Re: Opposition by Seven Network (Operations) Ltd to registration of trade mark application number 1970937 (classes 9, 38, and 41) - 7 HD with device - in the name of Bangkok Broadcasting & TV Co. Ltd

[2021] ATMO 75

TRADE MARKS ACT 1995

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

Re: Opposition by Seven Network (Operations) Ltd to registration of trade mark application number 1970937 (classes 9, 38, and 41) – 7 HD with device – in the name of Bangkok Broadcasting & TV Co. Ltd.

Delegate:

Blake Knowles

Representation:

Opponent: Eliza Foley and Ike Papageorge of Herbert Smith Freehills.
Applicant: Wen Wu of counsel, instructed by Griffith Hack.

Decision:

2021 ATMO 75

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds for opposition pursued under ss 42(b), 44, 59, and 60 – s 60 ground established – registration refused.

Background

1. On 26 November 2018 (‘Relevant Date’), Bangkok Broadcasting & TV Co. Ltd (‘Applicant’) filed an application (‘Application’) to register the following series of trade marks:

   Endorsement: Registration of this trade mark is limited to the colours red, pink, indigo, blue, white, green, yellow, black and grey as shown in the representation of the trade mark attached.

   (‘Trade Mark’)

2. The Application was accepted in relation to a broad range of goods and services in classes 9, 38, and 41. I have included the full specification in Annex A of this decision (‘Goods and Services’). In the interest of brevity, it is sufficient to summarise the specification as primarily being broadcasting, communication, entertainment, and television related goods and services.

3. Seven Network (Operations) Ltd (‘Opponent’) filed notice of intention to oppose registration of the Trade Mark on 9 July 2019, followed by a statement of grounds and particulars (‘SGP’) on 9 August 2019. The Applicant filed notice of intention to defend the Application from opposition on 18 October 2019. 

4. The parties then filed evidence in accordance with reg 5.14.[1] The Opponent filed Evidence in Support on 21 January 2020. The Applicant filed Evidence in Answer on 22 April 2020. The Opponent filed Evidence in Reply on 23 June 2020.

   [1] Unless otherwise stated, any reference in this decision to section of an Act is a reference to the Trade Marks Act 1995 (Cth), and any reference to a regulation is to the Trade Marks Regulations 1995 (Cth).

5. The matter was heard before a delegate of the Registrar of Trade Marks on 1 February 2021. The Opponent was represented by Ms Eliza Foley of Herbert Smith Freehills. The Applicant was represented by Mr Wen Wu of counsel. The matter has subsequently been allocated to me, another delegate of the Registrar, for decision. I have formed my decision based on a review of the SGP, the evidence, written submissions, and oral submissions of the parties which were recorded at the hearing.

   Grounds and onus

6. The SGP nominates grounds of opposition under ss 42(b), 44, 59, and 60. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   Evidence

7. The following evidence was filed under reg 5.14:

   Evidence in Support (EIS)

   ·Declaration by Veronique Helene Maury, Legal Counsel of the Opponent, dated 20 January 2020 together with Exhibits VM-1 to VM-45.

   ·Declaration by Renee Elizabeth Burgess, Solicitor of Herbert Smith Freehills, dated 21 January 2020 together with Exhibits REB-1 to REB-21.

   Evidence in Answer (EIA)

   ·Declaration by Yaowalak Poolthong and Pattanapong Nuphan, Managing Director and Deputy Managing Director of Applicant, dated 20 April 2020 together with Exhibits YP-1 to YP-17.

   Evidence in Reply (EIR)

   ·Declaration by Timothy Kerry Burn-Francis, Solicitor of Herbert Smith Freehills, dated 23 June 2020 together with Exhibits TKB-1 to TKB-2.

8. The Applicant has indicated a number of exhibits in the EIA are confidential in nature. However, I do not need to refer to the contents of those exhibits in a manner that would disclose any confidential information. 

9. The Opponent has also requested that additional material be considered, being a further declaration of Timothy Kerry Burn-Francis dated 18 January 2021. I have reviewed the additional material and it would not affect my decision. As such, I give it no weight.

