Re: Opposition by The Sydney Opera House Trust to registration of trade mark application number 1902578 (35,41,42) - Composite Device - in the name of Australia China Economics, Trade & Culture Association Incorporated
[2020] ATMO 172
•9 November 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Sydney Opera House Trust to registration of trade mark application number 1902578 (35,41,42) – Composite Device – in the name of Australia China Economics, Trade & Culture Association Incorporated
Delegate: Debrett Lyons Representation: Opponent: Julian Cooke of Counsel, instructed by Ashurst, Solicitors
Applicant: Sonia Stewart of Counsel, instructed by F.B. Rice & Co., Patent & Trade Mark AttorneysDecision: 2020 ATMO 172
Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 43, 44, 60 and 62A of the Trade Marks Act 1995 considered – none established and opposition unsuccessful – trade mark to proceed to registration.Background
This matter concerns an opposition under the Trade Marks Act 1995 (Cth) (‘the Act’) brought by The Sydney Opera House Trust (‘the Opponent’) to registration of the trade mark shown hereunder:
(‘the Trade Mark’)
The application to register the Trade Mark was made on 25 January 2018 by the Australia China Economics, Trade & Culture Association Incorporated (‘the Applicant’), a body established by Australian-Chinese business entrepreneurs with the stated objective of strengthening economic, trade and cultural ties between Australia and China.
The Trade Mark application was examined by the Office as mandated by the Act and published as accepted for possible registration for the following services (‘the Services’):
Class 35: Arranging and conducting forums, fairs, exhibitions and trade shows for business and trade purposes and for the purpose of promoting economic information, promotion of trade development and trade exchanges between Australia and China; lobbying (promoting, publicising or otherwise representing the interests or concerns of the members of the association)
Class 41: Education and entertainment services for the purpose of promoting culture and cultural exchanges, organising charitable fund raising events being the provision of cutural [sic] services, cultural activities and social club services, and organisation of youth training exchange programs, between Australia and China including organizing forums, fairs, exhibitions and trade shows
Class 42: Services provided by an association of professionals and entrepreneurs to its members to promote interchange of ideas, information and developments in relation to Chinese and Australian relations in particular information relating to information technology and technological research
The Opponent was created by the New South Wales Government pursuant to the Sydney Opera House Trust Act 1961 (NSW) to operate, control and maintain the Sydney Opera House. In performance of its statutory functions, the Opponent has caused the Sydney Opera House to be the venue for entertainment, cultural events and educational programmes.
The Opponent asserts trade mark rights in logos it has used and registered including those shown below which, like the Opponent, I will refer to in either machination as ‘the Sydney Opera House Logo’[1]:
[1] Since nothing turns in this decision on a distinction between these, otherwise similar, four and five ‘sail’ designs.
The Sydney Opera House Logo is of course a stylised profile of the unique building attributed to the Danish architect Jørn Utzon set on Sydney Harbour. The building was opened by Queen Elizabeth II in 1973 and is known to people around the world.
Aside from an argument that the Trade Mark application was made in bad faith, the Opponent’s grounds of opposition under the Act rest in one way or another on the claim that the public would be somehow misled or confused by the use of the Trade Mark by a party having no connection with the Opponent.
The Applicant does not contest the claim that the Sydney Opera House is famous, but submits that “[a]t the base of each of the Opponent’s grounds of objection lies a fallacious argument, namely that because the Sydney Opera House is famous, any visual reference to the Sydney Opera House structure in a mark … will automatically give rise to the impression that there is some kind of official relationship with the Sydney Opera House and/or the Opponent.”
In reply, the Opponent states that it does not as a matter of principle seek to prevent use of the Sydney Opera House image as part of the overall Sydney skyline which might, for example, also include the Sydney Harbour Bridge and/or Centrepoint Tower, but takes exception to the singularity of it in the Trade Mark.
The Applicant’s rejoinder is that the Trade Mark surely satisfies the Opponent since it includes an identifiable geographic feature of China, namely, The Great Wall. The Applicant’s submission is that it makes no sense for the Opponent to reason that the inclusion of other geographic features of Sydney would satisfy it, but that addition of the The Great Wall of China, or for that matter, the Eiffel Tower or the Statue of Liberty, would not.
These and other arguments were elaborated upon by the parties at a video-conference hearing that was convened on 6 July 2020, where the Opponent was represented by Julian Cooke of counsel, instructed by Ashurst, Solicitors and the Applicant was represented by Sonia Stewart of counsel, instructed by F B Rice, Patent and Trade Mark Attorneys.
I was delegated by the Registrar to take the hearing and in accordance with directions given to the parties prior to the hearing both sides provided me with written outlines of their submissions. After reading those submissions I directed that I would hear the parties on the day, firstly, on what I identified as a procedural matter, namely, the Opponent’s application to amend the Statement of Grounds and Particulars (‘the SGP’) to include an argument premised on s 62A of the Act which had not originally been nominated by the SGP.
Prior to the hearing the parties filed evidence in accordance with the Trade Mark Regulations 1995 (Cth) (‘the Regulations’). The Evidence in Support comprises the Statutory Declaration of Jemille King made 13 February 2019 (‘the King declaration’). Ms King is the General Counsel of the Opponent. Her evidence addresses, amongst other things, the iconic status of the Sydney Opera House, the array of entertainment, educational and cultural activities organized by the Opponent, and the Opponent’s sponsorship arrangements with third parties.
The Applicant’s Evidence in Answer comprises the Statutory Declaration of Chin Ven Tan made 18 July 2019 (‘the Tan declaration’). Mr Tan is the Executive Chairman of the Applicant. His evidence addresses, amongst other things, the purposes of the Applicant and its activities since 2012 when it adopted the Trade Mark.
The Opponent’s Evidence in Reply comprises the Statutory Declaration of Josephine Gardiner made 22 October 2019. Ms Gardiner is an assistant solicitor with the Opponent’s representatives and her declaration addresses some of the matters raised by Mr Tan.
Outside these regulated rounds of evidence I note that on 3 July 2020 Ms Gardiner made a further declaration which I will discuss towards the end of my decision.
Preliminary Observations and Findings
The Trade Mark
The Trade Mark is represented here and on the Register in red but there is no endorsement in the application which limits the potential registration of the Trade Mark to representation in certain colour(s). Section 70(3) of the Act provides that a trade mark registered without any limitations as to colour is taken to be registered for all colours. The colouration is thus not a point of distinction between the Trade Mark and other marks with which it may be compared.[2]
[2] See, for example, Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd [2015] FCA 1065, [11].
The Trade Mark includes the letters, ACETCA, an initialisation of the Applicant’s name. It also includes a cartouche with Chinese characters and I note that acceptance of the Trade Mark was subject to the endorsement below:
The applicant has advised that the CHINESE characters appearing in the trade mark may be transliterated as HUA MAO HUI which may be translated into English as CHINA TRADE ASSOCIATION.
To the broad section of the Australian public unable to read Chinese characters I find that the cartouche would be treated as Chinese styled ornamentation.
The Opponent’s declarant, Jemille King, recognises a rendition of The Great Wall of China in the Trade Mark and I find that is how most Australians would, in context, perceive that sign in the Trade Mark. That context, of course, is one of the central issues in this case.
The contentious element of the Trade Mark showing what at times was described as a boat with masts and sails afloat waves is said by the Applicant’s declarant, Mr Tan, to have been partly inspired by the legend of the Chinese mariner Zheng He and his ships, adapted to “convey a visual relationship with the Sydney Opera House” and “to reflect the aims and goals of ACETCA as being an Australia-China Economics, Trade and Culture Association.” I find that that the Australian public would first and foremost perceive this sign as a stylised image of the Sydney Opera House.
