Sony Pictures Television Inc v Springboard 2000 Enterprises Inc, DBA Springboard Enterprises Inc
[2022] ATMO 111
•7 July 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Sony Pictures Television Inc to registration of trade mark application numbers 2015137 (Figurative) and 2015138 DOLPHIN TANK - class 41 - in the name of Springboard 2000 Enterprises Inc, DBA Springboard Enterprises Inc
Delegate: | M. Cooper |
Representation: | Opponent: Banki Haddock Fiora Applicant: K&L Gates |
Decision: | 2022 ATMO 111 Trade Marks Act 1995 (Cth) – opposition under section 52 – s 42(b), s 44 and s 60 grounds – s 60 ground established – registration refused |
Background
This matter concerns oppositions by Sony Pictures Television, (‘the Opponent’), under s 52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade marks 2015137 and 2015138 (‘Trade Marks’) detailed below in the name of Springboard 2000 Enterprises Inc, DBA Springboard Enterprises Inc (‘the Applicant’):
Application no: 2015137
Filing Date: 12 December 2018
Trade Mark: (‘Logo mark’)
Specification of Services:
Class 41: Educational services, namely, seminars and programs in the fields of developing women entrepreneurs in high growth businesses; personal coaching services in the field of developing women entrepreneurs in high growth businesses.
Application 2015138
Filing Date: 11 June 2019
Trade Mark: DOLPHIN TANK (‘Word mark’)
Specification of Services
Class 41: Educational services, namely, seminars and programs in the fields of developing women entrepreneurs in high growth businesses; personal coaching services in the field of developing women entrepreneurs in high growth businesses (‘the Services’)
The Trade Marks were examined and trade mark 2015137 was advertised on 13 September 2019 in the Australian Official Journal of Trade Marks. Trade mark 2015138 was advertised on 12 December 2019.
Relevant documents were filed as below:
Trade Mark: | 2015137 | 2015138 |
| Notice of Intention to Oppose (‘NIO’) filed | 12 November 2019 | 12 February 2020 |
| Statement of Grounds and Particulars (‘SGP’) filed | 11 December 2019 | 12 March 2020 |
| Notice of Intention to Defend (‘NID’) filed | 26 February 2020 | 14 May 2020 |
On 11 May 2021 the Opponent requested a hearing for both Trade Marks. I heard the matter by teleconference on 6 April 2022 as a delegate of the Registrar of Trade Marks. The Opponent was represented by Alison McGinn and Harerta Woldermariam of Banki Haddock Fiora. Chris Round and Adam Dimasi of K&L Gates appeared for the Applicant.
Evidence
In respect of trade mark 2015137:
Ø Evidence in Support comprising two declarations made by Cheryl Lynch, the Opponent’s Executive Vice President, Head of Business Affairs and Scripted Format, dated 27 May 2020 (‘Lynch 1’), with Annexures A-N and confidential Annexure M and, following the grant of an extension of time, dated 17 August 2020 with Annexure A and seven audio mp3 files (‘Lynch 2’).
Ø Evidence in Answer comprising a declaration made by Ruiye Rong, the Applicant’s Head of Operations, dated 18 November 2020 and including Annexures CBS-1 to CBS-12 (‘Rong’).
Ø Evidence in Reply being a further declaration of Cheryl Lynch including Annexure A (‘Lynch 4’) dated 21 January 2021.
In respect of trade mark 2015138:
Ø Evidence in Support comprising a declaration made by Cheryl Lynch dated 17 August 2020 with Annexures A to O, including confidential Annexure N and 7 audio files (‘Lynch 3’).
Ø Evidence in Answer as above (i.e., Rong).
Ø Evidence in Reply being Lynch 4.
Combined written submissions were also filed by both parties.