10. The EIS outlines in significant detail a history of the use of the various iterations of the ‘7’ trade mark in Australia by the Opponent in relation to television broadcasting and related services. The Opponent operates the Seven Network, which includes one of the five main free-to-air television channels in Australia, and a number of subsidiary digital channels. Between 2006-2018 the Seven Network was the highest rated television network in Australia. The Seven Network engages with over 18 million Australians each month, which equates to 90% of the Australian population over the age of 19.

11. It is unnecessary to summarise the EIS in great detail. It is apparent from the evidence that the Opponent by virtue of its prominent position in the relatively small Australian free-to-air television landscape has very widely used various iterations of ‘7’ trade marks in relation to television broadcasting and entertainment services, and associated goods and services including advertising and online streaming of video and audio material. The use of the ‘7’ formative marks extends to production of various television series, news and current affairs programs, and sporting telecasts.  Further, the Opponent in 2007 commenced use of a high-definition channel under the trade mark 7HD. This channel operated as 7HD between 2007-2010, and again from 2016. In the intervening period, the channel was known as 7mate.

12. The EIA outlines a history of the Applicant and its use of the Trade Mark. The Applicant operates a free-to-air television network in Thailand which was first launched in 1967. The Applicant first commenced broadcasting in high definition in April 2014, and since June 2018, has broadcast entirely in digital format. The EIA states that the Applicant is known to consumers as ‘BBTV Channel 7’, ‘Channel 7’, or ‘Channel 7 HD’. The Applicant has used the Trade Mark in Australia since 2014, and previously used a similar mark (without the acronym ‘HD’) in Australia since 2012.

13. The Applicant broadcasts and produces a range of content including drama, news, sports, and celebrity programs. It operates a website at ch7.com which prominently displays the Trade Mark, and promotes its services via social media including Facebook, Instagram, Twitter and YouTube. The Applicant has since 2011 also operated a digital streaming channel called Bugaboo TV, which has been accessible internationally including to Australian consumers via subscription since 2018. This service includes the Applicant’s most popular television programs. It is necessary for subscribers to Bugaboo TV create an account and log in to view content. All programs viewable in this service are demarked by a title sequence featuring the Trade Mark. The Applicant has also since 2016 offered a downloadable application to allow streaming of its content on mobile devices, including to users in Australia.

14. The EIA states that the Applicant’s programs are popular with Thai immigrants and expatriates living outside of Thailand, including in Australia. The evidence indicates that as of 2016, there were approximately 66,000 people residing in Australia who were born in Thailand, with the Thai language being the main language spoken at home by approximately two thirds of those residents.

15. The EIA also indicates that at the Relevant Date the Applicant’s Australian customer base, and the revenue generated from services provided to Australian consumers, is appreciable considering the Applicant’s target market and the size of the Thai community in Australia.

16. The EIR consists of a short declaration which states the Opponent’s investigations indicated the Applicant’s downloadable application was geo-blocked on the Google Play store.

    Discussion

    Section 60

17. To establish this ground, an opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the opponent must then prove that because of this reputation, use of the opposed trade mark is likely to deceive or cause confusion. The opponent must establish a reputation and a likelihood of confusion exists amongst a substantial number of consumers.[4]

    [4] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [74]-[75] (Moore, Tamberlin and Goldberg JJ).

18. Reputation can be demonstrated in a number of ways. For instance, it can be established by demonstrating that a significant number of consumers are regularly exposed to a particular trade mark. It may also be inferred from a high volume of sales combined with substantial advertising figures and other promotions.[5]

    [5] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193, 234.

19. I am satisfied based on the evidence that the Opponent has established that a very high level of reputation exists in the trade marks ‘7’ and ‘7HD’, in addition to stylised versions of these trade marks.  The number of viewers of the Opponent’s television channels is a substantial majority of the Australian population. This is direct evidence establishing the Opponent’s extensive reputation in respect of television broadcasting and entertainment, and associated activities.

20. I note that the Opponent’s use of 7HD was suspended for approximately 6 years after its initial use (between 2010-2016). However, a significant proportion of the Australian population would have been exposed to the 7HD trade mark during the periods 2007-2010 and 2016-2018, particularly given that most televisions now have high definition functionality and many consumers would prefer to view the 7HD channel over the standard definition alternative. As such, I do not consider this period of disuse of 7HD significantly impacted the reputation associated with this particular mark.