The Sydney Opera House
The evidence shows that the Sydney Opera House attracts over 10 million visitors each year. It is listed on the NSW State Heritage Register, the National Trust of Australia Register, the Royal Australian Institute of Architects Register and on UNESCO’s World Heritage List.
The Opponent asserts and the Applicant acknowledges that it is a world famous landmark. As stated above, it is a venue for a range of entertainment, artistic, educational and cultural events. The evidence is that in 2017-18 it was host to 1,777 events, attended by 1,262,449 people, generating box office sales of tens of millions of dollars. Other events at the site and activities of the Opponent, described later, have resulted in a much greater combined income per annum.
Applicant’s activities
Mr Tan declares that:
[t]he goals of ACETCA are to strengthen economic, trade and cultural ties between Australia and China, and these goals are facilitated by conducting fairs, trade shows, conventions and similar events, providing information about cultural events, education and training in Australia and China, and providing or promoting education and training exchange programs between Australia and China. ACETCA is also a forum for sharing of ideas, research and information of interest to the Australia/Chinese community.
The evidence is that the Applicant first used the Trade Mark in Australia in 2012 and has used it in Australia and in China since that date. The Tan declaration shows numerous uses of the Trade Mark broadly conforming with the Applicant’s ideals. Highly visible examples of use of the Trade Mark have been in connection with the Chinese New Year Lantern Festival at Darling Harbour, Sydney, for the years 2015-19 and the Sydney Chinese New Year celebrations held at Martin Place in 2017. The Trade Mark has been used at the NSW Harmony Cup Golf Tournament at the Terry Hills Golf & Country Club, NSW, in the years 2015, 2018 and 2019. The Applicant has used the Trade Mark at events it has organized such as its annual Dinner (in 2014 at NSW Parliament House), its Women’s Leadership Forum in October 2015, Chinese language classes for members of parliament in 2014 and Australian business leaders in 2015-17.
The evidence shows that these and other events have been attended by prominent public figures including the Hon. Julia Gillard when Prime Minister of Australia, the Hon. Kevin Rudd when Prime Minister, the Hon. Barry O’Farrell, the Hon. Malcolm Turnbull, the Hon. Phillip Ruddock and the Hon. Anthony Albanese.
Charitable donations involving public exposure of the Trade Mark have been made to the NSW Rural Fire Service over several years, grants have been made to the Western Sydney University, Macquarie University, the University of Sydney and the University of Technology, Sydney. The Applicant has been co-organiser of the Miss Chinese Australia competition and the Miss Australia Chinese Pageant.
Statutory Framework
The Opponent sought at the hearing to press grounds of opposition premised on ss 42(b), 43, 44, 60 and 62A of the Act. So far as relevant, I must assess matters as they stood at 25 January 2018, when the Trade Mark application was made.[3]
[3] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].
In short order, the Opponent’s submissions are that:
·by January 2018 it had “developed significant reputation and goodwill in its Sydney Opera House Marks[4] such that use of the [Trade Mark] in relation to the same or same kind of services … is likely to cause confusion or deception for the purposes of s 60 (and 42(b).”
·“… the particular arrangement of the opposed mark directly, and falsely, connotes an official affiliation or connection with Sydney Opera House which does not exist for the purposes of s 43.”
·“The [Trade Mark] is otherwise deceptively similar to the [Opponent’s] prior registrations in relation to the same or similar services [to the Services] and should be refused [under] s 44.”
and
·“[the Applicant] applied to register the [Trade Mark] with knowledge of the Opponent’s marks and [the Opponent] had not provided consent to [the Applicant] to apply to register the [Trade Mark] for the purposes of s 62A.
[4] Refer to the s 44 discussion below for clarification of this defined term.
Admissability of the s 62A ground is in contention and is discussed later. A commonality of the remaining grounds exists in so far as they each hinge on proof of a likelihood of deception or confusion – ss 43, 44 and 60 use or import that formulation and the s 42(b) ground is contingent on an asserted breach of consumer legislation with analogous requirements.
There is no dispute over the claim that the Sydney Opera House is a world famous landmark but how that fame influences the assessment of a likelihood of confusion is one of the key issues in this case. How far the image or likeness of the Sydney Opera House is protected by the Act is constrained by the scope of the Trade Mark application and by matters of public perception. Further, the distinctions between ss 43 and 60 are subtle as was observed in Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 where at [79] the court said:
Section 43 … looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion. Section 60 … is concerned with whether the use of the trade mark of which registration is sought would be likely to deceive or cause confusion by reason of the reputation in Australia of another trade mark.
Even when that distinction is drawn, the inter-dependency between reputation (or at least, public use) and connotation is clear enough. However, whether it be the result of connotation or reputation the legislative provisions require that the consequence is a likelihood of confusion or deception and so I have approached the evidence and the submissions from that standpoint.
The Evidence
The described activities of the Opponent under its governing legislation consist essentially of the types of events referred to above. The Opponent’s revenue comes principally from ticket sales for such events, together with:
·the sale of authorised merchandise;
·food and beverage services at restaurants, bars and cafes;
·tours of the Sydney Opera House building;
·school children’s information, education and creative programmes held at the building; and
·events and performances going beyond operatic and other musical or dramatic performances which have included public and cultural celebrations, international summits, events coincidental with the 2000 Olympic Games and New Year’s Eve celebrations.
Standing to one side of those activities is what has been described as “sponsorship and endorsement partnerships”, elaborated upon in the Opponent’s written submissions as follows:
An important aspect of the Trust’s activities involve raising sponsorship and endorsement funding with commercial partners. … In exchange for financial and in-kind support, organisations who enter into sponsorship and endorsement arrangements with the Trust are granted the right to use the Trust’s marks, image and branding (such as the Sydney Opera House Logo) and to identify themselves as official sponsors and partners of the Sydney Opera House.
The King declaration describes the:
widespread use [of the Sydney Opera House image] in connection with advertising, promotion, sponsorship, licensing and joint product arrangements…
stating that:
…the Trust has entered into licence arrangements with various companies and businesses, which permit the licensee to use the image of the Sydney Opera House in their logos or in connection with their business. Further, … the Trust has a number of sponsors who place great value on having access to brand association with the Sydney Opera House and through this relationship they obtain the right to use the Sydney Opera House image in connection with their goods and services.
By 2018, the Opponent’s sponsorship or endorsement partners are listed as including Samsung, Adobe, Intel, Westpac, Etihad Airways, Google, Interband, MasterCard, AMP Capital, APN Outdoor, JCDecaux, Maserati, Dulux, Wilson Parking, Young & Rubicam Group, AirBnb and Café Sydney.
The King declaration states that “[a]lmost all of these companies had entered into official sponsor and partnership arrangements with the [Opponent]”. The declaration is amost 600 pages in length but exhibits few examples of how these commercial partners use the Opponent’s trade marks. Shown below is a representative example with partner, Samsung, which has sponsored certain children’s learning programmes conducted at the Sydney Opera House:
Without showing how the Sydney Opera House Logo was used, the evidence includes documentation, such as that below, acknowledging the partnership and support of Westpac and EnergyAustralia of certain programming, festivals and events in which the Opponent played a part:
Presumably these are examples of the financial and in-kind support that the Applicant speaks of in its submissions. In so far as they exist, there is no evidence of the underlying agreements. The King declaration characterises them as “sponsor and partnership arrangements” but in terms of how the Opponent’s trade marks may be used, the language of the King declaration and of the written submissions points to a simple permission to use the trade marks.
Further, whilst it might be expected that where written sponsorship agreements exist, control provisions also exist with respect to trade mark use, the explanation in submissions that the partners use the trade marks to “identify themselves as official sponsors and partners of the Sydney Opera House” lays open a question as to whether this is the sort of use that the Act recognises as trade mark use, something I will return to later in discussion of the related case law.
