Skycoaster, Inc v Fairmile Pty Limited

[1999] ATMO 77

TRADE MARKS ACT 1995

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

RE:Opposition by SKYCOASTER, INC. to the registration of trade mark applications 681129 and 681130 in the name of FAIRMILE PTY LIMITED.

Background

On 19 December 1995, Fairmile Pty Limited (the applicant) lodged the two above numbered applications, in classes 28 and 41 respectively, for the trade mark FLY COASTER under the Trade Marks Act 1955. Application 681129 claimed a specification of goods being 'amusements and amusement rides, including swing type amusement rides; parts and accessories for the aforementioned goods'. During the course of examination, this claim was amended to 'swing type amusement rides and parts and accessories therefor in this class'. The application was duly accepted under the Trade Marks Act 1995 (the Act) with this specification and advertised in the Australian Official Journal of Trade Marks (the Journal) on 13 March 1997. For application 681130, the specification at acceptance was unchanged from that originally claimed, namely 'entertainment services, including services rendered in providing amusements and amusement rides, including swing type rides'. The advertisement of this acceptance was made in the Journal of 7 November 1996. Both acceptances were opposed. The initial opponent, Sky Fun 1, Inc., assigned its rights to Skycoaster, Inc. (the opponent) during the course of these oppositions.

Although the notices of opposition were filed on 13 June 1997 (681129) and on 28 January 1997 (681130), the evidence in support was filed and served concurrently on both matters, by 23 September 1997. Thereafter the evidence in answer was concurrently filed and served for both oppositions by 22 May 1998. The same procedure followed for the evidence in reply by 23 November 1998.

From this point, unless otherwise indicated, I will treat the two opposition matters as though they were one because the issues for both are virtually identical. Neither party requested to be heard and so this opposition matter has been directed to me for decision on the material held on file in the Trade Marks Office.

To complete the picture for the background in this matter, the following details are relevant. The opponent made its own application for the trade mark SKYCOASTER, number 713965 on 30 July 1996, in a multiclass application for class 28 goods and class 41 services. Following acceptance, the present applicant unsuccessfully opposed the application. The mark is now registered. I intend to refer to my earlier decision on that matter, as the Registrar's delegate, in the course of the present decision.

The Evidence

The grounds, under the Act, identically specified in both of the notices of opposition were wide ranging and listed s.41, s.43, s.58, s.59, s.60 and s.62.

The evidence served for both matters was also identical. The evidence in support consisted of:

• a declaration dated 5 September 1997, from William Joel Kitchen, Chief Executive Officer of the opponent, with exhibits 'WJK1' to 'WJK13' inclusive (the first Kitchen declaration).

• a declaration dated 29 July 1997, from Leonard George Shaw, Director of Special Projects for Dreamworld Pty Limited at Coomera in Queensland, with exhibit 'LGS1' (the Shaw declaration).

The evidence in answer consisted of eight declarations as follows:

• a declaration dated 27 February 1998, from Allan William Holman, Director of the applicant, with exhibits 'A' to 'U' inclusive (the Holman declaration).

The remaining seven declarations were all in a standard format of 19 questions, in which declarants were encouraged to provide either a YES/NO response or a short comment. These declarants and the dates of signing their declarations were as follows: Carey Frank Court, Creative Director (7 November 1997), Paul Stephen, Foreman (3 December 1997), Jake Storey, Town Planner (21 November 1997), Paul Mjatelski, Director (11 November 1997), Gordon Haldane, Chief Executive Officer (12 January 1998), Brian Mirfin, Director (4 February 1998) and Ronald Dennis Watkins, Managing Director (9 May 1998).

The evidence in reply consisted of three declarations, namely:

• a declaration dated 10 November 1998, from William Joel Kitchen, with exhibits 'WJK14' and 'WJK15' (the second Kitchen declaration).

• a declaration dated 15 November 1998, from James Wills, Chief Operating Officer of the opponent (the Wills declaration), and

• a declaration dated 29 October 1998, from Larry Hays, former representative of the opponent (the Hays declaration).