Evidence summary
The Opponent is described as a company which ‘produces, distributes and delivers media and entertainment programming in every genre around the world and… is one of the entertainment industry’s leading content providers on a global scale.’ SHARK TANK is the name of the highly successful business-related reality television series which the Opponent has licensed worldwide. In Australia the Opponent has licensed the series to Network 10 on which it was broadcast from 2015 to 2018. Associated videos and articles were available on 10play as at May 2020. In the programme, ‘the Sharks give real-world business advice and educate and mentor the entrepreneurs in relation to their specific businesses, but also on general business topics. The mentoring and business advice is not just provided as part of the television show, but also by way of separate videos made by the Sharks that are available for anyone to access through the Network Ten website’.[1] The Opponent also notes its SHARK TANK eSchool program which it developed with Adelaide University and is offered at high schools in SA and NSW, as well as the SHARK TANK ENTERPRENUER app, launched in 2018 to educate and mentor entrepreneurs. In relation to the Applicant, the Opponent observes that it first used the Trade Mark in 2016, almost two years after the first TV series was aired in Australia. The services are said to ‘mirror’ those offered by the Opponent and were adopted ‘intentionally for the purpose of creating a connection in the minds of consumers with the Opponent’s Marks and the Opponent’s use of the Opponent’s Marks,’ noting that the Applicant has not explained its adoption of the word ‘tank’ and the silhouette of a dolphin in its logo mark. The Opponent contends there are several parallels between what the Applicant offers and what the Opponent offers and suggests this is a clear attempt by the Applicant to appear to Australians as a brand extension of the SHARK TANK franchise and draw a connection with it.[2] It further notes that there is little evidence of overseas use of the Trade Marks, and none in Australia, before the priority date.
[1] Lynch 1, paragraph 15.
[2] Opponent’s submissions, para 6 of submissions referring to Lynch 4 annexure A.
The Applicant describes itself as a non-profit organisation which ‘provides networking and training resources to entrepreneurial companies led by women.’ As described in its brochure[3] ‘Springboard’s mission is to accelerate the growth of entrepreneurial companies led by women through access to essential resources and a global community of experts.’ Its services are said to ‘take the form of seminars known as “Dolphin Tank Sessions” where selected companies deliver a short pitch to a live audience, including a number of expert panellists, and present a specific “ask” addressing a particular challenge or unique opportunity they are facing. Solutions, connections and strategies aimed at assisting the presenting company’s growth are then crowd-sourced from the seminar audience.’ The Trade Marks are said to have been first used in the USA in August 2008 and have been used in 14 countries. The Applicant notes the Logo mark and the Word mark were registered in the USA in 2018 and neither was opposed by the Opponent. Copies of various presentations using the Trade Marks are annexed. The first use of the Word mark in Australia is claimed to be in August 2016.
[3] Rong, Annexure CBS-12.
Onus
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[4] In its written submissions the Opponent pressed ss 44, 60 and 42(b) grounds of opposition for both Trade Marks.
Consideration and reasons
[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26].
Section 60
Section 60 provides as follows:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first -mentioned trade mark in respect of those goods or services, 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: For priority date see section 12.
Therefore, to establish the s 60 ground of opposition, an opponent must demonstrate that, at the relevant date, there was another trade mark that had acquired a reputation in Australia and because of that reputation, use of the trade mark sought to be registered would be likely to deceive or cause confusion. The priority date for trade mark 2015137 is 12 December 2018 and 11 June 2019 for 2015138 (‘relevant dates’).
In its SGP, the Opponent particularised this ground as follows for both Trade Marks:
At the priority date of application no. 2015138 [2015137], the Opponent had a reputation in Australia in SHARK TANK as a plain word mark and in various logo formats, including but not limited to the formats shown below:
The Opponent’s reputation in SHARK TANK and the various logo formats arises from its extensive and continuous use and promotion of these trade marks internationally since 9 August 2009 and in Australia since 8 February 2015 in connection its business-related reality television series. A significant feature of the television series is the provision of business advice to entrepreneurs and educating and mentoring entrepreneurs on business related topics. The Opponent has also accrued a reputation in its SHARK TANK trade mark in relation to “educational services” and in the education space as it licences the use of its SHARK TANK trade mark to educational institutions in Australia. In light of the Opponent’s reputation in its SHARK TANK trade marks in Australia, the use of the Opposed trade mark in relation to the services specified in the application would be likely to deceive or confuse.