I observe from the few sponsorship examples provided that there is mostly consistent use of the Sydney Opera House Logo, something which suggests underlying control of a sort, but the practice does not seem wholly uniform and in the Evidence in Reply, Ms Gardiner lists, for example, the trade mark shown below, not corresponding in any obvious way with a representation of the Sydney Opera House which the Opponent uses or has registered.
Ms Gardiner’s listing of this registration 1845351 includes her commentary: “This trade mark, which is owned by Football Federation Australia Limited, is used under a written partnership agreement with the Opponent which incorporated a brand licence. The terms of this agreement are expressed to be confidential.” Without evidence of the agreement, the reference to a brand licence is as inscrutable as the permissions granted by the sponsorship/partnership arrangements in terms of better understanding how the Opponent permits its trade marks to be used.
Consideration
Section 43
Section 43 of the Act provides:
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.
Section 43 had no obvious progenitor in the Trade Marks Act1955 (Cth) (‘the 1955 Act’). It and s 60 were spawned from s 28 of the 1955 Act at a time when that section was laiden with complexities of interpretation. Certainly the word “connotation” had not previously been used in trade mark legislation before the current Act. It was unsurprising then that during the latter part of the 1990s a number of cases grappled with its meaning and application. Not all has been resolved. That much which is clear comes from the wording of the section itself. It states that the connotation can be that of the Trade Mark or of a sign contained in it. Further, it refers to “some connotation”, suggesting there may be more than one. A semantic distinction has been drawn between what a trade mark or sign within it denotes and what it connotes[5], but it now appears accepted that both these meanings are possible “connotations”.
[5] See, for example, Katzmann J in Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 at 111.
A connotation can then be the direct or representational meaning of the trade mark or sign contained therein and it can also be, as defined by The Oxford English Dictionary[6] and relied upon by Kenny J in the case of McCorquodale v Masterson [2004] FCA 1247 at [26]:
a. The signifying in addition; inclusion of something in the meaning of the word besides what it primary denotes; implication. b. That which is implied in a word in addition to its essential or primary meaning.
[6] Oxford University Press, 2nd ed, 1989.
I have found that the Trade Mark incorporates a sign that Australians would recognise as a stylised rendition of the Sydney Opera House. What else that sign connotes is made plain enough by the Opponent’s evidence and submissions which frequently use that, nowdays, much overworked word, “icon”, in connection with descriptions of the Sydney Opera House. By way of example, the King declaration exhibits a document aimed at showing the fame of the Sydney Opera House which includes the following survey results:
The King declaration also includes a 2013 report from Deloitte, entitled “How do you value an icon? The Sydney Opera House: economic, cultural and digital value” which includes the following passage:
Overall, SOH plays a critical and dynamic role as an ingredient in the Australian national brand, ahead of all other human-created brands … SOH can leverage its already strong position to support Brand Australia’s need to increase its Relevance and Esteem to global audiences.
Further exhibited to the King declaration is a so-called “Statement of Significance for the Sydney Opera House” asserting that:
The Sydney Opera House … is an internationally recognised landmark, an architectural icon, a symbol of Sydney and Australia, and holds a unique place in the Australian psyche as a focus for national celebrations and events.
These examples demonstrate authentic use of the word, icon, the primary meaning of which according to the Macquarie Dictionary is that of “a sign or representation which stands for its object by virtue of a resemblance or analogy to it”. The evidence is noteworthy for the way in which the Sydney Opera House is seen to be an analogy for, or connote, Australia (or at least Sydney).
The at-issue sign within the Trade Mark may thus connote Australia, Sydney, or simply the Sydney Opera House itself. Commentary which suggests that the s 43 enquiry is to identify the primary connotation of a trade mark or sign contained in it is misleading. What is required is that because of some, or a, connotation, the use of the trade mark in respect of particular goods or services would be likely to deceive or cause confusion.
In the case of Down to Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632 the Registrar’s delegate, Mr Forno, said at 644 that:
The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.
Furthermore, as Kenny J said in McCorquodale v Masterson[7]:
Allowing for the differences between ss 43 and 44 of the Act, [the observations of French J in Registrar Of Trade Marks v Woolworths [1999] FCA 1020 at [382-3] regarding assessment of the likelihood a trade mark to deceive or cause confusion] may assist in the construction and application of s 43.
[7] [2004] FCA 1247 at [26]–[27].
So directed and cautioned, I note that Janne Lindrum v Sydney Opera House Trust [1998] ATMO 19 concerned an opposition to registration of, inter alia, application number 658155 for the following trade mark in respect of class 25 goods, being “clothing, footware (sic) and head gear”:
The Opponent was[8] the owner of registration 488686, shown below, for all goods in class 25:
[8] Now removed from the Register for non-renewal.
The Registrar’s delegate, Mr Homann, held that he was:
… not at all convinced that there is any reasonable likelihood that persons of normal intelligence and memory would be deceived or confused by the respective trade marks. The opponent's mark is a highly stylised representation of the Sydney Opera House whereas the applicant's mark contains a relatively realistic representation of the same building but is dominated by the words "von Lindrum" by which the mark would most likely be remembered.
Mr Homann concluded that “even though the goods are the same … I find that the marks are so different that s 44 does not apply”. Nevertheless, taking heed of Kenny J warning, a decision like Janne Lindrum v Sydney Opera House Trust is of very little guidance in the assessment of confusion or deception in s 43 for it must be remembered that then, as now[9], consideration of the reputation, or indeed the connotation of, an opponent’s trade mark has no part in the application of s 44.
[9] See, for example, Australian Meat Group Pty Ltd v JBS Australia Pty Limited [2018] FCAFC 207; 268 FCR 623; 363 ALR 113; 137 IPR 385.
My attention was also drawn to the case of Sydney Convention and Visitors Bureau Limited v Sydney Opera House Trust [1997] ATMO 28, where this time the marks at issue were,
and
but under transitional provisions that case applied the 1955 Act and the decision does not guide me.
On the other hand, an application to this office in August 1999 to register the trade mark appearing below in respect of “live roses” gave rise to two noteworthy decisions.
The representation of the trade mark as filed was of this same poor quality but close examination shows that it consists of a wreath of roses surrounding a stylised letter “D”, together with the phrase, “Diana’s Legacy in Roses”. The application passed through examination by this office but met with opposition. In the resulting decision of Estate of Diana, Princess of Wales (Deceased) v Masterson[10] the Registrar’s delegate, Mr Williams, found that for the purposes of s 43 the trade mark carried a connotation of the late, Diana, Princess of Wales, but that there was no suggestion of sponsorship or approval of the applicant’s roses by the Princess, her estate or her memorial fund and therefore no likelihood of deception or confusion.
[10] (2001) 52 IPR 264.
On appeal, Kenny J in the Federal Court found in McCorquodale v Masterson against registration of the trade mark, concluding on the further evidence before her Honour of the appellant’s licensing and charitable activities that consumers were likely to be deceived or confused into the belief that the memorial fund or estate had approved or sponsored use of the mark.
The decision of McCorquodale v Masterson is illustrative of what the authors of Shanahan’s Australian Law of Trade Marks and Passing Off (‘Shanahan’) [11] write about in the following passages of their text (citations omitted):
One of the difficulties with the application of s 43 and differentiating it from s 60 is that a sign may be so well known that its registration by someone not associated with its prior use (whether as a trade mark or otherwise) would be confusing. Evidence of use of a mark may demonstrate such a connotation by showing “that there is a perception, among people in an intended market, that a mark is so related to one party that use of the same mark by another will be deceptive and confusing because purchasers might incorrectly infer some sort of endorsement of relationship”. However, those circumstances will be rare and limited to situations where the sign in question is so well known that it is clearly associated only with a particular organisation or person such that use of it as a trade mark by anyone else would necessarily imply a relationship with that organisation or person. In addition, the nature of the previous use of the sign will have included use that is not use as a trade mark and, indeed, that use will be predominantly non-trade mark use.
