Seven Network (Operations) Limited v All Saints Holding Company Limited

[2003] ATMO 4

TRADE MARKS ACT 1995

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

Re:Opposition by Seven Network (Operations) Limited to registration of trade mark application 834698(25) - ALL SAINTS - filed in the name of All Saints Holding Company Limited.

Background

On 10 May 2000, the applicant, All Saints Holding Company Limited ("All Saints"), of London, England applied for registration of the following trade mark:

ALL SAINTS

for the following goods in class 25: articles of clothing; outerwear, leather jackets and coats, raincoats, coats, blousons, jackets, suits, trousers, waistcoats, jeans, knitwear, shirts, knitted jersey tops, t-shirts; footwear, headgear, scarves, gloves, socks, neckties and belts.

The trade mark was accepted for registration, and the acceptance was advertised in the Australian Official Journal of Trade Marks of 14 December 2000.

On 14 March 2001, the opponent, Seven Network (Operations) Limited ("Seven") filed a Notice of Opposition to registration.

Evidence in Support was eventually filed and served on 27 August 2001 and 14 March 2002.  The evidence comprised statutory declarations by Mr Jack Lloyd dated 18 July 2001 and Mr Peter Jenetsky dated 12 March 2003.  Mr Lloyd is a Director of a company involved in the licensing of what can be described as character merchandising.  He has been involved in such activities for at least 10 years.  Mr Jenetsky is the Network Program Marketing & Promotions Manager for Seven. 

No evidence in answer was received.  At the hearing, the opponent sought leave to file further evidence in the form of another declaration by Mr Jenetsky dated 21 October 2002.  The new declaration provided further ratings data.  I admitted the declaration into evidence.

The hearing was held before me, as delegate of the Registrar of Trade Marks, in Sydney on 23 October 2002.  There was no appearance by the applicant.  Mr Spiro Pappas of Chrysiliou Law appeared on behalf of Seven.

Grounds of Opposition and Findings

In its original Notice, Seven relied on some nine grounds of opposition.  However, at the hearing, the grounds were reduced to those relying on ss.43, 58, 60 and 42(b).  I will deal with each of those in turn.

Section 43
Section 43 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.

Section 43 has been considered in a number of cases involving Australian television shows.  These include the Trade Mark Office decisions in Amalgamated Television Services Pty Ltd v Pickard & Ors 48 IPR 133 (the Summer Bay case) and Amalgamated Television Services Pty Ltd v Clissold 52 IPR 207 (the Home and Away case).

Summer Bay, Home and Away and the present case have a number of points in common.  Each involved the use of expressions which were in some way used in fictional Australian television shows.  In Summer Bay and Home and Away, the relevant television show was "Home and Away".  The location of the show was a fictional location known as Summer Bay".  In the present case, the expression "All Saints" is the name of the fictional television show broadcast by Seven, as well as the name of the fictional hospital upon which the series is based. 

In the Summer Bay case, the opponent successfully opposed an application for the trade mark "Summer Bay" for goods in class 21 (china including cups, saucers, plates, mugs, vases, ornaments) and class 25 (t-shirts, caps, sweatshirts, swimwear, sand shoes, clothing, dresses, pants).  In s.43 terms, the opposition was successful on the basis that the primary Australian signification of the words "Summer Bay" were as the name of the fictional location in the "Home and Away" series.  Importantly, the applicants did not argue that the words "Summer Bay" had any significance in Australia other than the invented geographical setting for the television series.

In the Home and Away case, the applicant sought to register the words "Home and Away" for dentrifices, soaps, perfumery, essential oils, cosmetics and hair lotions in class 3.  In s.43 terms, the ground of opposition was made out.  The Hearing Officer found that because the opponent had been sufficiently involved in the merchandising of a wide range of goods bearing the trade mark "Home and Away" in relation to its television show to date, that the public might expect it to further develop its merchandising in other goods, including those sought by the applicant.  Again, the Hearing Officer found that the words in question were very well known as the title of the successful and long-running television series.

In the present case, I am satisfied, on the basis of evidence presented by Mr Jenetsky relating to ratings, awards and press coverage, that the television program "All Saints" is well known in Australia.  However, and unlike the expression "Home and Away", this is not the only or primary signification that the words have in Australia.  "All Saints" has prominent religious significations in Australia, particularly in relation to churches, schools and religious days.  This may even have been a factor in the selection of the title in the sense that there are many hospitals and hospices in Australia run by religious organisations.  The name "All Saints" has also, until recently, had some currency in Australia as the name a popular music group from the United Kingdom.
Because of these alternative significations, and the lack of any evidence showing that the expression "All Saints" in its television program guise is any more widely known or recognised than the other significations, I am not satisfied that the opponent has established that, consumers, when presented with the expression "All Saints" when used as a trade mark will necessarily link it to the television show. 