Relying on significant evidence of use, the Opponent maintains that the SHARK TANK Marks[5] ‘continue to gain reputation in Australia not only as a badge of origin but as a symbol of education, mentorship and business leadership.’ It submits that this reputation extends to educational services and it also relies in this regard on its brand extension activities such as its eSchool programme, its entrepreneur app which was available on App Store in 2018.[6]
[5] See marks at [13] which I also adopt when referring to them collectively.
[6] Lynch 1, Annexure G.
The Applicant does not dispute the Opponent’s reputation in its Shark Tank television programme but rejects its claim to a reputation in educational services. In any event it submits that the Opponent’s reputation is so strong that no-one is likely to be confused. The Applicant further emphasizes its clear disavowal in its materials of any association with SHARK TANK but acknowledges ‘it is a similar style of program’.[7]
[7] Applicant’s submissions, paragraph 41
Reputation
The comments of Kenny J in McCormick & Co Inc v McCormick in relation to s 60 and the measurement of reputation are relevant:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product:… This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[8] [citations omitted]
[8] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 [86].
In addition, the reputation required to be demonstrated must be one of which a considerable number of people in the relevant market would be aware.[9]
[9] Renaud Cointreau v Cordon Bleu International Ltd [2001] FCA 1170 [75].
The Opponent does not identify to which of its marks its reputation attaches however the evidence demonstrates its word mark, ‘SHARK TANK’[10] (‘the Opponent’s word mark’), has been extensively used and promoted in relation to its television series and associated activities in the period prior to the relevant dates. In addition to significant revenue, a combination of high ratings for its television series, along with extensive advertising and third party commentary in a variety of media, including social media, establishes that the Opponent’s word mark has a substantial reputation among Australian consumers as providing a vehicle (through its television series, videos and several articles in a variety of magazines by the participants and third parties) through which advice, mentoring and funding are provided to emerging entrepreneurs. The Applicant acknowledges in its submissions ‘the Opponent’s television program is iconic in Australia and its usage has entered the Australian lexicon for budding entrepreneurs pitching their wares to experienced industry veterans.’[11]
[10] Australian registration no. 1933506
[11] Applicant’s submissions, paragraph 23
Given this, I am satisfied that at the relevant dates the Opponent’s word mark, over several years of use in Australia and internationally, had, among a significant number of Australian consumers concerned with the Services, the relevant reputation in the Opponent’s word mark for the purposes of s 60(a).
Likelihood of deception or confusion
It is also necessary for the Opponent to establish that, because of the reputation of the Opponent’s word mark, notional use of the Trade Marks on the Services would be likely to deceive or cause confusion among relevant Australian consumers. As noted by the Federal Court in Rodney Jane Racing Pty Ltd v Monster Energy Company:
The test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient that consumers might wonder whether the respective goods might be connected in the course of trade… It is enough if consumers might think that the product bearing the impugned mark is a variant of, or related to, an existing brand…[12] (citations omitted).
[12] [2019] FCA 923 [84].
The assessment of the likelihood of deception or confusion under s 60 is informed by ‘the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties’.[13] The relevant comparison ‘is between the prior mark as actually used and a notional normal and fair use of the mark sought to be registered’.[14]
[13] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124 [40].
[14] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 [84].
As noted above I consider that the Opponent’s word mark has a strong reputation. While the Applicant contended that this reputation mitigated the likelihood of any confusion, on another view the stronger the reputation the more likely it is that consumers will perceive a connection.[15] The evidence does not indicate that the Opponent’s word mark is ‘notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it..’,[16] such that the risk of consumer confusion is mitigated. In relation to distinctiveness, although both words of the Opponent’s word mark are common English words, they have no direct application to the Opponent’s services and in this context I accept that it is highly distinctive and memorable. In this regard, I note the comments of Whitford J in Frigiking Trade Mark[17] that, where a distinctive mark or a highly distinctive part of a mark is used with additions in another trade mark, consumers might think that the new mark indicated the same source of origin as the old mark. Justice Whitford concluded however that the word ‘King’ incorporated in the mark ‘Frigiking’ was not a highly distinctive word and people would not be likely to believe that there was a connection between the marks FRIGIKING and THERMO-KING. Conversely, the word TANK, although a common English word, in respect of its use in relation to the Services, is distinctive. It follows it is more likely that consumers, on seeing the Trade Marks used for the Services, might wonder if they have ‘the same source of origin’ as the Opponent’s word mark.