… In order to maintain the distinction between s 43 and s 60, it is important to focus on the public knowledge of the sign and what it indicates to the public rather than on the extent to which the sign has been used as a trade mark. The distinction is not easy to make in all cases but if the essence of the objection to registration is the nature and extent of the prior use of the sign as a trade mark, the matter should be one for opposition proceedings under s 60. … It would be best if, in considering that knowledge within the community, any use as a trade mark was completely ignored. Hence, for example, Shane Warne’s reputation as a cricketer and celebrity would be relevant, but the use by him of his name as a trade mark would not be relevant for the purposes of s 43.[12]
[11] Ian Horak and Mark Davison, Law Book Co., 6th edition.
[12] See generally at pp 271-9.
Kenny J set out the background of McCorquodale v Masterson as follows:
Throughout her marriage, Princess Diana took on the patronage of a number of charitable causes and supported others as president or in some other capacity. At one stage, she supported over 100 charities in this way. She continued this charitable work after her divorce and, prior to her death, she was linked with a number of charitable causes, including the Landmine Survivors Network, The Leprosy Mission, the English National Ballet, The National Aids Trust, The Red Cross, various hospitals and the homeless.
Following the death of the Princess in August 1997, there was an unprecedented outpouring of public grief, principally in the United Kingdom, but also in other countries. The Diana, Princess of Wales’ Memorial Fund was established shortly after her death, on 4 September 1997, with the object of perpetuating the Princess’ memory and to receive and distribute monies that were donated by members of the public. The Fund is regulated by a Declaration of Trust and is registered as a UK charity.
At the same time, the Executors of her will and Trustees of her Estate recognised that the popularity of the late Princess’ name and likeness extended throughout the world and that any link between the Princess and products or services could be used as a "powerful marketing tool", to use the words of her sister, the Lady Sarah McCorquodale. The Estate realised that, if properly protected and managed, the intellectual property rights of the late Princess could be used for the benefit of charity by raising funds to carry on the charitable work of the Princess.[13]
[13] McCorquodale v Masterson [2004] FCA 1247, [8]-[10].
The Registrar’s delegate, Mr Williams, had considered the estate’s claim to have carried out large-scale licensing of its trade mark rights via the memorial fund but found that:
… neither the opponents nor the declarants have provided any basis for this assertion and I am not satisfied that their asserted exclusive right exists. Even if it does, the Estate would still need to establish that the mark itself incorporates a connotation that the product to which it is applied has some sponsorship or approval by the Estate or the Memorial Fund. Again, there is no evidence before me that indicates that any person in Australia would assume that the trade mark connoted such sponsorship or approval.
Mr Williams concluded that:
This is not a case where, in life, the person created a connotation linked directly to the goods ... In my opinion, there is nothing in the mark itself to give the imprimatur of endorsement. No independent evidence, in either anecdotal or survey form, has been placed before me to contradict this finding.[14]
[14] (2001) 52 IPR 264, 274.
At a broader level, Mr Williams also concluded that he was:
… not satisfied that the badge of origin test is satisfied. In relation to the events or the rose that used the Princess’s title prior to her death, there was no evidence that the Princess herself was the organiser of the event, or connected with either the events or the roses in any way that amounts to a source or origin. In relation to use after her death, none of the products referred to is shown to have used the Princess’s name to indicate any aspect of the origin of the goods. For instance, the use of the name, with that of the Memorial Fund, on the margarine containers was described as a thank-you to the relevant manufacturer for its sponsorship.
Kenny J made the same finding as the delegate about the connotation of the mark[15]. Her Honour did not directly consider the “badge of origin” reasoning, more interested in the licensing evidence which the applicants tendered into Court, not previously before the delegate.[16] Kenny J’s assessment of that evidence and her findings are set out below:
[15] Her Honour wrote at [32]: “Taken together, I find that the words "Diana’s Legacy in Roses" and the stylised "D" within the proposed mark clearly connote the late Princess of Wales, as indeed the delegate found.”
[16] [2004] FCA 1247, [33].
37 The evidence established that the charitable activities of the Princess during her lifetime were well known. Although she did not exploit her name and image for her own commercial purposes, it can readily be inferred from the evidence that she appreciated that the use of her name and image in relation to chosen charities had a great potential to enable those charities to raise funds for their work. As we have seen, soon after her death, her executors recognised that her name, image and other indicia of her might be used as a means of earning income through commercial sponsorship arrangements, and that this income could be used for the various charitable causes that the Princess had supported in her lifetime.
…
41 There was evidence that since 1997 the Fund had licensed to a large number of entities throughout the world and in Australia the right to sell flowers, giftware and a wide variety of memorial merchandise by reference to trade marks associated with Diana and the Fund. The evidence was that most of these products were available in the Australian marketplace. Many of these products were apparently available before the respondent made her application. There was also evidence that since September 1997 the Fund had licensed a number of entities to sell a variety of products in Australia, including floral tribute photographs, commemorative stamps and a variety of plates and musical boxes by The Bradford Exchange. These products contained various licensed references to the Princess and the Fund. For the first quarter of 1999, a royalty statement for sales in Australia by The Bradford Exchange showed a total of $10,944.64 for the licensed DIANA, ENGLAND’S ROSE memorial plate series. The total sales by The Bradford Exchange of licensed products in Australia by March 2000 was $2,350,000. Mr Mitchell, whose evidence was that The Bradford Exchange had made sales of plates featuring commemorative images of Princess Diana since at least 1997, also deposed that the sales of such plates in Australia was $862,302 in 1997, $982,945 in 1998, and $285,146 in 1999.
…
43 The evidence showed that there have been sales of the roses "Princess of Wales" and "Diana, Princess of Wales" in Australia since 1997. According to Mr Purkis, Brundett’s grew, distributed, marketed and sold the Princess of Wales rose to retailers continuously after its introduction to Australia in 1997. He also deposed that, between 1997 and the respondent’s application (and subsequently), Swane’s Rose & Fruit Tree Nursery (as a sub-licensee) had also sold many bushes of the "Diana, Princess of Wales" rose in Australia.
44 Mr Purkis deposed that:
The Fund has through the success and popularity of the Programme generated substantial income for its charitable aims. By 1999, the Fund had generated over 70 million pounds in revenue through the licensing and sale of products.
45 It can be inferred from the evidence to which reference has been made that, at the time the respondent made her application for registration, a relevantly significant sector of consumers in Australia knew of the Fund and of its licensing and charitable activities. …. Although the sale of products under licence in Australia yielded less by way of royalties than in some other places, nonetheless the royalties were significant. ….Having regard to the probable level of consumer knowledge of the Fund in Australia and to the fact that the respondent’s mark clearly and directly connoted the late Princess, the question arises as to whether there was a real tangible danger that consumers in Australia would also understand that in some way the applicants had sponsored or approved the use of the respondent’s mark.
…
51 Although the word "connotation" was not used in trade marks legislation prior to its appearance in s 43 of the Act, there are in fact numerous instances under the pre-1995 trade marks legislation where registration has been refused on the basis that a mark contained some suggestion of endorsement or approval by a well-known person or entity, or that goods or services to which it was to be applied had been awarded some particular prize or commendation. … I accept, as the applicants’ counsel submitted, that there are ample instances in which registration has been refused because of a connotation contained in the mark that referred directly to some person, entity or institution and, by doing so, suggested an endorsement or approval by that person, entity or institution.