21. It is not necessary for an opponent to establish that the opposed trade mark and the trade mark relied on as the basis for the s 60 ground are deceptively similar, or that the relevant goods or services of the parties are similar or closely related. However, the greater the similarities in the respective trade marks and goods and/or services, the more likely the existence of a reputation in the trade mark relied on by an opponent is to give rise to a likelihood of confusion. It is therefore useful for present purposes to briefly refer to the tests for determining deceptive similarity.  The test requires a determination of the effect of each of the two marks on an ordinary consumer of the goods or services in question. Deceptive similarity will be established if a consumer, relying on an imperfect recollection, would be caused to wonder whether an applicant’s goods or services originated from, or there was some connection with, the owner of the earlier mark.[6]  While it is necessary to consider the two trade marks as a whole, deceptive similarity can also arise where a trade mark incorporates an essential feature of another mark.[7]

    [6] See Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

    [7] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

22. I am satisfied that the Trade Mark is deceptively similar to the 7HD trade mark and also the Opponent’s primary ‘7’ trade mark. While the Trade Mark also contains a device element, the essential feature remains the numeral ‘7’ and letters ‘HD’. In the context of the relevant goods and services, both the Trade Mark and the Opponent’s marks indicate a television channel and broadcaster primarily identified as ‘7’. 

23. The goods and services provided by both the Opponent and the Applicant are also substantially the same. Both are television broadcasters and producers, and offer a range of ancillary goods and services, including streaming and advertising.

24. The combined effects of the Opponent’s reputation, similarity of trade marks, and similarity of goods and services of the respective parties makes the Opponent’s case under s 60 compelling.

25. Prior to the hearing, the Applicant requested an amendment to the Goods and Services to delete certain goods in Class 9 and apply the following exclusion to all classes ‘the content of all the foregoing being substantially in the Thai language’. The Applicant then made detailed submissions regarding the likelihood of confusion assuming that the Goods and Services only incorporate content that is substantially in the Thai language. 

26. The Applicant submitted that the Opponent has no specific reputation in its trade marks for content in the Thai language.  The Applicant also contended that consumers who wished to access Thai or other foreign language content via streaming services generally had to go through specific sections of relevant streaming applications to do so. The Applicant characterised this as being analogous to the special interest section of a video store. Further, the Applicant argued that viewers of such content would be savvy enough to understand there are production companies and broadcasters outside of Australia who may produce or stream such content. The Applicant also argued as a factor tending against confusion that the relevant market are consumers with Thai heritage, 94% of whom would have been born in Thailand.

27. I accept that the Opponent’s reputation in its trade marks does not extend to Thai language content. I also accept that there would be Australian-based viewers of the Applicant’s content (particularly viewers who were born in Thailand) who would understand the Applicant as being BBTV Channel 7, as opposed to the Australian ‘Channel 7’, and amongst whom confusion is unlikely. This portion of the relevant market may even constitute either a majority or at least a significant minority. Notwithstanding this, I am only required to determine whether a substantial number of persons are likely to be caused to wonder whether it might not be the case that the Goods and Services provided by the Applicant originate from, or are associated with, the Opponent. This state of wonderment need only be temporary.[8]

    [8] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).

28. The Opponent’s ‘7’ trade mark is a household name in Australia. The ubiquity of the ‘7’ trade mark and very significant reputation and level of recognition amongst the public is such that use of a similar mark in the same field by another trader immediately gives rise to a significant likelihood of confusion. I do not accept the Applicant’s position that the Opponent’s reputation here acts as a ‘double edged sword’ such that it reduces the potential for confusion. The Opponent and the Applicant are both broadcasters and entertainment providers who will commonly be referred to as either ‘7’ or ‘Channel 7’. While some consumers may understand the Opponent is ‘Australian Channel 7’ and the Applicant is ‘Thai Channel 7’ or ‘BBTV Channel 7’, it remains likely that a significant number will not draw that distinction.  

29. Even if the use of the Trade Mark will be directed predominantly at the Australian Thai community, it will still be exposed to a substantial number of ordinary consumers who will be susceptible to confusion arising from the significant level of reputation of the Opponent’s ‘7’ mark. The consumer base for the Applicant’s Goods and Services in Australia is not homogenous. In addition to Thai persons who emigrated to Australia, it may include Australian born children of Thai immigrants, non-Thai partners of Thai-born residents, visitors to households of Thai-born residents, and students learning the Thai language. Further, while the primary market for the Goods and Services may be consumers of Thai origin, there is nothing to prevent other consumers from accessing the service, for example, those with an interest in foreign language films who are comfortable reading subtitles.

