copyright and as an indicator of commercial origin by trade mark law. It is therefore a matter of different exclusive rights based on distinct qualities, that is to say the original nature of a creation, on the one hand, and the ability of a sign to distinguish the commercial origin of the goods and services, on the other … Therefore, even if the title of a film can be protected pursuant to certain national laws as an artistic creation independent of the film itself, it cannot automatically enjoy the protection afforded to indicators of commercial origin, since only signs which develop characteristic trade mark functions may enjoy that protection.
In the case of comic books, music recordings, books and posters, the signs Dr. No and Dr. NO are likewise not used as trade marks, but as a reference which is descriptive of the goods, indicating to consumers that they are music from the film Dr. No, a book or a comic book about the character of ‘Dr. No’, or a poster of that film or character. As is apparent from examining the documentation supplied by the applicant, some of the goods referred to are marketed to the public under other indicators of origin, namely ‘007’ and ‘James Bond’, which indicate to consumers that the commercial origin of the abovementioned goods relating to the film or the character of ‘Dr. No’ is the same as that of the films in the ‘James Bond’ series.
The same conclusion applies in the case of model cars or watches produced by the companies with a licence to use the signs Dr. No and Dr. NO on those goods. In both cases, the use of those signs is merely descriptive, indicating to consumers that the car in question is a model of the one used in the film Dr. No, or that the watch is the one for the film Dr. No in a collection of watches produced to commemorate the fortieth anniversary of the films in the ‘James Bond’ series.6F[7]
[7] Ibid [23]–[28] (citations omitted).
The Applicant submitted that although the Dr No case involves an opposition under the European legislative scheme, which is different to that in Australia, the provisions relating to trade marks as a badge of origin are directly applicable to an opposition in Australia. I concur with this view. Further I consider the Dr No case to be highly relevant precedent in relation to the present matter.
The Opponent’s use of the Trade Mark
On 10 September 2016, a film produced by See-Saw premiered at the Toronto International Film Festival. The film was entitled Lion and is the one referred to in the background of the Applicant, provided above. The film was heavily promoted and was very successful: including winning many awards. A soundtrack album was subsequently released.
In respect of the s 58 ground of opposition—discussed further below—the Opponent submitted:
There is no doubt that the Opponent was the first user of [the Trade Mark] in Australia, when marketing and promotional activities commenced in respect of the Opponent’s Film.
In respect of the s 60 ground of opposition—discussed further below—the Opponent submitted:
There can be no doubt that, by [the Relevant Date], the mark LION enjoyed a significant reputation amongst a significant section of the public in Australia. In this connection, reputation can be inferred from a high volume of sales combined with substantial advertising figures and other promotions. …
[The Trade Mark] enjoys a significant reputation amongst the Australian cinema-going public, and indeed more generally, owing to the film’s widespread publicity.
The Lion film was clearly very successful and well known. In line with the Dr No case, this alone is not sufficient to support a finding that the title of the film was used as an indicator of trade origin. The Opponent’s evidence provides many examples of the ways in which the Lion film was promoted. In none of those is LION used as anything but the title of the film and a reference to it. At no point is LION used to indicate the trade source of the film. Neither does any of the other evidence provided by the Opponent satisfy me that LION was used at any time as a trade mark and not simply as a reference to the film. Nothing in the Opponent’s evidence satisfies me that it has, at any time, used the Trade Mark in the manner described in s 7, that is, as a trade mark.
Section 58
In the SGP, the Opponent particularised this ground of opposition as follows:
The Opponent is the owner of the trade mark LION (Opponent Mark). The Opponent Mark is identical to the opposed mark and have been used in Australia by the Opponent or related parties of the Opponent since before the priority date of the opposed application.
The Opponent Mark is in use in Australia and throughout the world in relation to class 41 services and in particular a major motion picture and related goods and services. This includes services the subject of the opposed application or that are essentially the same as those in the opposed application.
Section 58 is reproduced below:
Section 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.
Note:For applicant see section 6.
The owner of a trade mark for particular good/services is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is now well established 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;7F[8]
· 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;8F[9] 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.9F[10]
[8] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.
[9] Re Hicks’ Trade Mark (1897) 22 VLR 636.
[10] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.
The Opponent has based this ground on the assumption that the Opponent used LION as a trade mark; I have found that this is not the case. 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 LION] has, through use, acquired a reputation in Australia. The reputation includes a reputation in relation to services the subject of the opposed application and related goods and services. The use and reputation of [the trade mark LION] predates the priority date of the opposed trade mark application. The opposed mark is identical to [the trade mark LION]. As a result, use of the opposed trade mark is likely to deceive or cause confusion with the Opponent Mark.