…
53 Plainly enough, however, whether a mark or part of it connotes the sponsorship or approval of a person, entity or institution will depend on all the surrounding circumstances. In each case, it will be a question of fact and degree. In some cases, the implication has been insufficiently direct, ….
…
60 … Although the Princess did not in her lifetime derive any personal profit from the use of her name and image, she plainly used (or permitted the use of) her name and image for the fundraising activities of the charitable causes that she supported. As already found, before the priority date, a relevantly significant sector of consumers knew of the Fund and its licensing and charitable activities. The goods to which the impugned mark would apply have a real connection in the public mind with the late Princess. In all the circumstances, I find that the impugned mark would not only directly and immediately connote the late Princess, the impugned mark would also bespeak an association with the Fund and the Estate of the late Princess. There is a real likelihood that consumers would understand that goods bearing the impugned mark are in some way sponsored or approved by the Fund or the Princess’ Estate, even if they were ignorant about the specific details of the arrangements. The likelihood of this misunderstanding is sufficient to create a likelihood of confusion and deception in Australia, by reason of the connotation of the mark.
…
63 I am satisfied that, on the evidence before the Court, the respondent’s mark should not be registered because I am satisfied that the s 43 ground of opposition is made out. There is a real likelihood or "a real tangible danger" that, by virtue of the connotation of the late Princess in the impugned mark, consumers in Australia would be deceived or confused by incorrectly believing that the mark was indicative of some endorsement or approval by the Fund or the Estate of the late Princess.
Readers may wonder whether that decision resounds more of s 60 than of s 43. The authors of Shanahan recognize that a distinction is troublesome, writing in a passage of their text concerned with s 43 and in particular with trade marks potentially connoting approbation, endorsement or licence[17] that:
…[t]his type of connotation is the most difficult to distinguish from claims based on the reputation of another trade mark which should rely on s 60 of the [Act]. … There may be a connotation of some famous particular person in a trade mark without causing deception or confusion by leading the public to believe that the goods or services are connected with that person. …
[17] [25.945].
The authors of Australian Trade Mark Law[18] go further, arguing that:
… attempts to explain how the language of s 43 excludes, on the one hand, considerations of whether two marks conflict[19] while allowing, on the other hand, consideration of sponsorship or endorsement are far from satisfactory, and have rested on some tortuous interpretations of the word ‘connotation’. Attempts to use s 43 in this case [ie to include sponsorship and endorsement cases] are, to our mind, unnecessary and unwise.[20]
[18] Burrell and Handler, OUP, 2nd edition.
[19] The authors having previously discussed early efforts to distinguish and excise s 44 conflicts from the scope of s 43.
[20] Ibid., at pp 261-2.
Nor was it part of Kenny J’s deliberations to revisit or discuss the thorny question for Mr Williams in the Registry of use as a trade mark. As stated above, Mr Williams was not satisfied that the “badge of origin” test was satisfied and from the evidence before him, use of the Princess’s name, with that of the memorial fund, could on one view be characterized simply “as a thank-you” to the relevant manufacturer for its sponsorship.
So, too, on the evidence in the present case, use of the Sydney Opera House Logo together with, for example, SAMSUNG, might be characterized as a simple permission to use the Sydney Opera House Logo as a sign of thanks for its financial or other support, rather than as licensed trade mark use in a more conventional sense. The claim by the Opponent in its written submissions of the King declaration providing evidence, amongst other things, of “the steps the Trust has taken to protect its exclusive right to use its logos and branding as a badge of origin for the range of goods and services it provides at the Sydney Opera House” (my emphasis) seems to me quite inaccurate. Very obviously, the Opponent is not in the business of licensing its intellectual property for use in respect of electronic goods, paints, or banking services. Moreover, Samsung, Dulux or Westpac would require no permission from the Opponent to state that they were “proud supporters/sponsors” of the Opponent since that much would be factually correct. Given what I have said earlier of the evidence of these “sponsorship and endorsement partnerships”, a reasonable inference arises that the partnerships entail little more than a bare licence to use the Sydney Opera House Logo. Nevertheless, it is to be remembered that the authors of Shanahan underscore that for the purposes of s 43 it is non-trade mark use which is most likely to be of relevance and so in McCorquodale v Masterson Kenny J was right to overlook Mr Williams’ concern that the use of the trade mark at issue there may not indicate trade origin[21].
[21] Similarly, Katzmann J in Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 111 stated of s 43:To re-state the critical enquiry, what the Opponent must show is that because of some, or a, connotation, the use of the Trade Mark in respect of the Services would be likely to deceive or cause confusion. I take account of the case law as it stands noting here that the authors of Australian Trade Mark Law state that:
Given current uncertainty over the scope of s 43, this section will almost certainly receive further detailed judicial consideration … It is hoped that this will result in the rejection … of the view that sponsorship and affiliation cases fall within the purview of s 43.[22]
[22] Ibid., at p 262.
That said, I repeat her Honour’s words in McCorquodale v Masterson that:
… whether a mark or part of it connotes the sponsorship or approval of a person, entity or institution will depend on all the surrounding circumstances. In each case, it will be a question of fact and degree. In some cases, the implication has been insufficiently direct, …[23]
[23] At [53].
I have already described the composition of the Trade Mark and I reiterate my finding that the Trade Mark contains a sign which may connote Australia, Sydney, or the Sydney Opera House itself. I repeat here Mr Tan’s statement that the sign is intended to convey a “visual relationship” to the Sydney Opera House. I reiterate that the Opponent recognizes a rendition of The Great Wall of China in the Trade Mark and my finding that most Australians would, by reason of other Chinese markers, perceive that sign in the Trade Mark.
I stop short of agreement with the King declaration where it posits that the presence of those two signs in the Trade Mark is to “create the impression that there is a connection between the Great Wall of China and the Sydney Opera House” (my emphasis). Putting to one side for the moment whatever connotation is carried by the representation of the Sydney Opera House, I find that any connection would be with either China or “things Chinese”, not with the Great Wall per se as suggested. That conclusion is underscored by my earlier observations on the broad section of the Australian public unable to read Chinese characters and the presence of the ornamental cartouche with its Chinese characters.
That brings me to the iconography of the image of the Sydney Opera House and to the Applicant’s submission that this semiotic “is similar to the Eiffel Tower representing France (and/or Paris), Big Ben and the Houses of Parliament the United Kingdom (and/or London) or the Statue of Liberty the United States of America (and/or New York)”. In this way the Applicant seeks to peel back what it described as the fallacious argument, made by the Opponent, that any visual reference to the Sydney Opera House will give rise to the impression that there is some kind of official relationship with the Sydney Opera House and/or the Opponent.
Clearly, the Opponent’s claim to “any visual reference” goes too far and ignores the condition of s 43 that it is the connotation of a trade mark when used in respect of particular goods or services that is critical.
My attention to s 43 was further distracted by the frequently expressed concern that the Applicant would derive some undeserved kudos from use of a sign representing the Sydney Opera House. The King declaration states that consumers “will consider that the Applicant is associated with the Sydney Opera House in some way, either as a supplier, partner or sponsor of the Opponent”. This association, it says, “is likely to provide extra credibility to the Applicant in its Australian business operations.” At another place the King declaration explains that the Opponent:
… actively seeks to prevent illegitimate users from using the Sydney Opera House image as a trade mark to ensure that consumers are not deceived or confused as to the Trust’s affiliation with particular brands or sponsorship arrangements with certain organisations.
