Ross Smith v Australian Football League

[2012] ATMO 20

TRADE MARKS ACT 1995

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

Re:Opposition by Ross Smith to registration of trade mark application 1367869(9, 14, 16, 21, 25, 28 and 41) - MELBOURNE FOOTBALL CLUB AND DEVICE - filed in the name of Australian Football League.

Delegate:

Jock McDonagh

Representation:

Opponent: Fiona Brittain of Davies Collison Cave, Patent & Trade Mark Attorneys

Applicant: Chris Round of Middletons solicitors

Decision:

2012 ATMO 20

Section 52 oppositions – ss42 and 43 pressed. Grounds under ss42 and 43 not established – trade mark to proceed to registration– costs awarded against opponent

Background

1. This is an opposition brought by Mr Ross Smith (“the Opponent”) pursuant to s 52 of the TradeMarks Act 1995 (“the Act”) to registration of an application filed in the name of the Australian Football League (“the Applicant”) for the following trade mark:

Regn No.	1367869
Priority Date	22.06.10
Trade Mark
Goods & Services	Class: 9 Scientific, nautical, surveying, electric, photographic, cinematographic, video, optical, weighing measuring, signalling, checking, life-saving and teaching apparatus and instruments; apparatus and instruments for recording and/or transmission and/or reproduction of sound and/or images; cameras and radios; automatic vending machines, mechanisms for coin-operated apparatus; cash registers and calculating machines, data processing equipment and computer apparatus and instruments; computer operating programs, computer programs, computer software and video game software; magnetic data carriers; recording discs, audio, video, computer and laser tapes, discs, compact discs, cassettes and cartridges; pre-recorded audio, video, computer and laser tapes, discs, compact discs, cassettes and cartridges; CD-ROMs (compact disc ROMs), digital versatile disc ROMs, sound recordings, video recordings, sound and video recordings; video game and computer game tapes, discs, compact discs, cassettes and cartridges; games in class 9; games for use with television receivers and/or computer monitors and/or other separate display apparatus; helmets and fire-extinguishing apparatus; downloadable electronic publications; recorded video discs and tapes; downloadable digital image recordings; downloadable music recordings; parts, fittings and accessories in class 9 for the aforesaid goods Class: 14 Jewellery, costume jewellery, trinkets, horological instruments, chronometric instruments, sundials, clocks, watches, watch bands, watch straps, watch chains, cuff links, tie clips, tie pins, ornamental pins, earrings, jewellery bracelets, jewellery brooches, jewellery medallions, jewellery necklaces, jewellery rings, jewellery pendants, jewellery buckles, jewellery ornaments, jewellery chains, key chains, key ring trinkets, key ring fobs, medals, coins; goods of precious metal or coated therewith namely badges, boxes, cases, containers and household utensils; and parts, fittings and accessories in class 14 for the aforesaid goods Class: 16 Paper, cardboard, goods in class 16 made from paper and/or cardboard; wrapping paper, paper flags, paper pennants, paper bibs, paper placemats, paper napkins, paper coasters, cardboard coasters, printed matter, printed publications, books, magazines, newspapers, activity books, statistical books, guide books, reference books, newsletters, pamphlets, printed programs, printed entertainment programs, printed game programs, printed fixtures; printed matter for the radio, television and print media; bookbinding materials, stationery, exercise books, diaries, calendars, memo pads, folders, note books, multi-ring binders, book covers, portfolios, printed statistics sheets, adhesives, artists' materials, paint brushes, writing instruments, ball point pens, pencils, typewriters, office requisites except furniture, drawing rulers, erasers, instructional and teaching materials except apparatus, plastic packaging materials, cards, trading cards, sports trading cards, football trading cards, dance team trading cards, mascot trading cards, entertainment trading cards, post cards, greeting cards, note cards, stamps, sports stamps, football stamps, posters, stickers, bumper stickers, decalcomanias, albums, scrap books, autograph books, photographs, mounted photographs, pictures, line art colouring boards, non-textile labels, tickets and control tokens Class: 21 Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes Class: 25 Clothing, apparel, leisure wear, sportswear, uniforms, babywear, underwear, underpants, boxer shorts, singlets, leotards, shirts, sports shirts, blouses, T-shirts, tank tops, skivvies, rugby tops, grandpa tops, shorts, board shorts, tracksuits, warm-up suits, pants, warm-up pants, sweat pants, trousers, jeans, dresses, skirts, clothing belts, knitwear, jumpers, sweaters, guernseys, jerseys, cardigans, vests, neckwear, cravats, neckties, scarves, jackets, bomber jackets, blazers, formal wear, suits, coats, parkas, anoraks, rainwear, raincoats, swimsuits, sleepwear, pyjamas, nightshirts, night gowns, dressing gowns, bath robes, cloth bibs, aprons, clothing gloves, mittens, headwear, hats, caps, berets, beanies, ear muffs, clothing hoods, visors, headbands, wristbands, socks, stockings, hosiery, footwear, shoes, boots, sandals and slippers Class: 28 Games, playthings, playing cards, gymnastic and sporting goods in class 28, balls for games, playballs, rubber action balls, foam action balls, balls for sports, golf balls, footballs, toy footballs, miniature footballs, pumps for inflating sporting balls, needles for such pumps, sports gloves, football gloves, golf gloves, golf bags, golf tees, exercise and physical training apparatus and articles, toys, toy vehicles, toy cars, dolls, jigsaw puzzles, board games; coin operated games, coin freed games; self contained apparatus and instruments for playing games including mechanical games, electronic games, computerised games, battery operated games, games that are portable, games that include a built-in display, games that include a built-in program, games that receive one or more programs; hand held portable self contained apparatus and instruments for playing games; Christmas tree stands, synthetic Christmas trees and Christmas tree decorations; parts, fittings and accessories in class 28 for the aforesaid goods; video games and computer games for playing in game arcades and game playing venues; electronic video arcade game machines Class: 41 Entertainment, amusement and recreation; cultural activities; sporting activities, sport competitions, sport matches, sport games, sport exhibitions, sport events, hosting sport award functions, sport information, education, sport education, physical education, coaching, sport coaching, physical coaching, training, sport training, physical training; publication of books, magazines, pamphlets and printed matter (other than publicity texts); library services, video library facilities and video storage facilities; museum services; radio and television entertainment; film, video, radio and television production; hire of film, video and sound recordings; gaming, provision of gaming machines and provision of gaming facilities; operating lotteries; football competitions, football matches, football games, football exhibitions, football events, football telecast entertainment, football broadcast entertainment, football education, football information, football awards, football coaching, arranging football clinics, conducting football clinics; production of football videos and films; football mascot performances, football cheer leader performances and dance team performances