Submissions

As I mentioned earlier, neither party requested to be heard but both provided written submissions. Dr. Mark Horsburgh, of Fisher Adams Kelly, Patent and Trade Mark attorneys represented the opponent. In his written submissions, Dr. Horsburgh directed my attention to material in relation to three sections of the Act. These were, to s.58, that the applicant is not the owner of the mark; to s.41, that the trade mark lacks the capability to distinguish the applicant's goods and services from the goods and services of other traders and to s.60, that the mark is similar to a trade mark that has acquired a reputation in Australia. In his argument concerning s.58, Dr. Horsburgh alleged that the present applicant had fraudulently adopted the FLY COASTER mark from the opponent's trading style in actual use of 'Fly SKYCOASTER'. He also emphasised the need to consider that the two applications cover quite different specifications, that is, that arguments that may be valid in relation to class 28 goods may not be appropriate in relation to class 41 services. Dr. Horsburgh also supported his contentions by reference to precedent case law (see citations in the Discussion section below) and finalised his submissions with an invitation for me to apply the Registrar's discretion to refuse the present applications, so as to ensure that any possible confusion would be avoided.

Ms Kerry Newcomb of Pizzeys represented the applicant. Ms Newcomb's written submissions claimed that all of the relevant issues for the present decision had already been examined and appropriately decided in my earlier decision, of 12 April 1999, for the present opponent's SKYCOASTER mark.

Discussion

The opponent, in its evidence and submissions, addressed opposition grounds under sections 41, 58 and 60. Correspondingly, the grounds listed under sections 43, 59 and 62 in the notice of opposition have not been supported and I find that the opposition is not successful under any of those grounds. (The earlier cross-opposition involving the SKYCOASTER mark decided issues concerning s.44 with brief comments on issues involving s.58 and s.60.)

(a) Section 41 - Trade mark not distinguishing applicant's goods or services

The opponent's argument, presented in the written submissions in relation to this ground, was based on the applicant's own evidence. Dr. Horsburgh claimed that Mr. Holman had stated, at paragraph 7 of his declaration, that the words FLY COASTER described a 'flying type ride on the Gold Coast'. On this basis, he claimed that the mark was inherently unadapted to distinguish the goods of the applicant from those of other traders.

Trade marks need not be without some suggestion as to the nature or function of the goods or services (see Macnaghten J in Eastman Photographic Material Co.'s Application (1898) 15 RPC 476 at 486 - the SOLIO case). It is true that the more the trade mark aptly describes the goods or services, or some function or quality they possess, the less inherent adaptation the mark has to distinguish those goods or services as belonging to a particular owner. The more complete test involved under s.41 has been well described by Branson J in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498, the OREGON case. In that decision Justice Branson confirms that the test set out by Kitto J in Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511 is entirely relevant. Kitto's test, at 514, indicates that 'the question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, … will think of the word and want to use it in connection with similar goods … '.

I note that the opponent has claimed that the applicant's goods or services are provided in relation to a 'flying type' ride. That is, the ride does not actually enable a patron to really 'fly' but to undergo a similar experience. The word FLY in the mark is suggestive of a function of the goods, but could not be seen to be of a level of descriptiveness of the goods that would prevent acceptance under the Act. I believe that having proprietorial rights for the mark FLY COASTER in the hands of one trader could not be seen as disadvantaging other traders in similar goods.

This being the case, I find that opposition under s.41 is not successful.

(b) Section 58 - Applicant not owner of trade mark

The relevant section of the legislation reads:

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 operation of s.58 has been discussed in several opposition matters under the present Act and found to be on all fours with opposition matters decided under s.40 of the Trade MarksAct 1955. In order to mount opposition successfully under s.58, the opponent would need to have used an identical trade mark, or virtually identical trade mark, prior to the present application. (see Re Hicks' Trade Mark (1897) 22 VLR 636 at 640). Dr. Horsburgh, in his written submissions, conceded that the adoption of a foreign mark that has not been used in Australia is permissible, but further stated that fraudulent adoption of a mark that has been used in Australia would offend the provisions of s.58. Further to this discussion, as established in Hicks' Trade Mark, supra, at 640, the opponent would also need to show that it had used its trade mark on 'the same kind of thing' prior to the applicant filing its application.

This final requirement presents no dispute in the immediate case because both the applicant and the opponent are involved in identical pursuits in respect of both their goods in class 28 and their services in class 41.

The decision that I am required to make here is whether the applicant's FLY COASTER mark is identical or virtually identical to the opponent's SKYCOASTER mark. This assessment has already been given consideration in my decision of 12 April 1999, which dealt with the present opponent's SKYCOASTER mark. There, I found the marks to be neither substantially identical nor deceptively similar.