The declaration seeks to explain how that confusion might arise by referring to the:
… widespread use [of the Sydney Opera House image] in connection with advertising, promotion, sponsorship, licensing and joint product arrangements… [which] …means that the use of the Sydney Opera House image in the Trade Mark is likely to be taken as indicating a connection between the [parties], and because of this connection, is likely to provide extra credibility to the Applicant in its Australian business operations.
Questions of “extra credibility” are immaterial if the public are not misled or deceived in the requisite sense. In that regard, Lord Denning wrote in Parker-Knoll Limited v. Knoll International Limited [1962] RPC 265 at p174 that:
‘to deceive’ is one thing. To ‘cause confusion' is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.
This is not a case where there is any proof of deception in that sense. The only issue is the likelihood of confusion. As stated, the Opponent bears the onus of establishing its grounds. The standard of proof is the ordinary civil standard of the balance of probabilities.[24] In Blount Inc v Registrar of Trade Marks[25] Branson J explained at 504 that:
Where the Act requires the Registrar to be ‘satisfied’ of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities: Rejfek v McElroy (1965) 112 CLR 517 at 521. That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.
[24] Pfizer Products Inc v Karam (2006) 219 FCR 584 at [6]-[26]; Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd (2015) 237 FCR 388 at [132]-[133].
[25] (1998) 40 IPR 498.
However, in the following year the High Court in Registrar Of Trade Marks v Woolworths [26] said that the use of the word “likely” in this context did not import a requirement that it be more probable than not that the mark has that effect. The Court said that the probability of confusion must be finite and non-trivial; there must be a “real tangible danger of its occurring”.
[26] (1999) 45 IPR 41, per French J at 43.
As the law stands, if the connotation raises an implication of sponsorship, endorsement or association s 43 may be triggered. There will be that part of the Australian public who interpret the Trade Mark in the manner suggested by the Applicant – the Sydney Opera House as symbolic of Australia; The Great Wall symbolic of China and the enclosing wreath symbolic of friendship or association. To that section of the Australian public who read Chinese characters, this interpretation would be, I suggest, virtually universal. On the other hand, I accept that there are those people who would have cause to wonder what is implied by the Trade Mark. Those people would invariably recognize the sign of the Sydney Opera House, correctly intuit the image of The Great Wall, see the letters ACETCA positioned and incorporated into the composite mark in a heraldic manner, and stop to wonder at their significance within that overall context. More likely than not they would quickly form a view based on their experience of similar lettering in similar designs where the meaning was unknown. What would emerge in my assessment is some inchoate idea of a symbol used by a controlling body of a kind. My assessment is that, to some of those people, the candidate for control would be the body which manages the Sydney Opera House. To some of those people, what that body (the Opponent) controlled, or was affiliated with, or had some form of relationship with, would rise no higher than, as I have said, “something Chinese”. Beyond that, interest in the Trade Mark would likely fade as foreshadowed by Lord Denning in [79], above. In Radio Corporation Pty Ltd v Disney[27], Walt Disney and companies associated with him successfully opposed applications for the use of Mickey Mouse and Minnie Mouse as trade marks for radio sets and radio kits. From the High Court, Rich J said at page 454:
In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. … This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite term precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.
[27] [1937] HCA 38.
However, for the purposes of s 43 and as discussed, the likelihood of confusion would need to flow in this case, not from indefiniteness of ideas, but from cognitive acceptance that the Opponent sponsored or endorsed the applied-for Services which, to remind ourselves, are:
Class 35: Arranging and conducting forums, fairs, exhibitions and trade shows for business and trade purposes and for the purpose of promoting economic information, promotion of trade development and trade exchanges between Australia and China; lobbying (promoting, publicising or otherwise representing the interests or concerns of the members of the association)
Class 41: Education and entertainment services for the purpose of promoting culture and cultural exchanges, organising charitable fund raising events being the provision of cutural [sic] services, cultural activities and social club services, and organisation of youth training exchange programs, between Australia and China including organizing forums, fairs, exhibitions and trade shows
Class 42: Services provided by an association of professionals and entrepreneurs to its members to promote interchange of ideas, information and developments in relation to Chinese and Australian relations in particular information relating to information technology and technological researchFurthermore, the s 43 enquiry about “particular goods or services” is not the s 44 enquiry into “similar” goods or services. Again, Kenny J’s caution is sounded. Accordingly, I am not drawn to the Opponent’s conclusory submission that:
… there is a real danger that the opposed mark, particularly when used in connection with the designated services, will cause people to wonder whether ACETCA’s services are in some way connected to the Sydney Opera House and/or the Trust. That danger arises both from the mark’s inherent qualities and the fact the impugned mark will be used in relation to the same or similar services as those provided by the Trust at the Sydney Opera House. (my emphasis)
When compared with the stated activities of the Opponent, it is clear enough that the Applicant is not in the business of selling tickets for theatrical, operatic or other musical performances. Nor, having regard to the evidence described earlier is the Applicant interested in selling general merchandise, offering tours or providing food and beverage services. Albeit that the Services are broadly claimed, they are constrained by the qualification of “between Australia and China”, or similar words. Finally, whereas the Sydney Opera House has been the venue for public events such as those incidental to the 2000 Olympic Games or New Year’s Eve celebrations, the Applicant’s comparative use has been in connection with Chinese New Year celebrations and the Chinese Lantern Festival.
However, those general observations are beside the point since the impact of the sign said to import the connotation is to be understood in the context of the Trade Mark as a whole, limited by its notional use in relation to the Services. That said, the Opponent has not offered services which by any measure could be considered as akin to those claimed in class 42. On the other hand, classes 35 and 41 patently include services which have been offered by the Opponent and for those people to whom the Trade Mark suggests “something to do with the Opera House and things Chinese”, the constraint in the specification that the Services be “between Australia and China” has little real impact.
To go beyond these observations is, in my assessment, to further conflate s 43 with s 60 when what I am required to decide is whether there is a real, tangible danger that a significant number of people are likely to be confused into the belief that the Opponent has sponsored or endorsed the applied-for Services or that the Trade Mark is indicative of some endorsement or approval by the Opponent.
Having regard to the onus, the evidence and Kenny J’s observation in McCorquodale v Masterson that whether a mark connotes the sponsorship or approval of an entity or institution is a question of degree, I find that in this case “the implication is insufficiently direct”, to use her Honour’s words.
In the result I find that the Opponent has not established a ground of opposition under s 43.
Section 44
Section 44(2) of the Act provides:
Identical etc. trade marks
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Section 10 of the Act provides:
Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
Section 14(2) of the Act provides:
For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services.
For the purposes of s 44(2), the Opponent submits that the Trade Mark “is at least deceptively similar to”[28] the following earlier registered trade marks, which it defined as the ‘Sydney Opera House Marks’:
[28] This is an indication that it did not press an argument that the Trade Mark was substantially identical to any registration.
Reg. No.
