South Australian Totalizator Agency Board v Club Gaming Systems Pty Ltd

[2000] ATMO 47

TRADE MARKS ACT 1995

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

Re:Opposition by SOUTH AUSTRALIAN TOTALIZATOR AGENCY BOARD to registration of trade mark application 767863(9,16,25,41) - Keno Racing logo- filed in the name of CLUB GAMING SYSTEMS PTY LIMITED.

Background

Trade mark application 767863 was filed on 17 July 1998.  It is an application by Club Gaming Systems Pty Limited ("the Applicant") for the registration of the trade mark shown below:

On 14 January 1999 the application was advertised accepted in respect of the following goods and services:

Class: 9

Signs in this class; LED (light emitting diode) display boards; slot and gaming machines; computers; computer hardware; computer software and peripheral equipment; apparatus for the recording, transmission, reproduction of data; television equipment

Class: 16 

Printed matter; stationery; instructional and teaching material (except apparatus); entry forms and coupons, tickets, explanatory notes, prize lists, paper coasters,           stickers and labels

Class: 25 

Clothing, headgear, footwear

Class: 41 

Gaming services, including the operation of games of chance, numbers, lotto, keno; entertainment services in this class relating to gaming

On 14 April 1999, notice of opposition was filed by South Australian Totalizator Agency Board ("the Opponent").  Evidence in support of the opposition was served on 9 July 1999.  No evidence in answer was served, and the Opponent applied to be heard in the matter.

The opposition now comes before me for decision, on the basis of the evidence on file.

The evidence

The evidence in support of the opposition consists of two statutory declarations.  The first ("the Frolow declaration") is a statutory declaration by Alexander Frolow, the Group Manager, Administration, of the Opponent. This declaration provides information about the nature and activities of the Opponent.  The second ("the Tan declaration") is a statutory declaration by Zing Hai Tan, Director of Tan Research Pty Ltd, a market research company.  This concerns a survey undertaken in South Australia.

the Frolow declaration

This shows that the Opponent was created by the Racing Act (SA) 1976. It also states, however, that the Opponent has been the exclusive provider of off-course horse betting in South Australia since 1967. Under the terms of the Act, the Opponent also provides other kinds of totalizator betting, including betting on football results. Its services are provided throughout South Australia via its own 80 agencies, and also through 306 "pub" agencies ("PubTABs").  These agencies deliver over-the-counter services.  The Opponent also provides phone- and computer-based betting services ("PhoneBet" and "WinBet") which are accessible from anywhere in Australia.  Financial figures for 1995 to 1998 are provided and show very substantial earnings.  Expenditure on advertising, promotion and sponsorship has increased significantly since 1996, and is very substantial.  Many marketing activities are listed.

In brief, the declaration shows that the Opponent is a major provider of betting activities in South Australia.

Since 1994, in all its agencies, advertising brochures and marketing activities, the Opponent has been using its TAB logo in conjunction with a frieze which consists of "groups of three silhouettes each of racing greyhounds, horses and harnesses" (para 15).  A copy and examples of this frieze in use are provided.

the Tan declaration

Having first set out the declarant's credentials, this declaration describes the survey his company undertook in June 1999 on behalf of the Opponent.  Details of the methodology used, and the reasons for its adoption, are given in the declaration.  Annexed to the declaration are the version of the Applicant's trade mark shown to those interviewed in the survey (ZHT-1) and a copy of the questionnaire used (ZHT-2).  The full report produced by Tan Research following the survey is also annexed.  In the final paragraph, Mr Tan states that "Overall the Survey results indicate that there is a strong potential for the Keno Racing trade mark to be seen as being connected to SATAB [the Opponent], more so than with any other organisation."

Discussion

The grounds of opposition

Six grounds were listed in the notice of opposition.  I will deal with each ground of opposition, but will vary the order, as follows:

Applicant not intending to use the trade mark

In its ground of opposition, the Opponent states that :

"The Applicant cannot, and does not intend to, use the trade mark throughout the whole of Australia, and in particular South Australia, in relation to the goods and/or services specified in the application."

This does not nominate a section, but it appears to be based on the provisions of Section 59. This section, in so far as it relates to the present opposition, reads as follows:

59. The registration of a trade mark may be opposed on the ground that the Applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia;
.......

in relation to the goods and/or services specified in the application.

Note:  For Applicant see section 6.

I have not had the benefit of submissions, but it appears to me that this claim is perhaps based on the status of the Opponent under the Racing Act (SA) 1976. However, while this may have some bearing on the legitimacy of certain potential uses of the trade mark in South Australia in terms of section 42 of the Trade Marks Act 1995, it does not have any bearing on the Applicant's intentions concerning the use of its trade mark as at the time of filing under section 59 of that Act. 

Unless an opponent can make out a prima facie case under s 59, the Applicant does not have to prove use or intention to use to counter this ground of opposition.  The making of the application is sufficient, in general and in the present instance, to indicate a bona fide intention to use the trade mark.

The section 59 ground is not made out.

Trade mark use contrary to law

The notice of opposition includes the following ground:

"The use of the trade mark in South Australia would be contrary to law."

The relevant provision of the Trade Marks Act 1995, in so far as it applies here, reads as follows:

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

(a) ....
(b) its use would be contrary to law.

As mentioned previously, I have not had the benefit of any submissions setting out just how the status of the Opponent under the Racing Act (SA) 1976 may make it illegitimate for any other body to supply the goods and services here applied for in South Australia.

Having read through the Act, I can see that it defines the role and powers and regulates the activities of the Opponent. However, it is not at all clear to me that any of the provisions of the Racing Act (SA) 1976 may make it "contrary to law" for the Applicant to supply its goods and services under the proposed trade mark in South Australia.