[15] Bed Bath N' Table Pty Ltd v Liberty Procurement Co. Inc. [2017] ATMO 108 [58]; eBay Inc v Dean William Hawkins [2014] ATMO 54 [33-35].
[16] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) 45 IPR 411referred to in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 [52].
[17] [1973] RPC 739.
In relation to the degree of similarity between the marks, while I am not required to find them deceptively similar,[18] I consider their similarities tend to further increase the likelihood of confusion. Each of the marks contains two words, the second being the distinctive (in relation to the Services) ‘TANK.’ The Applicant submitted that in relation to aural similarity, the first syllable or word is generally regarded as the most important when comparing the marks. While I acknowledge this differences in the marks, there is nothing in the evidence that demonstrates one word would be emphasised over another in normal speech or that the marks’ first words are any more dominant aurally than ‘TANK’[19]. Conceptually, while ‘Dolphin’ and ‘Shark’ do not look or sound the same, considering the impact of imperfect recollection, they are similar insofar as they are sea creatures, further contributing to the likelihood of confusion in a consumer’s mind. The logo mark, of a dolphin apparently cresting a wave, simply reinforces and/or depicts the words of the mark and therefore does not diminish this risk of consumer confusion.
[18] Qantas Airways Ltd v Edwards [2016] FCA 729 [142 and 143] (‘Qantas’).
[19] See also Dodds-Streeton J comments in Tivo v Vivo International Corporation Pty Ltd. [2012] FCA 252 [163].
Overall, therefore I consider there are similarities between the Trade Marks and the Opponent’s word mark such that their use would contribute to the likelihood of consumer deception or confusion.
In relation to any nexus between the services, while it is not necessary to establish that the ‘other’ marks ‘have acquired a reputation in Australia that is specific to the goods or services which are the subject of the opposed application,’ it is accepted that ‘it is likely to be a most material consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[20] Both the Opponent’s word mark and the Trade Marks designate class 41 ‘Education’ services. As noted above, the reputation of the Opponent’s word mark resides in its provision of a program (through its television series, videos and several articles in a variety of magazines by the participants and third parties) through which advice, mentoring and funding are provided to emerging entrepreneurs. This reputation has been reinforced by the Opponent’s brand extension activities such as the SHARK TANK eSchool programme in Australia and the Entrepreneur App.The Services include the provision of ‘seminars and programs in the field of developing women entrepreneurs in high growth businesses; personal coaching services in the field of developing women entrepreneurs…’ As Lynch observes the parties’ programs ‘have almost identical goals: helping entrepreneurs refine their business strategies and gain financial support for their ventures’.[21]
[20] Qantas, op cit.
[21] Lynch 2, paragraph 7.
I am therefore satisfied that the evidence establishes a relatively strong nexus between the services insofar as both purport to cover education services, in particular, programs, financing and coaching of business entrepreneurs, with the only relevant difference being that the Services are expressly confined to women. I consider that this nexus increases the likelihood that a consumer, on encountering the Trade Marks, and especially in light of the Opponent’s other brand extension activities, might be caused to wonder whether there was a link or association between them and the Opponent’s word mark.
The Applicant maintains that its evidence demonstrates its full disclosure of its lack of association with the Opponent’s marks and therefore any risk of confusion is minimal. The Opponent contends that the Applicant ‘positions itself as a brand extension’ of SHARK TANK so as ‘to create a link in the consumer’s mind’ between it and the Opponent. The evidence tends to support this contention. Specifically, Lynch 4 attaches several annexures in which the Applicant refers to, and appears to align its services with, those delivered under the Opponent’s word mark.[22] If not designed to create a link with the Opponent’s services, these comments appear to at least acknowledge that consumers may think there is a link. As further indicated in the annexures to Lynch 4, third parties have already made that link.[23]
[22] See also, for example, in Rong annexure CBS-6, 2017 promotional material states ‘The Dolphin Tank isn’t about Sharks and Dragons or a competition for the best idea, it’s about channeling the expertise of people in the room to provide connections with advice to help entrepreneurs take the next step’; ‘Unlike the Shark Tank, the Dolphin Tank is a ‘Debbie Downer’-free zone with elite panelists only delivering “tangible actionable input” as a way to further improve participant’s pitches rather than tear them down; ‘The event was modelled after the “Shark Tank” television show during which start-up companies make pitches to entrepreneurs in search of funding.’