Trade Mark
Priority Date
Relevant Registered Services
1008227
25 Jun 2004
Class 35: Advertising; business administration; …
Class 36: Financial and monetary affairs, including charitable fund raising and financial sponsorship; rental of business space
Class 41: Education; providing of training; entertainment; sporting and cultural activities; rental of performance space
1125137
20 Jul 2006
Class 35: The promotion of Sydney as a tourist destination and convention and conference centre, including representation of Sydney at trade and tourist fairs and exhibitions
Class 39: Travel reservation services for meetings and conferences, travel consulting services in the meetings and conference industries …
Class 41: Services to manage meetings and conferences; meetings and conference information services
….1108803
13 Apr 2006
Class 35: … business management and organisation consultancy; advisory services for business management; marketing research; organisation of exhibitions for commercial or advertising purposes; …
Class 36: Financial and monetary affairs, including charitable fund raising and financial sponsorship; … financial sponsorship and capital investment; …
Class 41: Entertainment services and information; production and presentation of opera, shows, and concerts; education information and educational services; providing of training; sporting and cultural activities; rental of performance space; arranging and conducting of conferencing, colloquiums, seminars, symposiums and workshops; … ; organisation of exhibitions for cultural or educational purposes; organisation of competitions; organisation of balls; …
Class 43: Services for providing food and drink including restaurant services, rental of meeting rooms, canteens, cafes, cafeterias, bar services, self service restaurants and snack bars; food and drink catering
1225097
19 Feb 2008
Class 41: Entertainment services and information; production and presentation of opera, shows, and concerts; education information and educational services; providing of training; sporting and cultural activities; rental of performance space; arranging and conducting of conferencing, colloquiums, seminars, symposiums and workshops; … ; organisation of exhibitions for cultural or educational purposes; organisation of competitions; organisation of balls; …
Class 43: Services for providing food and drink including restaurant services, rental of meeting rooms, canteens, cafes, cafeterias, bar services, self service restaurants and snack bars; food and drink catering
1352343
24 March 2010
Class 42: …. professional consultancy services provided by engineers, chemists, physicists, scientists and other technically qualified professionals; … ; consulting, implementation and advice in the areas of computers, computer systems and computer software and hardware design
…
The Applicant’s preliminary response was that the primary question is whether the Trade Mark is deceptively similar to any of the Sydney Opera House Marks and “[o]nly if that question is answered in the affirmative does a second question arise, namely whether the [Services] are similar services or closely related goods” to any of the services of the Sydney Opera House Marks.
I do not believe that procedure is correct. The courts regularly approach the comparison of goods/services as the first step, not least because the assessment of deceptively similar trade marks requires a determinaton of likelihood of deception or confusion which is contextual and entails consideration of the goods or services at issue. In Registrar of Trade Marks v Woolworths French J observed:
The logic of sub-s 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as ‘conceptually distinct’ but accepted that one could not be addressed in isolation from the second:
The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.[29]
[29] [1999] FCA 1020, [39].
Approaching, firstly, the class 42 services the Opponent’s written submission is that:
Although the Sydney Opera House Marks are not specifically registered in respect of, for example, “services provided by an association of professionals or entrepreneurs to its members ... in relation to Chinese and Australian relations” these services are the same, or at least “services of the same description”, as the services claimed by the Sydney Opera House Marks.
Again, I do not think that statement is correct. The nominated class 42 services are not in my finding either the same or of the same description as any of the services covered by registration nos. 1008227, 1125137, 1108803 or 1225097. Registration 1352343 covers class 42 services but, as the Applicant observed, was not listed under the s 44 ground of opposition in the SGP and therefore should be disregarded. That being so, there is no further s 44 case for the Applicant to answer in respect of class 42.
However, the claimed class 35 and 41 services show broad overlap with the registered services of the Sydney Opera House Marks – indeed, significantly enough that I am able on this occasion to move directly to the question of whether or not the Trade Mark is deceptively similar to any of the Sydney Opera House Marks. Although this question was well considered by both parties in their submissions, my analysis is considerably more brief. To the extent to which the authorities cited were largely examples of what is often categorised as “mark within a mark” cases, I find that only the registrations for the Sydney Opera House Logo are worthy of consideration; the mark which is essentially a photographically accurate image of the Sydney Opera House is too far removed from the Trade Mark to concern me. Bearing in mind that the reputation of a trade mark upon which an opponent relies is irrelevant to a s 44 analysis[30], all that remains is my finding here that, taken in the round and mindful of my earlier discussions of the Trade Mark [17]–[22] and of the Janne Lindrum v Sydney Opera House Trust case at [53]–[56], the Trade Mark does not so nearly resemble the Sydney Opera House Logo that it is likely to deceive or cause confusion[31].
[30] See, for example, Pfizer Products Inc v Karam [2006] FCA 1663 per Gyles J at [50].
[31] See, for example, Shell Co (Aust) Ltd v. Esso Standard Oil (Aust) Ltd [1963] HCA 66 at [13].
I find that the Opponent has not established a s 44 ground of opposition.
Section 60
100. Section 60 of the Act provides:
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.
Note:For priority date see section 12.
101. Accordingly, the Opponent must establish that:
· the trade mark(s) upon which it relies had a reputation in Australia at 25 January 2018; and
· because of that reputation the use of the Trade Mark would deceive or cause confusion.
102. The Opponent states that it relies on the Sydney Opera House Marks, and in particular its Sydney Opera House Logo, as the relevant ‘other trade marks’ for the purposes of s 60. In redacted form, its submissions are that:
[The Opponent’s] reputation in the Sydney Opera House Marks is demonstrated, for example, by the evidence of … extensive use, advertising, and promotion of the Sydney Opera House Logo in Australia since 1983 across its website and its promotional and advertising materials for its entertainment, cultural and educational services and related services such as merchandise, sponsorship, and restaurant services.
… there is a clear nexus between the services of the respective marks. As outlined [previously], the Sydney Opera House Marks are registered in classes 35, 41, and 42 in relation to, amongst other things, “organisation of exhibitions”, “trade fairs,” “entertainment services”, “cultural activities”, “meetings and conference information services” and “information technology and research”.
… there is a real, tangible danger that some persons will be caused to wonder whether the services marketed under the opposed mark are in some way connected with the Trust.
103. On the evidence, the only proven use of the Sydney Opera House Marks is of the Sydney Opera House Logo. Use of that logo has not been established for all of the Opponent’s activities described at [33] above and despite the many hundreds of pages of exhibits, proof of reputation of the logo even in respect of entertainment services is largely a matter of inference. It follows that the law of s 60 can assist the Opponent no better than as it was expressed in the case of Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124 where at [40] it was observed that:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.
104. To restate the law, there must be proof of a reputation such that use of the Trade Mark would be likely to deceive or cause confusion. There must be a real and tangible danger of that likelihood. The difficulty for the Opponent as I see it is that the likelihood of confusion or deception rises no higher than it did under s 43. If, as Kenny J commends, the test of confusion under these sections is largely the same, then the s 60 case also fails.
105. For these reasons the Opponent has not established a s 60 ground of opposition.
Section 42(b)
106. Section 42(b) of the Act provides that “[a]n application for the registration of a trade mark must be rejected if its use would be contrary to law.”
107. The Opponent’s written submissions of relevance to my decision are that:
Use of the opposed mark will be unlawful, for the purposes of ss 18 and 29 of the Australian Consumer Law, Schedule 2 of the Australian Competition and Consumer Act 2010, if that use is misleading or deceptive or is likely to be misleading or deceptive. Use of the opposed mark will also be unlawful, under the common law tort of passing off, if (i) the Trust has a reputation in its trade indicia, including the Sydney Opera House Logo (ii) use of the opposed mark by ACETCA amounts to, or is likely to amount to, a misrepresentation that the applicant’s services are the Trust’s services or otherwise sponsored, affiliated or endorsed by the Trust and (iii) the Trust has, or is likely, to suffer damage as a result.
For the reasons [given previously], the opponent has established that it has acquired a reputation in its Sydney Opera House Marks, such that these marks have become distinctive of the Trust business and services. There is a “real or not remote chance or possibility” that use of the opposed mark will be likely to mislead or deceive.
108. Likewise, the Applicant largely relied upon what it had already submitted save, perhaps, for the additional observation that in spite of proven use of the Trade Mark since 2012 there was no evidence of actual confusion.
