Re Queensland Rugby Football League Limited

[1994] ATMO 18

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Trade mark application numbers 551196, 551197 and 551198 in the name of QUEENSLAND RUGBY FOOTBALL LEAGUE LIMITED

Application numbers 551196, 551197 and 551198 were lodged by QUEENSLAND RUGBY FOOTBALL LEAGUE LIMITED (the applicant) on 28 February 1991 for the statements of goods subsequently amended to, "Posters, stickers, advertising material in paper or cardboard form, pennants and flags of paper, goods made from paper and cardboard, printed matter and publications, stationery, and all other goods in this class", in Class 16; "Clothing, including sportswear; footwear; headgear", in Class 25; and "Toys and playthings; sporting articles and equipment; and all other goods in this class", in Class 28, respectively, for the mark subsequently amended to that shown below:

An examiner's report of 17 July 1992 objected to the mark's registrability under para. 24(1)(e) of the Trade Marks Act on the grounds that the main feature of the mark, the words STATE OF ORIGIN, was not distinctive as those words are a generic term in relation to football and goods and services related to football, and that no one trader should be allowed a monopoly in them. The other material in the mark was not considered by the examiner to be sufficient to render the mark distinctive as a whole. The applicant's attorney, Mr Claude Anese of Cullen & Co, Patent and Trade Mark Attorneys of Brisbane, replied on 18 September 1992, arguing that the mark, as a whole, was distinctive and therefore registrable. He said that the words STATE OF ORIGIN were not directly descriptive of the goods of the applications and that other traders did not have an inherent right to use the mark on the goods. He said that the applicant had coined and used the term, and had sold goods bearing them, before any other organisation. On those grounds, he said that the applicant was entitled to proprietorship of the mark in relation to the goods of the applications. The examiner maintained the objection under s.24 in the second report, saying that the term was now a generic phrase used to indicate a sporting contest between two States. She did, however, consider that the mark, as a whole, had the ability to become distinctive through time and use and offered to recommend acceptance if the applicant agreed to transfer the mark to Part B of the Register and to the disclaimers of the exclusive use of the words STATE OF ORIGIN and QUEENSLAND TEAM. The attorney agreed to disclaim the term QUEENSLAND TEAM but refused to concede that STATE OF ORIGIN was a phrase which was not distinctive of the applicant or that the mark did not qualify for Part A registration as a whole. He argued that there was ample precedent for acceptance of similar marks such as WORLD CUP RUGBY, OLYMPIC and GRAND PRIX which had not interfered with the staging of those events as the registrations only covered goods sold in the course of trade. He sought a hearing on the matter and also clarification of the grounds for the objection. A reply was sent from an Acting Assistant Registrar of Trade Marks restating the objection and the same offer of a Part B registration with suitable disclaimers. She said that, while the words STATE OF ORIGIN in the mark did not have direct reference to the goods covered by the applications, they were words which other traders would legitimately need to use on their own goods.

The matter came before me, as the Registrar's delegate, in Brisbane on 30 August 1993.  Mr Anese, appearing on the applicant's behalf, outlined the history of the adoption of the mark by the Queensland Rugby Football League Limited.  He submitted that the mark, as a whole, was registrable in Part A of the Register, or at least in Part B, with a disclaimer of the words QUEENSLAND TEAM.  However, the applicant did not wish to disclaim the words STATE OF ORIGIN.

Mr Anese said that the game called State of Origin as it related to Rugby League football was played between the Queensland and New South Wales teams and, following a great deal of media promotion, had enjoyed great support from followers of both teams.  The success of these games had led other sporting codes to adopt similar rules for their interstate competitions which meant that they were now selected on a basis of their "State of origin".  The applicant conceded that the term was now generic in relation to sporting contests but disputed the allegation that the expression was not distinctive of the goods of the present applications.  He said that the words WORLD CUP had been registered for equivalent goods in Classes 16, 25 and 28 which demonstrated that the name of a game could still be distinctive for goods.  The applicant had engaged in product marketing on goods bearing the Queensland team logo which included the words STATE OF ORIGIN.  The applicant was concerned that unscrupulous traders were using the applicant's State of Origin marks and Mr Anese claimed that it was in the public interest that registration for the present mark should be granted.