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 a ground of opposition under s 60 an opponent must demonstrate that at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.
The Opponent has, again, based this ground on an assumption that it has used LION as a trade mark; I have found this is not the case. Consequently, the Opponent has failed to establish this ground of opposition.
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 Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.10F[11] The relevant time for assessing whether the use of the Trade Mark would be contrary to law is at the Relevant Date but ‘looking forward to prospective conduct after registration’.11F[12]
[11] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
[12] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502 [42] (Wilcox J).
The ground of opposition pursuant to s 42 was particularised in the SGP as follows:
Use of [the Trade Mark] would be contrary to the Trade Marks Act 1995 (Cth), Competition and Consumer Act 2010 (Cth) and the tort of passing off.
The Opponent’s submissions do not point to any provisions, nor address how, use of the Trade Mark would be contrary to the Trade Marks Act 1995 (Cth). Consequently, whether use of the Trade Mark would be contrary to that act will not be discussed further.
Most commonly in trade mark disputes where an opponent has failed to establish a ground of opposition under s 60 use of the opposed trade mark will not be contrary to the Competition and Consumer Act 2010 (Cth) nor the tort of passing off. However, there are circumstances where s 42(b) may still have work to do. Such a situation is where the sign relied on by an opponent is not a trade mark. In Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd the delegate stated:
[T]he Opponent need not rely on the reputation of a trade mark: it is only necessary that the indicium relied upon by the Opponent has a reputation such that the indicium is associated in the public mind with the Opponent.12F[13] Nor is this forum confined to considering only trade marks—when an indicium is associated with a trader because of usage by the public rather than the trader, a Registrar’s delegate must consider the argument put by an opponent.13F[14] 14F[15]
[13] Pacific Dunlop Ltd v Hogan [1989] FCA 1335; Qantas Airways Ltd v Amadio [2011] ATMO 84.
[14] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [26]–[28] (Madgwick J).
[15] Catchoftheday.com.au Pty Ltd [2015] ATMO 54, [39] (Thompson).
In respect of this ground the Opponent submitted the following:
For much the same reason as outlined in respect of the s 60 ground above, as at the Priority Date, the use of [the Trade Mark] in respect of any of [the Applicant’s Services] would be likely to constitute:
(i)misleading or deceptive conduct, or the making of false or misleading representations, contrary to sections 18 and 29 of the Australian Consumer Law;15F[16] and
[16] Schedule 2 of the Competition and Consumer Act 2010 (Cth).
(ii)passing off at common law.
As to the first, the Applicant’s use of the mark LION in Australia in relation to the claimed services is likely to mislead or deceive Australian consumers by causing them to believe, erroneously, at least the following misrepresentations:
(i)the claimed services offered by reference to the mark LION emanate from the Opponent;
(ii)the claimed services offered by reference to the mark LION are associated with or otherwise endorsed by the Opponent;
(iii)the claimed services are qualitatively equivalent to those offered by the Opponent.
As to the second, passing off would arise insofar as the Applicant would be making a misrepresentation in the course of trade to prospective customers of the Applicant’s services in a manner: (a) calculated to trade off the reputation of the Opponent’s film; and (b) calculated and being likely to injure the business goodwill of the Opponent. In this latter regard, it is to be emphasised that the Opponent would have no quality or production control over the services offered by the Applicant, in circumstances where such matters are integral to audience engagement and the overall production quality of public entertainment, in the nature of cinema, theatre and performance shows.
Australian Consumer Law
The Opponent’s evidence does not satisfy me that the sign (indicium) LION, as used as the title of the film, is associated by consumers with the Opponent: the sign is unlikely to be seen as an indicator of trade source. For this reason, the misrepresentations asserted by the Opponent, in respect of the Australian Consumer Law, are unlikely to occur. Use of the Trade Mark by the Applicant is unlikely to be contrary to the Australian Consumer Law.
Passing Off
There are a number of elements which must be satisfied for passing off to be established. These elements have their origin in two cases: Erven Warnick BV v J Townend & Sons (Hull) Ltd16F[17] and Reckitt & Colman Products Ltd v Borden Inc.17F[18] One of the elements is that a plaintiff
must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying “get-up” (whether it consists of a brand name or a trade description, or the individual features of labelling or packaging)’.18F[19]
[17] [1979] AC 731, 742 (Diplock LJ).
[18] [1990] 1 WLR 491, 499 (Oliver LJ).
[19] Ibid.
For reasons discussed above, I am not satisfied by the Opponent’s evidence that this element is established. Consequently, the use of the Trade Mark is unlikely to constitute passing off. The circumstances in this matter can be contrasted with those in, for example, Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd where the evidence showed that ‘Tarjay’, although never having been used as a trade mark by Target Australia Pty Ltd, ‘is strongly associated in the mind of the public with [Target]’.19F[20] If there is any association in the minds of the public between the title of the film Lion and an entity, that entity seems likely to be Saroo Brierly.