30. I accept that some viewers will eventually learn that the Trade Mark is not associated with the Opponent. However, the subsequent correction of any initial doubt does not mitigate the initial instance of confusion. I also accept that the potential for confusion is not as high as would be the case if the Applicant were providing the Goods and Services in the English language. However, potential for confusion is still sufficient to make out the Opponent’s case under s 60.

31. The Applicant pointed to a lack of evidence of actual confusion. Given the Applicant has used the Trade Mark and a similar mark in Australia since 2012, the Applicant submits that one would expect if there had been confusion (including enquiries and complaints), this would have been put in evidence by the Opponent. The Applicant submits that I should draw the inference from the lack of such evidence that there is no likelihood of confusion. I do not give this much weight. If a consumer was under a mistaken impression that the Applicant’s services originated from the Opponent or were otherwise associated with the Opponent in some way, this would not necessarily lead to an enquiry or complaint. In any event, it is the potential for confusion that I must consider, not whether instances of confusion have occurred in the past.

32. I am satisfied that the Opponent has established the ground of opposition under s 60 in respect of all the Goods and Services, even if the specification were to be amended as proposed by the Applicant to relate only to content substantially in the Thai language.  As the s 60 ground is established, I do not need to consider the remaining grounds.  

    Decision and award of costs

33. The Opponent has established a ground of opposition. As such, I have decided to refuse registration of the Trade Mark. Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court.

34. The Opponent has requested an award of costs in its favour. Costs usually follow the event. There being no reason to make an exception here, I award costs against the Applicant.

    Blake Knowles

    Delegate of the Registrar of Trade Marks

    30 July 2021
    

    Annex A

    Goods and Services

    Class 9: Computers; compact discs; CD-ROMs (read-only memory); audio compact discs; blank diskettes; recorded diskettes; blank magnetic data discs; recorded magnetic data discs; phonograph records; Video Compact Disc; blank DVD; recorded DVD; videotapes; blank cassette tapes; recorded cassette tapes; cinematographic film (exposed); blue-ray discs (recorded); downloadable mobile application software featuring news, sports, culture, educational content, general entertainment content, including but not limited to drama, soft operas, series, music, documentary, game shows, varieties and travel; downloadable electronic publications; downloadable digital music; digital images downloadable from the internet; cinematographic and photographic films; sound and video recordings; apparatus for recording, transmission or reproduction of sound or images; video games software; downloadable electronic game programs; downloadable ringtones and computer graphics for mobile phones and mobile devices; computer application software for mobile devices and mobile phones; cases for mobile phones and computer tablets; straps for mobile phones; bags for computers

    Class 38: Television broadcasting; radio broadcasting; cable television broadcasting; cellular telephone communication; news agencies (wire services); satellite transmission; teleconferencing services; digital television broadcasting; satellite television broadcasting and interactive radio broadcasting; audio and audiovisual broadcasting services over the Internet; mobile media services in the nature of electronic transmission of entertainment media content; communications and telecommunications, namely, transmission of streamed sound and audio-visual recordings via the Internet, cable networks, wireless networks or satellite, transmission of podcasts, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks and the Internet, featuring history, documentaries, entertainment content, educational content, news, sports, music, drama, film, travel, television programs, culture; Provision of access to an electronic online network for information retrieval; streaming of music, films, television programs, current events, news, entertainment and sports programs to users online via a communication network; providing on-line chat rooms and discussion forums for transmission of messages, audio, video, and digital pictures among users

    Class 41: Radio and television programs production; television drama production; performances and shows production; videotape film production; television entertainment; digital imaging services; entertainer services; entertainment information; modeling for artists; rental of motion pictures; movie studios; providing movie theatre facilities; music composition services; news reporter services; providing karaoke services; radio entertainment; recording studio services; rental of videotapes; videotape editing; blogs, downloadable publications and downloadable contents, available via a website, for entertainment or educational purposes; organization, production and presentation of sports competitions, sports games, concerts, exhibitions, game shows, quiz shows, and live performances; production, presentation, distribution, syndication and rental of television, radio, cable television, satellite television and IPTV programs as well as films, sound recordings, and video recordings