With respect to the disclaimer endorsement sought by the examiner, Mr Anese said that the applicant realised that other sporting authorities might wish to promote their own similar sporting events using product merchandising.  He said that the applicant did not wish to preclude these organisations from using the words STATE OF ORIGIN but intended merely to prevent pirates from feeding off the reputation generated by these sporting contests.  Instead, the applicant  proposed, as a condition of registration, an endorsement which would read:

Registration of this trade mark shall not preclude the use of STATE OF ORIGIN by, or under licence to, a recognised sporting authority.  A recognised sporting authority is a controlling or administrative body of a sport registered with a Federal or State Government department having jurisdiction in sport matters.

He said that this would allow legitimate use of those words by such sporting bodies and also by traders authorised by them.  He submitted that s.32(1) envisaged that there may be other forms of disclaimers and the Registrar had a discretion under s.44(1) to accept an application "subject to such conditions or limitations as he thinks fit".

On 29 October 1993, I wrote to Mr Anese to advise him that I had considered the matter but could not agree that the mark was, prima facie, registrable in Part A of the Register.  I also informed him that the endorsement that he had proposed at the hearing regarding the words STATE OF ORIGIN was unacceptable to the Registrar.  I said that I believed that the subject goods in Classes 16, 25 and 28 were integral to promotion of sporting contests and therefore the words STATE OF ORIGIN were equally as generic for them as the contests themselves.  I observed that the "Q" logo already registered by the applicant was in Part B of the Register and offered to accept the mark in Part B of the Register with a disclaimer to the exclusive use of the words QUEENSLAND TEAM and STATE OF ORIGIN.  I also said that I was aware that the mark, as a whole, had received considerable publicity and that I would be prepared to consider the mark for Part A acceptance if the applicant lodged evidence of use which showed acquired distinctiveness through use.  However, I added that I would only do so if the applicant agreed to the same disclaimers already required for Part B acceptance.

Mr Anese sought clarification of some points contained in my aforementioned letter in his letter of 22 November 1993, particularly my assertion that the words STATE OF ORIGIN had become part of Australian culture and so should remain in the public domain.  I replied on 26 November 1993, explaining that my request for a disclaimer of the words STATE OF ORIGIN was based on my finding that those words were non-distinctive in relation to any contests where the participants might have their origins in different Australian States and, as a corollary, the Class 16, 25 and 28 goods regularly used to promote them.  I said that I was of the opinion that the phrase lacked the capacity to distinguish the applicant's goods and was therefore not separately registrable.  I told him that the Registrar did possess discretionary power under section 32 of the Act to impose disclaimers as he felt were necessary.  However, it was my belief as the Registrar's delegate, that the marks' registration without disclaimer could inhibit other traders in the promotion of their similar goods - see Eclipse Sleep Products Inc v Registrar of Trade Marks (1957) 99 CLR 300 at 315. I told him that I based my claim that the phrase STATE OF ORIGIN should remain public property, on my own observations of charity and sporting events, and commercial promotions where participants are chosen on the basis of their State of origin.

Mr Anese replied on 24 December 1993, inviting me to issue my final decision in the matter and stating that the applicant was prepared to transfer the mark to Part B and to disclaim the words QUEENSLAND TEAM.  However, in relation to the words STATE OF ORIGIN, the applicant would only agree to the disclaimer:

Registration of this trade mark shall not preclude the use of STATE OF ORIGIN by, or under licence to, a recognised sporting authority.

He said that the definition of what constituted a "recognised sporting authority" could be agreed upon by negotiation between the applicant and the Office.  The aim of this endorsement was to enable sporting authorities who have a legitimate right to use that term in their merchandising to do so but to exclude unauthorised persons from its use.

Decision

For a mark to be registrable in Part A, without evidence, it should qualify in terms of one of paragraphs (a) to (d) of sub-section 24 (1) of the Trade Marks Act. The basic requirement for the registration of any trade in Part A is that it is distinctive, ie. adapted to distinguish the goods of its owner from the similar goods of other traders. Therefore, a mark that appears to satisfy the requirements of one of these paragraphs may still be regarded as non-distinctive.