[20] Ibid. [45].
For these reasons I am not satisfied that use of the Trade Mark would be contrary to law. Therefore, the Opponent has failed to establish this ground of opposition.
Section 62A
In the SGP the ground under s 62A was particularised as follows:
The applicant is in a commercial relationship with the Opponent, including having a number of contracts in place with the Opponent or related parties. As a result, the applicant is aware of the Opponent and [the Trade Mark] as well as the Opponent’s rights in [the Trade Mark]. In light of these matters, the opposed application has been made in bad faith.
Section 62A of the Act is reproduced below:
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.
The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:
- persons who monitor 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 are deliberate misspellings of other registered trade marks;
- 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.
The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section of the Act. In that case, Dodds-Streeton J made the following comments:
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 decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.20F[21]
[21] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [24]-[26].
Her Honour continued later in the same decision:
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.21F[22]
[22] Ibid [165]-[166].
The Opponent submitted the following:
Mr Brierley is the sole director and secretary of the Applicant. His knowledge can therefore be imputed to the Applicant. Accordingly, as at [the Relevant Date], the state of the Applicant’s knowledge included, relevantly, that:
(i)prior to production of the Film, Mr Brierley’s Book was titled A Long Way Home;
(ii)during production, in about March 2014, the Film’s title was changed by Mr Luke Davies to LION. Mr Brierley was not involved in this process;
(iii)when told of the Film’s name change, Mr Brierley expressed his opinion in quite negative terms;
(iv)nevertheless the Film was released under the title LION and went on to be a resounding success at the box office, both in Australia and overseas, and to achieve great critical acclaim.
By about September 2017, flowing on from the extraordinary success of the Film, Mr Brierley had (presumably on behalf of the Applicant) begun talks with multiple parties, including the Opponent, in order to commercialise his Book into a stage show. Those negotiations would no doubt have involved discussions as to what consideration was to be paid to the Applicant for the granting of rights.
It was in the midst of those negotiations that Mr Brierley considered it appropriate to file the Application. Mr Brierley’s evidence is that the reason for doing so was ‘to protect the name LION … as this is a name which refers to me and is one component of my brand’. But if this were the case, why was the Application not filed earlier?
Mr Brierley’s evidence is that he did not do so because he understood that ‘film titles are not often treated as or registered trade marks as a film may have a limited life’, and that ‘there are not extensive merchandising opportunities with my life story, which would warrant trade mark protection’.22F[23] The underlined words are significant.
Mr Brierley saw monetary value in a trade mark that he had not ever previously used or sought to use (and hence which he has never owned) and decided to acquire it for the purposes of appropriating that value to his own benefit. In Ms Hardman’s words, the Application was lodged to give the Applicant additional leverage during commercial negotiations.23F[24] Evidently, what caused Mr Brierley to file the Application to reap substantial commercial reward from potential merchandising opportunities.
Further, it may be inferred that Mr Brierley seeks actually to mislead consumers into thinking that they are acquiring services that emanate from or are associated with or endorsed by the applicant and are qualitatively equivalent to the Applicant’s including in respect of production value. This is not the case.
In all the circumstances, persons adopting proper standards would regard the Applicant’s decision to file the Application as falling short of acceptable commercial standards. The Application was evidently filed in bad faith.
[23] The Brierley declaration [48].
[24] Hardman 1 [8.3].
I am far from persuaded by the Opponent’s submissions or its evidence. Mr Brierley has an interesting life story. That story was turned into a book—Mr Brierley’s memoir. Mr Brierley has rights in the story contained in that book which he may choose to licence to others, or not, as he sees fit. Mr Brierley chose to grant rights to See-Saw to produce a film based on the story in his story. A film was made and was entitled LION—this is not some random title but the meaning of a phonetic equivalent of his first name. Whether Mr Brierley decided on that title for the film or was happy with that title or not is of little import here. Mr Brierley was approached by See-Saw to produce a stage show based on his memoir. That Mr Brierley might have seen monetary value in a trade mark and/or sought, through the Applicant, to improve his bargaining position in negotiations in respect of rights he owns by applying to register LION as a trade mark seems a natural approach, rather than behaviour which is likely to be seen as unscrupulous, underhand or unconscientious in character by persons adopting proper standards. This is especially so in the light of my finding that the Opponent has, at no time, used LION as a trade mark.
The Opponent has failed to satisfy me that the application was made in bad faith. This ground of opposition is not established.
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 1875547 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
The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I 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
23 June 2020
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