The ground of opposition under section 42 is not made out.

Trade mark likely to deceive or cause confusion

The ground of opposition states:

"The use of the trade mark would be likely to deceive or cause confusion, because of some connotation that the trade mark has."

The relevant provision is as follows:

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.

The operation of section 43 does not depend upon the existence of a conflicting trade mark.  The purpose of this section is to prevent the registration of trade marks which, in respect of the particular goods and services at issue, carry a meaning which would be likely to deceive or confuse people purchasing or otherwise dealing in those particular goods and services. 

The word 'connotation', as observed by the Registrar's delegate in Down to Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632, denotes a secondary meaning a word has developed. There is, so far as I can see, no secondary meaning either in the words or in the signs contained in this trade mark. In the absence of some secondary meaning, there is no connotation likely to deceive or confuse.

The ground based on section 43 is not made out.

Trade mark not distinguishing Applicant's goods or services

The ground of opposition states:

The trade mark is not capable of distinguishing the Applicant's goods or services in respect of which the trade mark is sought to be registered from the goods or services of other persons.

The assessment of capacity to distinguish is dealt with by Section 41 of the Act, which in so far as it is relevant, reads as follows:

41.(1)

....

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the Applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:  For goods of a person and services of a person see section 6.

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

.

The application of this provision has been set out very clearly in the decision of Branson, J in Blount v Registrar of Trade Marks.[1] I will not rehearse that decision here, because I consider that the examiner's approach followed it: the trade mark as a whole has sufficient inherent adaptation to distinguish the Applicant's goods and services from those of other traders; there being no question in the Registrar's mind about this, there is no ground for rejection under this section. 

[1] 40 IPR 498

This ground of opposition is not substantiated in any way in the evidence.  Looking at the trade mark as a whole, as I am obliged to do[2],  I find no reason to depart from the examiner's original judgement as to its inherent capacity to distinguish the goods and services of the applicant from those of other traders.

[2] Diamond T. Motor Co.'s Appn (1921) 38 R.P.C. 373 (Ch.D.)

The section 41 ground is not made out.

Identical etc. trade marks

The ground of opposition states:

"The Applicant's trade mark is substantially identical with, or deceptively similar to, a trade mark or trade marks whose registration in respect of similar or closely related goods or services is being sought by another person, and the priority date for the registration of the Applicant's trade mark is not earlier than the priority date for the registration of the other trade mark or trade marks in respect of similar or closely related goods or services."

This falls within the scope of s 44 of the Trade Marks Act 1995.

For this provision to apply as a ground of opposition, there must actually be another trade mark and another person must be seeking to register that other trade mark.  The Opponent provides no statement in its evidence in support about another trade mark.

As it happens, the Opponent is in fact seeking registration, under application 787853, of the words keno racing. However, that application has a priority date of 10 March 1999. It post-dates the present application which was filed on 17 July 1998. Therefore application 787853 does not constitute a barrier to the registration of the present application in terms of section 44 and is not relevant.

The section 44 ground of opposition is not made out.

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

The last of the grounds of opposition claimed by the Opponent states:

The trade mark is substantially identical with, or deceptively similar to, a trade mark that, before the priority date of the first-mentioned trade mark in respect of those goods and/or services, had acquired a reputation in Australia, and in particular South Australia, and, 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.

This equates to s60 of the Trade Marks Act 1995.

In order to support a ground under section 60, the Opponent needs to be able to indicate a substantially identical or deceptively similar trade mark which, prior to the relevant date of 17 July 1998 (the application date), had an established reputation. Once that trade mark has been identified, the Opponent needs to demonstrate the likelihood of deception or confusion caused as a result of the existence of that mark.

I find some difficulty here.  The Opponent's evidence does not specifically refer to any trade mark.  It does, however, refer to its TAB logo and to its TAB frieze.  The logo, being the letters TAB in a stylised get-up, has been in use in its present form since October 1994, but has no points of similarity whatsoever with the present trade mark.  The frieze has been in use since November 1994.  I reproduce a scanned image below:

This series of groups of three silhouettes could be, or could include, the trade mark on which a claim under s60 might be based, because one of the groups of silhouettes shows jockeys on horses. Horse-and-jockey silhouettes also feature in the Applicant's trade mark, so there is a point of similarity with part of the frieze. For convenience of comparison, I reproduce the application trade mark again below:

Because s 60 requires the existence of a trade mark, I will assume both that the frieze shown above is a trade mark, and that the group of three horse-and-rider silhouettes within that frieze is also a trade mark. I state for the record that, in my view, neither the frieze as a whole, nor the group of three horse-and-rider silhouettes alone, is substantially identical or deceptively similar to the opposed trade mark. In each case, the differences significantly outweigh the similarities.

The Tan declaration shows that when the present trade mark, rendered in bright colours, was shown to a random sample of people over 18 in South Australia, a significant number of those persons assumed that it was associated with the Opponent. I accept that the Opponent has demonstrated, through the survey it commissioned, that there may be deception or confusion, if the trade mark is used in South Australia.  However, whether it is simply the monopolistic status of the Opponent that leads to this, or whether it is its reputation in respect of a particular trade mark that is its basis, does not emerge from the evidence.

The Opponent has not discharged its responsibility to show how deception or confusion arises in terms of s60 of the Trade Marks Act 1995.

The s60 ground of opposition is not made out.

Decision

I find the opposition has failed.  Accordingly, I direct that the application may proceed to registration after 30 days from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that the registration shall not occur until the appeal has been decided or discontinued.

Arminel Ryan
Senior Examiner

19 May 2000