The only new element for consideration here is the opponent's further allegation that the applicant has fraudulently adopted the mark after viewing the opponent's signage for 'Fly SKYCOASTER' on advertising material. Dr. Horsburgh alleged that, because of this, the applicant could not legitimately claim to be the owner of the mark, as it was not the author, and referred to the test set out in Shell Co. (Aust.) Ltd v Rohm and Haas Co. (1949) 78 CLR 601 at 627-628. Dr. Horsburgh's comments give a possible explanation of the formation of the applicant's mark. However, many other equally plausible explanations are also possible that would not impugn any form of fraud or sharp business practice by the applicant. I do not believe that the opponent's allegation has been sufficiently demonstrated to be true in the present case for me to accept that fraudulent dealings are involved. This is particularly so given the nature of the goods. I can imagine a handful of -COASTER marks that could have ready appeal to applicants, because of the ideas engendered by the marks, such as SWINGCOASTER, SOARCOASTER, SAILCOASTER or GLIDECOASTER, to mention some possible constructions that come to mind. I do not think it unlikely that, in the face of SKYCOASTER, another person could independently formulate FLY COASTER for these goods.

In my earlier decision, I considered the various definitions of -coaster and concluded that 'these uses in connection with various modes of travel, indicate that the word (or part word) has a generally understood meaning of some form of either relaxing or exciting movement (or transport) by means of either a vehicle or, at least by some form of apparatus'. Dr. Horsburgh claimed that this view was misplaced and that '-coaster' could not be applied as descriptive of this type of ride simply because it was a well-known part word in describing the 'roller-coaster' ride. In my earlier decision, I outlined the breadth of application of the words (or part words) -coaster and -coasting as found in the Oxford English Dictionary, 2^nd Edition (OED). The OED linked the words to sailing in a boat or ship, sliding on a sled or toboggan, riding a bicycle or tricycle, driving a motor vehicle and riding the popular amusement park roller coaster. It was on this basis that I commented that the word (or part word) '-coaster' could apply to a variety of fair ground or amusement part rides.

Dr. Horsburgh also directed my attention to Karrimor International Ltd v Ho Choong Fun (t/a Ah Hwa Trading Co) 16 IPR 171 under the Trade Marks Act (Singapore) (Cap 332, 1985 Ed) to support his argument that the marks do not have to be identical for the application of s.58.

In that Singapore High Court expungement judgement, the respondent was found to be not the true owner of the registered KARRINOR mark, in the face of the opponent's evidence relating to it's KARRIMOR mark. I distinguish the present circumstances from that situation on several grounds. These differences include that KARRINOR and KARRIMOR are coined words with no ordinary English dictionary meanings, whereas some meaningful ideas can be attributed to SKYCOASTER and FLY COASTER. Three other differences, I believe, are also present. These include that the Singapore judgement was made in another jurisdiction under a different Act; the applicant for expungement provided convincing evidence of the use of its mark prior to registration of the respondent's mark and, lastly, that both the visual and phonetic similarities of KARRINOR and KARRIMOR are much closer than the present marks.

If the opponent wishes to pursue the issue of fraudulent adoption of the mark, or of some other claim made by the applicant that it believes to be false, then other legal channels may be more appropriate. In this regard, the comment on patent registration matters (at paragraph 6 of the first Kitchen declaration) falls outside my jurisdiction for decision of matters under the Trade Marks Act 1995.

As I have found the marks SKYCOASTER and FLY COASTER not to be substantially identical, I find that the opposition in terms of s.58 is not successful.

(c) Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

Section 60 reads:

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 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.

Thus, three legs must be fulfilled for an opponent to be successful under s.60. These are: (i) the applicant's and opponent's marks must be substantially identical or deceptively similar, (ii) the opponent's mark must have acquired a reputation in Australia prior to the application date and (iii) use of the applicant's mark would cause deception or confusion in the face of the opponent's reputation.

In my earlier decision I found that the marks SKYCOASTER and FLY COASTER were neither substantially identical nor deceptively similar for considerations under s.44 involving both goods and services in classes 28 and 41.

In considering whether marks are deceptively similar in terms of an opposition matter under s.60, different circumstances may need to be considered. I can readily imagine situations whereby two trade marks may not be considered deceptively similar in terms of fair and reasonable notional use, as per the test under s.44 as set out in Smith Hayden & Co. Ltd'sApplication 63 RPC 97 at 101, but a different conclusion is reached when the actual use of the opponent's mark is unveiled by means of evidence. A possible example of this could involve a device mark that is used so that it is actually known in the market place in a way that could not reasonably be anticipated in theory.