The test as to whether or not a mark is adapted to distinguish is well established.  If the mark is one which other traders would desire to use, without improper motive, upon or in connection with their own goods, then registration will generally be denied - see, for example, Clark Equipment Co v Registrar of Trade Marks, 111 CLR 511 (the Michigan case).  The test for registrability in Part B is deciding whether the mark will, at sometime in the future, satisfy the requirement of sub-section 26(2) as to inherent distinctiveness and distinctiveness in fact.

The present mark is a composite one which comprises the words STATE OF ORIGIN in a halved annulus the words QUEENSLAND TEAM  and a "Q" device enclosing the silhouette of a football.  I repeat here that the latter device is registered by the applicant in Part B of the Register, viz., B362059(25), B362060(16) and 362061(41).  The other features of the mark comprising the phrases previously referred to are, in my opinion, non-distinctive.  I therefore think that the mark, even when considered as a whole, is only qualified for Part B registration with disclaimers which acknowledge that the applicant has no right to the exclusive use of that non distinctive material.  As I stated earlier in this decision, I offered to accept the mark under those conditions in my letter of 29 October 1993 but the applicant, although agreeing to transfer the mark to Part B, wishes to pursue the matter of the form of the disclaimer which Mr Anese proposed in his letter of 24 December 1993.  I reiterate that I was willing to consider the mark in Part A of the Register, following the lodgment of evidence showing acquired distinctiveness, on the grounds that the mark had received considerable publicity but with the endorsements which I had originally proposed.

In relation to the endorsement proposed by the applicant, I am of the opinion that such an entry on the Register is not appropriate.  The words STATE OF ORIGIN have become part of the Australian vocabulary and I believe the phrase is understood by the ordinary person as meaning an event where participants in some event compete on behalf of, or are selected on the basis of, their State of origin.  I have already outlined my reasons for considering that those words, in relation to the goods in question, are not distinctive.  I believe that those words should be available for use by other traders in like goods who might wish to use the popularity of any State of Origin series to advertise the sale of those items.  Such traders could include sporting goods manufacturers who should be able to advertise that their goods are of a standard used in State of Origin contests, or writers and publishers who might wish to produce books and other written material on the subject of such competitions.  The words are used in conjunction with fund raising for charity, sporting events and commercial promotions where participants are chosen on the basis of the State where they were born.  I am of the opinion, as the Registrar's delegate, that the restriction of the use of the words to "recognised sporting authorities" would be to disadvantage other organisations - which might include sports teams and charities having no registration with a State or Federal controlling body.

In addressing the "piracy" implications which Mr Anese raised at the hearing and in his letter of 22 November 1993, I observe here that the Registrar is not competent to determine matters of "passing off" and is only empowered by the Trade Marks Act to deal with the registration of trade marks. I said in my letter of 29 October 1993 that, "if unscrupulous traders were discovered using the words STATE OF ORIGIN and claiming some sort of patronage by the sporting body concerned, it would appear that they could be liable in any passing off action taken against them by that body." (emphasis added).  My comments were obiter only and were merely intended to point out that those who sell goods falsely claiming to represent an entity could face action by that body.  Although, as I said, the Registrar is not competent in these matters, I believe that a passing off action may well succeed though a mark is incapable of registration - see Montgomery v Thompson (1891) 8 RPC 361 - or the element taken by the defendant has been disclaimed - see sub-section 32(2) of the Trade Marks Act. I did state in my letter that such a trader would be liable (under the Trade Marks Act) if that trader used another party's registered mark, or one closely resembling it.

Conclusion

In my letters of 29 October 1993 and 26 November 1993, I made an offer to accept the applications for registration of the mark in Part B, with the endorsements previously listed,  Alternatively, I offered to consider the applications for Part A acceptance following the provision of evidence which showed acquired distinctiveness but still with the same endorsements.  The applicant has chosen not to accept either course and, as a consequence, I have no other option but to refuse to register the applications in both Part A or Part B.

Ian Forno
Hearing Officer

23 February 1994