1. I will refer hereafter to the goods and services covered by the opposed application collectively as “the Goods and Services” and to the opposed trade mark as “the MFC logo”.

2. Following examination and acceptance of the application the Opponent filed Notice of Opposition (“the Notice”) to the registration of the MFC Logo on 9 November 2010.

3. The parties filed and served Evidence in Support, Evidence in Answer and Evidence in Reply as follows:

Evidence in Support

• Statutory Declaration by Ross Smith, Opponent and amateur historian, made 8 February 2011 with exhibits RS‑1 to RS-6 (“Smith 1”)

Evidence in Answer

• Statutory Declaration by Colin Neil Hutchinson, Applicant’s official historian,  made 5 May 2011, with Exhibits CH-1 to CH-16 (“Hutchinson”)

Evidence in Reply

• Statutory Declaration by Ross Smith made 1 November 2011, with exhibits A to K (“Smith 2”)

1. I heard the matter as delegate of the Registrar of Trade Marks on 14 November 2011 in Melbourne.  Fiona Brittain of Davies Collison Cave, Patent & Trade Mark Attorneys, appeared for the Opponent. Chris Round of Middletons solicitors, appeared for the Applicant.

2. At the beginning of the hearing I disclosed to the parties that I was a former member of the Melbourne Cricket Club; however, no objection was raised.

Grounds of Opposition

1. The Notice nominated most of the grounds of opposition available under the Act. The onus is upon the opponent to establish one or more of its grounds of opposition on the balance of probabilities[1].

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].

2. At the hearing the opponent advised that it pressed only those grounds under sections 42 and 43 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that they have not been established.

3. Therefore, the grounds remaining for my consideration are those under sections 42 and 43 of the Act. Should the opponent establish any one ground of opposition, there is no requirement for me to consider the other ground of opposition.

