Royal Agricultural Society of NSW v Mr Gatsby Investments Pty Ltd

[2019] ATMO 122

TRADE MARKS ACT 1995

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

Re:Opposition by Royal Agricultural Society of NSW to registration of trade mark application 1809220 (41) –MELBOURNE EASTER SHOW (Figurative) – in the name of Mr Gatsby Investments Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Self-represented

Applicant:  Self-represented

Decision:

2019 ATMO 122

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – ground established – registration refused

Background

1. This decision concerns an opposition brought by Royal Agricultural Society of NSW (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Mr Gatsby Investments Pty Ltd (‘Applicant’): 

Application Number:

1809220

Filing Date:

17 November 2016

Services:

Class 41: Event management services (organisation of educational, entertainment, sporting or cultural events); Management of cultural events; Management of entertainment events; Organisation of entertainment events; Organising events for cultural purposes; Organising events for entertainment purposes; Arranging of entertainment; Arranging of exhibitions for entertainment purposes; Conducting of exhibitions for entertainment purposes; Live entertainment; Organisation of competitions (education or entertainment); Organisation of contests (education or entertainment); Organisation of exhibitions for entertainment purposes; Organisation of fairs for entertainment purposes; Amusement rides

(‘Applicant’s Services’)

Trade Mark:

(‘Trade Mark’)

2.  Following the advertisement on 13 April 2017 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose registration on 5 May 2017.  The Opponent then filed a Statement of Grounds and Particulars on 17 May 2017.  This Statement of Grounds and Particulars was rectified by this office on 7 July 2017 (‘SGP’). The SGP as rectified raised grounds of opposition under ss 43, 44 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 15 August 2017.

Evidence

1. Neither party filed any evidence in this matter.

   4.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 28 November 2018 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions upon which they wished to rely.  Neither party filed any submissions.

   5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs, which in this case is essentially negligible.

   The Opponent

   6.  As the Opponent has not provided any evidence, I cannot provide any information about the Opponent save what is available on the Registrar.  The Opponent is the registered owner of the trade mark set out below (‘Opponent’s Trade Mark’).     

Number	Trade Mark	Priority Date	Goods and Services
1047703	24 March 2005	Class 16: Paper, cardboard goods, printed matter, photographs, stationary, office requisites, instructional teaching material, plastic material for packaging Class 25: Clothing, footwear, headgear Class 41: Education, providing training, entertainment, sporting and agricultural and cultural activities

The Applicant

1. The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

   Grounds of Opposition, Onus and Standard of Proof

2. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 43, 44 and 60 of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   9.  The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 17 November 2016 (‘relevant date’), being the filing date of the application in Australia.[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

   10. As the Opponent has filed no evidence and provided no submissions I have no hesitation deciding that the Opponent has not discharged the onus on it and has consequently not to any extent established the s 60 ground of opposition nominated in the SGP since this ground requires evidence of reputation in a nominated mark.

   11. Furthermore, the s 43 ground of opposition is particularised by reference to reputation the Opponent holds, both generally and in the Opponent’s Trade Mark. In the absence of any evidence of any such reputation, I find that the Opponent has not established the s 43 ground either.

   Discussion

   Section 44

   12. The relevant provisions of the Act with respect to the ground pursuant to s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)…

   (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).

   Note 3: For priority date see section 12.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)              the similar goods or closely related services; or

   (ii)             the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - 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.

   13. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar services, or goods which are closely related to, the Applicant’s Services (‘the third requirement’).

3. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. As the Applicant has not provided any evidence or submissions in this opposition there is nothing before me that could demonstrate that the requirements of ss 44(3) and 44(4) are satisfied.

4. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark.  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  I consider that the services for which the Opponent’s Trade Mark are registered, which include ‘providing training, entertainment, sporting and agricultural and cultural activities’ are similar to the Applicant’s Services, which relate to the organisation and management of entertainment and cultural events.  The first and third requirements are satisfied in respect of the Opponent’s Trade Mark. 

   Substantially identical and/or deceptively similar

5. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

   [4] (1963) 109 CLR 407, [12].

   17.       The Trade Mark and the Opponent’s Trade Mark are set out below:

   18.       On a side by side comparison there are differences between the respective trade marks. The Trade Mark contains the word ‘melbourne’ instead of ‘Sydney Royal’ and contains a different device, containing Easter eggs and a ribbon.  The differences between the respective trade marks are sufficient for me to conclude that they are not substantially identical.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

   19.       The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[5]

   [5] Ibid [13].

   20.       Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[10]

   [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [10] [2012] FCA 1022, [38]-[46].

   21.       Each of the marks contain the prominently placed words ‘Easter Show’ (in essentially identical fonts).  The words ‘Easter Show’ are displayed in front of devices that (while one is described as a sun and the other an explosion), appear strikingly similar.  The key difference between the marks is that the Trade Mark contains the word ‘melbourne’ and the Opponent’s Trade Mark the words ‘Sydney Royal’ however notably each of those words is located in the exact same place in the respective mark, is in very similar font and is less prominent then the shared element ‘Easter Show’.  Furthermore the terms ‘Melbourne’ and ‘Sydney’ are geographically descriptive and hence are likely to be discounted by consumers who will simply see them as referring to the location that the services will be provided.  The presence of the ribbon and easter eggs device in the Trade Mark is significantly less prominent than the shared element ‘Easter Show’, and the presence of the easter eggs is likely to be discounted by consumers as it simply reinforces the ‘Easter Show’ wording.

   22. While, as outlined above, there are differences between the marks, the similarities in wording, fonts and the manner in which the words and devices are displayed are such that the overall impressions of the two marks are very similar. Noting that the question of deceptive similarity is not to be decided by a side-by-side comparison, when viewing (for example) advertising material for a service offered by the Applicant that displays the Trade Mark, I consider that there is a real tangible danger a person of ordinary intelligence would be caused to wonder if that service was provided by the same source as the services provided by the Opponent. In particular, it is foreseeable that a consumer with awareness of the Opponent’s Trade Mark would see the Trade Mark and think that the Opponent had expanded its business and was now offering an ‘easter show’ in Melbourne as well as Sydney. In the absence of any evidence that could satisfy the requirements under ss 44(3) or 44(4) I am satisfied that that a ground for rejection of the Trade Mark exists under section 44 of the Act.

   Decision

   23. I have found the Opponent has established the ground of opposition it raised pursuant to s 44 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.

   Nicholas Smith

   Hearing Officer

   Oppositions and Hearings

   13 August 2019