Using a hypothetical example to illustrate - a manufacturer of beer markets two products, lager and ale, under respective trade marks, each being a representation of a cricketer playing two quite different cricket shots - a cover drive and a leg glance. There are no words in either mark. A second manufacturer of beer applies to register the words COVER DRIVE. The examiner of trade marks either does not locate the device marks, or, if he or she does, decides in terms of s.44 of the Act that they are not deceptively similar to the word mark. The application for the word mark COVER DRIVE is accepted for beer. The owner of the device marks opposes the acceptance and provides proof that its goods are verbally requested as COVER DRIVE beer (for lager) and LEG GLANCE beer (for ale). The device marks are actually known in the marketplace as COVER DRIVE and LEG GLANCE, and have a sizeable reputation. The opposition succeeds under s.60 that, in those particular circumstances, the marks are deceptively similar because, given the reputation of the device marks, use of the words COVER DRIVE would be likely to deceive or cause confusion.

In the present circumstances, however, I cannot find any material that could change the opinion that I had previously concluded - that the marks SKYCOASTER and FLY COASTER are not substantially identical nor are they deceptively similar.

In addition, to be successful under s.60, the opponent must provide evidence of its reputation in the mark. This reputation must be of sufficient import to be able to create some level of deception or confusion in the minds of prospective purchasers and to produce this effect 'amongst a substantial number of persons' (see Evershed J in Smith Hayden, supra, at 101). The evidence shows that, in the Australian market, only those persons who had some interest in purchasing the opponent's goods would have direct knowledge of the opponent's trade mark, prior to the present application date. The opponent has declared that some sales brochures had been distributed to Australian companies from November 1993. In addition, the opponent had advertised by use of the Internet. It is not clear whether this was in relation to the opponent's goods, or in relation to the provision of amusement park services. However, in either event no detail is provided to indicate that any significant reputation in Australia can be attached to this activity. As I mentioned in my earlier decision, because of the expense of the goods involved (in excess of $1m to purchase and set up the tethered swinging amusement), it would be expected that any purchasers of such goods would proceed with due caution. Purchasers of these goods could, therefore, be expected to have even greater reason to be sufficiently alert, to avoid possible confusion of SKYCOASTER and FLY COASTER, if offers were presented to purchase the similar goods under both marks.

The opponent claimed that there was evidence of deception or confusion having occurred and described in exhibit WJK8 attached to the first Kitchen declaration. This exhibit is a copy of a letter written by Tony Baker, General Manager of Sea World, to William Kitchen. Mr. Kitchen had apparently invited Mr. Baker to consider purchasing the opponent's SKYCOASTER ride in previous correspondence. Mr. Baker, in his letter, pointed out that there was 'already one of this type in operation on the Gold Coast.' I do not believe this letter shows a confusion of the marks SKYCOASTER and FLY COASTER so much as it does an observation that two similar attractions could not be profitable in such close proximity.

As far as the class 41 services are concerned (of the provision of tethered swinging amusement park rides), I believe that if any reputation existed for the opponent's SKYCOASTER rides in Australia as at the date of application, in the relevant market, that it was extremely small. In this instance, the relevant market for such services would encompass much of the general community. I do not believe that this group would, in any general sense, be aware of the opponent's trade mark as at the application date of 19 December 1995.

Given these details, I do not believe that the opponent's reputation in Australia was sufficient, as at 19 December 1995, to produce deception or confusion in a substantial number of persons. I believe that the opponent had made some use of its mark prior to that date but not sufficient to produce the required reputation. I have also found that the marks SKYCOASTER and FLY COASTER are neither substantially identical nor deceptively similar. For both of these reasons, the opposition in terms of s.60 is not successful.

Conclusion

From the foregoing, I have found that the opposition fails on all three grounds discussed in the opponent's written submissions, under s.41, s.58 and s.60. As the other grounds listed in the notice of opposition were not further developed, I find that the opposition is not successful overall. Therefore, as a delegate of the Registrar, and subject to an appeal from this decision, I dismiss this opposition matter. I award costs to the applicant, Fairmile Pty Limited.

Don Nancarrow
Acting Hearing Officer
29 July 1999.