Secondly, there is no evidence before me that the opponent has engaged in merchandising in the same way as the opponent had in the Home and Away case.  In the present case, the only evidence of merchandising is contained in paragraphs 12 and 13 of Mr Jenetsky's 12 March 2002 declaration.  Mr Jenetsky states in paragraph 12 that his company "has used the trade mark ALL SAINTS on merchandise including clothing, t-shirts, caps, stationery, stickers, pens and posters since the television series ALL SAINTS commenced in 1998".  In paragraph 13, Mr Jenetsky refers to Exhibit 3, which is a cloth cap bearing the words "All Saints" and a stylised "AS" logo.  However, Mr Jenetsky does not indicate whether these goods have been sold or distributed as "promotional giveaways".  Nor is there any indication of how many have been manufactured and distributed.  In the absence of such information, I am not satisfied that the opponent has shown that an expectation might arise in the minds of the public that goods bearing the words "All Saints" are in fact merchandising of the television show of the same name.  There is nothing before me which establishes that past practices of Seven would give rise to a public expectation that Seven was engaging in merchandising.  Even if I were to accept that consumers today generally recognise the concept of character merchandising, I am not satisfied that this is sufficient where there are strong, alternative significations of the expression, as there are in the present case.  Again, evidence of consumers' perceptions or impressions are important.

I am not satisfied that the s.43 ground has been made out. 

Section 58
Section 58 provides

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

The opponent asserts that it is the owner of the trade mark "All Saints" in Australia.  To support its position, the opponent again relies on paragraph 12 of Mr Jenetsky's declaration, to which I have already referred.  The opponent submits that paragraph 12 establishes that the opponent:

• has used the same trade mark as the applied for trade mark;

• has used the trade mark on the same kind of thing; and

• used the trade mark before the priority date of the application, 10 May 2000.

If the evidence establishes these elements, then the tests laid down in cases such as Re Hicks' Trade Mark (1897) 22 VLR 636, Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 and Settef SpA v Riv-oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 would be satisfied and the ground would be made out.

However, I am not satisfied that the evidence does establish these elements. 

Firstly, there is nothing before me to indicate that the opponent has used the "All Saints" name as a trade mark on or for clothing.  Section 17 provides that a trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.  In other words, a trade mark is a badge of origin or indicator of source used in trade.  The only specific example of use before me is Exhibit 3 - the hat to which I have already referred - which carries the "All Saints" and "AS" logos on the front, an embroided Channel 7 logo at the back, and a swing-tag which includes the words "Walkin' Promotions".  In my opinion, only the Channel 7 logo and "Walkin' Promotions" operate as indicators of source.  The "All Saints" and "AS" logos merely refer to and advertise the relevant televisions series.  They are not used to give the impression that the entity behind the television series has manufactured or sold the article in question. 

Secondly, even if the "All Saints" and "AS" logos had operated as badges of origin, there is nothing before me to indicate that the hats and the logos, were ever used in the course of retail trade.  There is no evidence that the hats have been sold.  Rather, they may have been given away as promotional items.  This is insufficient, of itself, to satisfy the requirement that the opponent was the first trade user of the applied-for trade mark in Australia. Put another way, there is no evidence before me that the opponent has engaged in the trade of clothing manufacture or supply, or that they have applied their trade mark as a badge of origin of those goods in the pursuit of that activity.

Finally, in assessing the single piece of evidence and the weight to be given to it, I am guided by the decision in Re "Nodoz" Trade Mark [1962] RPC 1 which provides that where a single use of a mark is relied upon, the evidence needs to be strong and convincing. I am not satisfied that the evidence here possesses either of those attributes.

Accordingly, I am not satisfied that the opponent is the first user of the applied for trade mark in Australia.  The s.58 ground cannot therefore, be made out on this basis.  There being no other reason to determine that the applicant is not the owner of the trade mark, I dismiss this ground.