4. Section 42 of the Act provides:

Trade mark scandalous or its use contrary to law

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

(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.

1. The Opponent claimed that use of the trade mark would be contrary to what is now the Australian Consumer Law, in that it would amount to misleading and deceptive conduct.

2. Section 43 of the Act provides:

Trade mark likely to deceive or cause confusion

43. 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.

1. The Opponent claimed that the MFC logo contains the words “Est 1858” that constitutes a connotation that the Applicant was established in 1858, when in fact it was established in 1859.

Discussion

1. Central to the Opponent’s case is the year in which the Melbourne Football Club (“the Club”) was established. The opponent points to the MFC Logo, which includes a scroll with the words “Est 1858”. It was accepted by the parties that this was an abbreviation for “Established 1858”.

2. The Opponent contends that the Club was in fact established on 14 May 1859. On this date a meeting was held at the Parade Hotel, East Melbourne, for the purposes of forming a football club and a committee was appointed.

3. In Smith 1, the Opponent provides dictionary definitions for the words ‘establishment’ and ‘club’. The Oxford Dictionary of English is cited for the definition of the former as being “set up on a permanent basis;” and “achieve permanent acceptance or recognition for.”

4. The definition in the Macquarie Concise Dictionary (revised 3^rd Edition) for ‘club’ is cited: “a group of persons organised for a social, literary, sporting, political, or other purpose, regulated by rules of its members”.

5. For the sake of completeness, and as exhibited in Hutchinson, I note that the Macquarie Concise Dictionary (revised 3^rd Edition) definition of ‘establishment’ commences: “1. to set up on a firm or permanent basis; institute; found: to establish a government; to establish a business; to establish a university.”

6. The Oxford Dictionary is quoted in Hutchinson Exhibit CH-2 as including as a definition of ‘club’: “14 a. An association formed to combine the operations of persons in the promotion or prosecution of some object; the purpose is often indicated in the title, as … football club [etc] …”

7. The opponent based his argument regarding the establishment of the Club on the following chronology based on contemporary primary sources:

Source	Reported Event
The Argus newspaper Monday, 16 May 1859	14 May 1859 – meeting held to appoint secretary, treasurer and committee of five to conduct affairs of the club. Meeting held after a game of football played on Richmond Paddock
The Herald newspaper Monday, 16 May 1859	14 May 1859 – a preliminary meeting of gentlemen interested in the game of football being held at the Parade Hotel with the object of forming a “football club”. A list of 51 members was submitted, a committee was selected to draw up rules, etc, a secretary and treasurer were appointed and a deputation was appointed to wait on the ground committee of the Melbourne Cricket Club to obtain permission to play on their reserve.
The Argus newspaper Saturday, 21 May 1859	At meeting [of 14 May] it was unanimously agreed to request the ground committee of the Melbourne Cricket Club to allow use of their ground during the football season. Request is likely to be acceded to and a game set down for today [21 May] for first regular match to be played between members. Rules to be those determined by committee on 17 May.
The Argus newspaper Saturday, 17 April 1860	Article and Notice of Meeting referring to first annual meeting of the Club at 4.30 pm that day.

1. While the Applicant accepts the above as fact, it points to other historical sources to support the claim of the Club being established in 1858. The Applicant also submits that even if the Club was established in 1859, it would still be the oldest Australian rules football club and there is no misleading or deceptive conduct arising from the claimed date of establishment.

2. The Applicant provided material with Hutchinson, who is the historian for the Applicant, including the following:

Source	Reported Event
The Footballer An annual Record of Football in Victoria (1875 and subsequently)	Refers to the Club being established in 1858
Bell’s Life in Victoria, 10 July 1858	Letter from T.H. Wills: "Sir - now that cricket has been put aside for some months to come, and cricketers have assumed somewhat of the chrysalis nature (for a time only 'tis sure), but at length will burst forth in all their varied hues, rather than allow this state of torpor to creep over them, and stifle their now supple limbs, why can not, I say, form a foot-ball club, and form a committee of three or more to draw up a code of laws ?......"
Bell’s Life in Victoria, 31 July 1858	Announced that a James Bryant, the publican of Bryant's Parade Hotel in Richmond would provide a ball so a game could be played in Richmond Park [conveniently close to the hotel].
100 Years of Football, The Story of the Melbourne Football Club (published 1958)	Refers to formation of the Club in 1858
Running with the Ball (published 1987), A. Mancini & G.M. Hibbins	Refers to informal establishment of the Club in 1858
A Game of our Own: the Origins of Australian Football (published 1990) by Geoffrey Blainey	States that there is evidence that the Club was tentatively formed late in the winter of 1858