[23] For example, Annexure A reproduces the following: ‘The Dolphin Tank, a kinder, gentler version of ABC’s hit television show ‘Shark Tank’ …’; ‘Inspired by ABC’s Shark Tank ..’; ‘The Dolphin Tank is similar to ABC’s Shark Tank where entrepreneurs make a pitch to investors and immediately get actionable insight on their presentation in a friendly constructive way’; ‘Springboard developed the Dolphin Tank approach as an alternative to traditional pitch sessions… We’d all rather swim with dolphins than sharks’; ‘Now, as a self-professed ‘Shark Tank’ lover. I truly love learning about entrepreneurs’ ventures and hearing critical feedback from the ‘sharks’… So when I heard Springboard Enterprises was bringing Dolphin Tank to campus, I, naturally, jumped at the chance to swim with the sharks – or dolphins.’
Therefore, in assessing the notional use of the Trade Marks, the existing consumer perception of a link with the Opponent’s word mark, supports an inference that they likely will do so in the future.
The Applicant has also submitted that because the Trade Marks and the Opponent’s marks co-exist in several jurisdictions without any evidence of confusion, this supports a finding that there is no likelihood of deception or confusion if the Trade Marks are registered in Australia. Notwithstanding the evidence of overseas registrations of the Trade Marks,[24] as observed by the Opponent, there is little evidence of use of the Applicant’s marks in Australia or elsewhere in the world. Therefore the lack of confusion in the Australian market is unsurprising and I give it little weight in my assessment.
[24] Rong, paragraphs 9–11.
At the hearing the Applicant also referred to eight other trade marks on the Register which incorporate the word ‘tank’ and are in class 41, thereby, it submitted, diminishing its distinctiveness and further reducing the risk of any consumer confusion. After examining those marks, I agree with the Opponent’s submission that they are different to the Trade Marks and the Opponent’s word mark.[25] In addition, there is no evidence before me of how many or if any of these marks are in use or the extent of their use in the market. In such a context, I do not consider that the use of the TANK element represents ‘a common occurrence in the market’ such that it would tend ‘to cause purchasers to pay more attention to the other features’ of the respective trade marks[26] thereby materially reducing the likelihood of confusion.
[25] Only one of them, Squid Tank, regn no. 1294309, contains a sea creature (a squid in a tank) but it is a highly stylised cartoon-ish character and, in an overall assessment, does not support the Applicant’s submissions in this regard.
[26] Harrod’s Ltd Application (1935) 52 RPC 65 [70].
In conclusion, for the reasons discussed above, I am satisfied on balance that, because of the reputation of the Opponent’s word mark at the relevant dates, use of the Trade Marks for the Services is likely to at least cause a significant number of relevant Australian consumers concerned with the Services, to be left in doubt or caused to wonder whether it might not be the case that they are another brand extension of the Opponent’s or are otherwise associated with it or endorsed by it.
It follows that I am satisfied that the s 60 ground has been established in relation to each of the Trade Marks.
Given that the Opponent has established the s 60 ground of opposition in relation to all of the Services, there is no requirement for me to consider the remaining grounds particularised in the SGPs. In the event of an appeal to this decision, it will be open to the Opponent to additionally pursue those grounds and others available under the Act.
Decision
Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, 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.
Subsection (3) does not apply to these proceedings. Accordingly, as I am satisfied that the s 60 ground of opposition has been established, I refuse to register trade mark applications 2015137 and 2015138.
Costs
Both parties sought costs. As the Opponent was the successful party, I award costs against the Applicant in respect of trade mark 2015137 under s 221 of the Act in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth). In respect of trade mark number 2015138 I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd[27].
[27] [2001] ATMO 78.
Mary-Ann Cooper
Hearing Officer
Delegate of the Registrar of Trade Marks
7 July 2022
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