Section 60
Section 60 provides:

Trade mark similar to trade mark that has acquired  a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

The relevant tests for determining substantial identity, deceptive similarity and the likelihood of deception or confusion are the well known ones laid down in cases such as Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd[1], Australian Woollen Mills Ltd v F.S. Walton & Co Ltd[2], Pianotist Co's Appn[3], and Woolworths v Registrar of Trade Marks[4].

[1] (1963) 109 CLR 407, 415

[2] (1937) 58 CLR 641 at 658

[3] (1906) 23 RPC 774

[4] 45 IPR 411

The opponent submits that the term "All Saints" is a trade mark used by it in relation to the relevant television series, and that in this guise, it enjoys a significant reputation.  On the basis of the evidence, and to the extent that the reputation is limited to television programs, I agree with this assessment.  I am also satisfied that the applied for trade mark is identical to the name of Seven's television show and that the name operates as a trade mark in relation to that show.

I must therefore determine whether, as a result of the reputation held by Seven for its ALL SAINTS trade mark, use of the applied for trade mark on the applied for goods would be likely to cause deception or confusion. 

Seven asserts that deception or confusion would arise as the result of the public's awareness of the concept of character and trade mark merchandising.  However, I have already noted that I am not satisfied, in circumstances where the relevant expression has a number of significations, and there is an absence of actual evidence of consumers' perceptions or impressions, that much reliance can be placed on this line of argument.  There is nothing before me which indicates that consumers, when presented with the expression "All Saints" on clothing will be caused to wonder whether Seven is the source or licensor of the merchandise.  The position is even more doubtful when one takes into account the lack of any evidence of merchandising of the kind referred to in the Home and Away case. 

Accordingly, I am not satisfied that Seven's reputation in the expression "All Saints" as it relates to the television show is sufficient to displace the general use and knowledge of the expression "All Saints" in its religious, educational and musical guises.  I do not believe that consumers are reasonably likely to be deceived or confused in the sense that they will be caused to wonder whether the product is in some way connected with, manufactured by, or approved by Seven.  Rather, they will wonder as to whether the products are associated with one or more of the religious, educational, musical or television guises.  Such general confusion lessens the likelihood that the deception or confusion will occur specifically as the result Seven's reputation.  Therefore, s.60(b) which requires that deception or confusion must arise because of the specific reputation of the opponent's trade mark, is not, in my opinion, satisfied. 

In terms of the opponent's alternative argument, that it holds a reputation in the trade mark in relation to clothing, for the reasons I have provided in relation to the s.58 ground, I am not satisfied that the opponent has used the expression "All Saints" as a trade mark on clothing.  It may have arranged for the manufacture and distribution of clothing which carries the "All Saints" name and logo, but this is not trade mark use.  Therefore, the opponent could not have garnered the requisite reputation in a trade mark applied to clothing.

As a result, the opponent has failed to make out this ground and I dismiss it.

Section 42

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.

Seven relies on s.42(b) - use contrary to law.

According to the decision of Madgwick J in Advantage Rent-A-Car[5], the Registrar is obliged to determine whether use of the trade mark would, rather than could, amount to a contravention of the law.  The law which can be taken into account is not limited to the Trade Marks Act 1995, but could conceivably include such laws as passing off, the Commonwealth Trade Practices Act 1974 and the various State based Fair Trading Acts.  Seven has relied on each of these additional laws.

[5] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] 52 IPR 24

For the reasons I have already provided in relation to alternative significations of the expression "All Saints", I am not satisfied that use of the applied for trade mark would rather than could contravene any of the laws on which Seven relies.  The applied for trade mark is rendered in a plain, unremarkable font.  There is nothing in the mark which, on its face, gives the impression that it is related to Seven's show.  Further, it may be used in many different ways, including use to signify a school or religious trade origin.  Therefore, I cannot be satisfied that use of the trade mark would be contrary to law, and the ground is dismissed.

Conclusion and costs

I have dismissed each of the grounds relied upon at the hearing. 

The balance of the grounds referred to in the notice of opposition were not pursued at the hearing.  I dismiss each of those grounds as there is no evidence or argument to support them. 

Unless the Registrar is notified, within four weeks of the date of this decision, of an appeal, the trade mark may be registered.  If notice is received by the Registrar within the time allowed, the application should remain pending until the appeal has been determined or abandoned.

The normal course in these matters is to award costs to the winning party.  However, there has been no application for costs by the applicant, nor has the applicant taken any active part in the opposition proceedings.  In the circumstances, I direct that each party pay their own costs.

Geoff Purvis-Smith
Hearing Officer
Trade Marks Hearings
22 January 2003