1. Having regard to the evidence filed by both parties, I find on the balance of probabilities that the Club formally incorporated as an association with office bearers elected by enrolled members in 1859 and that football played to rules formulated by a committee of that association was first played in 1859. The Club would seem to be the first football club to adopt the prototype of what is now Australian football, as administered by the Applicant.

2. However, I am not persuaded that the Applicant’s claim to having been ‘established’ in 1858 is factually wrong. The evidence of both parties suggests that Melbourne men gathered for the common purpose of playing football in the winter of 1858, particularly following T.H. Wills’ letter calling for the formation of football (and rifle) clubs and James Bryant’s donation of a football to be used in a game at Richmond Park.

3. The opinions of eminent historians are not to be lightly ignored by a government functionary. Likewise, I give great weight to the belief of both the Club and the Applicant that the Club was established in 1858.

4. The evidence of the Opponent also satisfies me that the Applicant’s claim should not be rejected. In Exhibit RS-2 to Smith 1, the copy of The Argus newspaper Monday, 16 May 1859 states:

   The football campaign opened on Saturday in the Richmond Paddock with a game played between sides chosen by Messrs Smith and Bryant. It was intended that the match should be confined to members of the Melbourne Football Club, but in consequence of the small number of players present during the early portion of the afternoon, the captains departed from their original intention to a certain extent. Two goals were obtained by Bryant’s side; the first owing to a misapprehension on the part of one of the opposite players, and the second by force of numbers. Some annoyance was experienced from the occasional interference of persons not in the game, and a general disposition manifested by the bystanders to lounge about inside the bounds. To obviate the recurrence of this inconvenience, it was proposed at a meeting of members subsequently held, to make application to the Ground Committee of the Melbourne Cricket Club, for the use of the ground on Wednesday and Saturday afternoons. At the same meeting, a secretary, treasurer, and committee of five were appointed to conduct the affairs of the club, in which about 60 gentlemen have already enrolled themselves. The committee will meet on Tuesday afternoon, to draw up a code of rules. This proceeding is the more necessary as exceptions were taken last year to some of the Rugby regulations, which even a perusal of Tom Brown’s Schooldays has not made altogether palatable to other than old Rugbians.

5. The above quote demonstrates to me that when the 1859 football season commenced, there was already in being a Melbourne Football Club that had originally intended to play an intra-club game of football. The Club seems to have done so in 1858 as well, but to rules similar to those of Rugby School. Difficulties experienced in the 1858 season and on the first game day in 1859 influenced the Club members to organise themselves more formally and to draw up a code of rules for future games.

6. When considering the Club’s activities in the 19^th Century, it is important not to import 20^th and 21^st Century philosophies to them. The various sporting codes as we know them now did not exist as such or were quite different. It appears that participation in sporting activity was considered more to be recreation than competition as such and intra-club matches were common.

7. While the Club arguably did not achieve legal personality until May 1859, I am satisfied that it began its existence as a club in 1858. I do not consider that the dead hand of legalism should deny the fact that a group of men met for the purpose of playing football in 1858.

1. Since the particulars of fact relied upon to support the grounds of opposition have not been made out, I am not persuaded that the use of the trade mark would be contrary to law or likely to deceive or cause confusion. I find that the grounds have not been established.

Decision

1. Section 55 (1) of the Act provides:

   (1) Unless the proceedings are discontinued or dismissed, 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.

2. The Opponent has not established a ground of opposition under the Act. I direct that trade mark application 1367869 may proceed to registration after one month from the date of this decision.

3. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the application be subject to that order. 

Costs

1. Both parties sought costs on the basis that costs should follow the event. The Applicant has been successful and I find that it is entitled to an award of costs. I award costs against the Opponent in accordance with Schedule 8 of the Trade Mark Regulations 1995.

Jock McDonagh

Hearings Officer

Trade Marks Hearings

13 February 2012