109. In short, the s 42(b) case is less compelling than the s 60 one. The onus is on the Opponent to establish that use of the Trade Mark would, rather than could, be contraryto law.[32] The Opponent has failed to establish the ground of opposition under s 60 of the Act and it is well recognised that the test for “misleading or deceptive conduct” under s 18 of the Australian Consumer Law is a more stringent test than that for “deception or confusion” under s 60.[33] Accordingly, I find that the Opponent has also failed to establish that use of the Trade Mark would be contraryto s 18 of the Australian Consumer Law. Further, for lack of proof of a sufficient reputation in the Sydney Opera House Logo which would impact on all the Services, there is nothing to support the assertion of passing off.
[32] See, for example, Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
[33] See, for example, Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).
110. I find that the Opponent has not established a s 42(b) ground of opposition.
Section 62A
111. Section 62A of the Act states that the registration of a trade mark may be opposed on the ground that the application was made in bad faith. Consideration of this ground of opposition is contentious because, as filed, the SGP did not nominate s 62A. The Applicant’s position at the hearing was that the Opponent had not made an application pursuant to reg 5.12 to amend the SGP to include a ground under s 62A and that its attempt to rely on that provision at the hearing was “without notice and only via its written submissions” and should be refused.
112. At the hearing it soon evolved that the Applicant’s representative was unaware of the reg 5.12 request made by the Opponent on 21 October 2019. On that date the Opponent’s legal representatives wrote to this office seeking to amend the SGP under reg 5.12 to include a ground of opposition under s 62A.
113. The following day this office received the Opponent’s Evidence in Reply, being the declaration of Josephine Gardiner made 22 October 2019. That same day this office wrote to the parties acknowledging receipt of this evidence. Whilst that letter refers the declaration as having “attachments” my observation is that there were no attachments to the declaration. Whether or not receipt of the evidence in reply on the heels of the reg 5.12 request distracted the office I cannot say, but there is nothing in the official records to indicate that the reg 5.12 request was considered by the office or communicated to the Applicant’s representatives. Nor is there any indication that the reg 5.12 request was copied to the Applicant’s representatives by the Opponent (noting here that it had no obligation to do so).
114. During the course of the hearing Ms Stewart advised me that she was instructed that the Applicant’s legal representatives did not receive any communication concerning the reg 5.12 request. I accept that they did not.
115. The reg 5.12 request was premised on the following chronological events: that on 7 December 2017 the Applicant approached the Opponent for permission to use the Trade Mark; on 12 December 2017 that permission was refused, and on 25 January 2018 the application for the Trade Mark was filed. The reg 5.12 request went on to state that the amendment to include the ground under s 62A should be allowed because it relies on information not available at the time the SGP was filed on 24 September 2018. Critically, that submission rests on the fact that it was only on 15 October 2019 that the Opponent transferred responsibility of the matter from King & Wood Mallesons to Ashurst, Solicitors and that only then did it “come to the attention of the Opponent that [the aforementioned events offered] strong evidence of a section 62A claim”.[34]
[34] Other sudsidiary arguments rest on evidence from, for example, the evidence in answer, postdating the date of the SGP, but of little force in terms of s 62A as a potential ground.
116. Regulation 5.12 provides that the Registrar may grant a request to add a new ground of opposition but only if satisfied that the addition relates to information of which the Opponent could not reasonably have been aware at the time of filing the SGP. If the Registrar is not so satisfied, the authorities indicate that the Registrar is precluded from granting the request.[35]
[35] See, for example, Macy’s Merchandising Group Inc v Sheertex Pty Ltd [2018] ATMO 135 at [14] and Juno Pharmaceuticals Inc v Juno Therapeutics Inc [2017] ATMO 150 at [7].
117. One the facts, I cannot see how the Opponent could satisfy that proviso. The critical issue is the Opponent’s knowledge or attributed knowledge and the change of agency cannot alter what the Opponent “knew” at the date of filing of the SGP.
118. On 3 July 2020, less than one full business day before the appointed hearing of this matter, the Opponent’s representatives filed a second declaration of Josephine Gardiner made that same day. This declaration says it is “related to the inclusion of Annexure B of the Opponent’s Submissions filed on 22 June 2020 [the Opponent’s outline written submissons], which consists of email correspondence between the Applicant and Mr Wanni Zhu of Nan Hai Culture & Media Group (Australia) Pty. Ltd.”.
119. The 3 July 2020 declaration carries an Annexure A, not being that email correspondence, instead being a copy of a 26 May 2020 letter from the Applicant’s representatives to the Opponent’s representatives. At the hearing the Applicant characterised that letter as being “without prejudice”. Looking at the letter there is no such marking on it but it is well understood that the privilege against disclosure of certain information is dependent on the character of the material and the circumstances of its disclosure rather than upon any form of words.
120. Here, by its opening paragraph, the 26 May 2020 letter refers to a letter from the Opponent’s representatives a week earlier containing proposed terms of settlement of the dispute. The letter is a privileged communication in that respect and the Opponent’s representatives most certainly would have known that. Although unexplained, it appears that the 3 July 2020 declaration is an attempt to carve out certain material canvassed by the 26 May 2020 letter arguably not subject to the privilege. In particular, the 3 July 2020 declaration re-states the King declaration in so far as it claims that “[a] representative of the Applicant approached the Trust for permission to use the image [of the Sydney Opera House] in the … Trade Mark in December 2017 and was refused.” The 3 July 2020 declaration goes on to state that the Applicant's Evidence in Answer does not refer or respond to this aspect (para. 75) of Ms King's declaration or to the request made by the Applicant’s agent. The 3 July 2020 declaration continues:
On 15 October 2019, the Opponent transferred carriage of the matter from King & Wood Mallesons to Ashurst. At this stage, given that the Applicant's evidence in answer had not addressed paragraph 75 of Ms King's Declaration, we understood that these facts were not in dispute. It was therefore considered unnecessary to include any further evidence on the point in the Opponent's evidence in reply.
On 23 October 2019 the Opponent's Evidence in Reply was filed.
On 26 May 2020 the Applicant sent a letter to the Opponent (see Annexure A). In this letter, the Applicant states that the statement in paragraph 75 of Ms King's Declaration is incorrect and requests that the ‘error be corrected in the submissions.’
As the Opponent had raised this issue we obtained instructions to include the email correspondence in the Opponent’s submissions as it was relevant to the unchallenged statement within Ms King's Declaration and to the statements made in the correspondence received from the Applicant on 26 May 2020. It was included in the Opponent's submissions at Annexure B on the basis that the Applicant had appeared to change its position just over a month before the scheduled hearing date.
121. Annexure B to the Opponent’s 22 June 2020 written submissions is a copy of an email string said to be between the Applicant and Mr Wanni Zhu of Nan Hai Culture & Media Group (Australia) Pty. Ltd. The Annexure B emails commence with a 7 December 2017 message from Mr Zhu to the Opponent and end on 28 December 2017 with another message from Mr Zhu. The exchange can only have significance to the ground of opposition under s 62A but had passed and was part of the Opponent’s direct knowledge well before the filing of the SGP. Its existence does not alter my finding on the reg 5.12 request.
122. I find that s 62A is inadmissible as a ground of opposition since I find that the reg 5.12 request on which it was based should be refused.
Decision
123. Section 55 of the Act 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.
124. The Opponent has not established a ground of opposition. The Trade Mark may proceed to registration 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 the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
125. Both parties sought their costs in the event of success. The Applicant has been successful in this matter and I accordingly award costs against the Opponent at the official scale set out in Schedule 8 to the Regulations.
Debrett Lyons
Hearing Officer
Hearings and Oppositions
9 November 2020
..the section is concerned with whether the mark the subject of the application (or a sign contained in the mark) connotes something other than a connection in the course of trade between the relevant goods or services and the person who applied (or intended to apply) it to those goods or services. [at 174]
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