Southern Equity Pty Ltd v Trevor Judd

TRADE MARKS ACT 1995

DECISION OF A DEPUTY REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by SOUTHERN EQUITY PTY LTD to registration of trade mark application 1097021 – OPERATION ETTAMOGAH- filed in the name of Trevor Judd.

deputy registrar: Michael Arblaster

Representation: Opponent: Florence McFarlane and Jennifer McEwan of EKM Patent
Applicant: Ian Tannahill of Ahearn Fox

Decision:
2009 ATMO 101
1097021 - Section 52 opposition - opposition successful under section 44 – application refused - costs awarded against applicant.

Background

Trade mark application number 1097021 was filed by Mr Trevor Judd, on 2 February 2006, for the plain words OPERATION ETTAMOGAH. The application was advertised accepted for possible registration, in the Australian Official Journal of Trade Marks dated 25 May 2006, for the following services in classes 35 and 37 of the Nice Classification of Goods and Services:
Class: 35 Retail, wholesale and distribution services;
Class: 37Installation, maintenance and repair services;
On 25 August 2006 Southern Equity Pty Ltd lodged a notice of opposition to registration of the trade mark. The Notice stipulated grounds under S41, 42, 43, 44, 58, 59, 60 & 61 of the Trade Marks Act 1995 (“the Act”) as the basis for the Opposition.
The onus lies with the opponent to establish one or more of its grounds on the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006); (2006) 70 IPR 599
Evidence in support and evidence in answer were duly served and filed. No evidence in reply was lodged. By letter, of 28 August 2008, the opponent requested a hearing. On 24 March 2009 the opposition came before Mr Iain Thompson, a delegate of the Registrar of Trade Marks, at a hearing in Melbourne. Mr Thompson subsequently became ill and unable to issue the decision. The matter fell to me as Deputy Registrar. I reviewed the evidence, together with the submissions, and after listening to a digital recording of the proceedings, decided that it was necessary neither to convene a further hearing nor to seek additional submissions.
At hearing, Ms Florence McFarlane and Ms Jennifer McEwan both of EKM Patent represented the opponent. Mr Ian Tannahill of Ahearn Fox, appearing by telephone, represented the applicant.
At the commencement of the hearing, the applicant sought to amend the specification of services. An amendment was subsequently filed at the Office and given effect. The application as it now stands covers the following services in classes 35 and 37 of the Nice Classification of Goods and Services:
Class: 35Retail, wholesale and distribution of refrigerated water coolers and parts and accessories therefore;
Class: 37Installation, maintenance and repair of refrigerated water coolers and parts and accessories therefore;
Evidence
The evidence comprises:
Evidence in Support
- Statutory declaration of Jennifer McEwan dated 26 February 2007
- Declaration of Lee O’Brien declared 23 April 2007; (the second O’Brien declaration).
Evidence in Answer
- Declaration by Trevor Judd dated 13 December 2007
Evidence in Reply
- No evidence in reply was lodged
Evidence in Support
The first O’Brien declaration was filed in support of two of the opponent’s applications (1088580 and 1115385) for the trade marks ETTAMOGAH, and ETTAMOGAH ACCOMODATION, CABINS & CARAVANS. Those trade marks are now registered. The Ettamogah brand, including those marks and the ETTAMOGAH PUB suite of marks form the basis for the opponent’s claim to prior rights in this matter.
The first O’Brien declaration also attests to the history and use of the ETTAMOGAH and ETTAMOGAH PUB trade marks. Suffice to say that the marks have their genesis in a cartoon strip created by the late Mr Ken Maynard. Mr Maynard is on record as saying that the names ‘Ettamogah Pub’ and ‘Ettamogah Mob’ were inspired by the name of a local waterhole near Albury that he used to frequent as a child. There appears to be no modern record of such a place and in any case it was a very small localised geographic feature, as the opponent points out “not even a hamlet”.
The Ettamogah Pub was a key feature of the cartoon and, in 1987, a Mr Lindsay Cooper built a replica of the Pub, under license, at Table Top near Albury, NSW. A second replica was built in Queensland and in the early 1990’s copyright and other intellectual property rights were assigned to the opponent. In 1998 the opponent acquired Mr Cooper’s two Pubs. By December 2006 the first O’Brien declaration shows that the opponent owned six Ettamogah Pubs.
In 1994, Albury Council re-named part of the Table Top region, the site of the first Pub, calling it Ettamogah. It is now a small settlement of some 2,000 people sharing the postcode 2640 with 16 other settlements of various sizes including Albury.
The evidence shows significant growth in the ETTAMOGAH/ETTAMOGAH PUB brand with an increase in the number of outlets in the chain and with substantial turnover and advertising in association with the trade mark between the years 1994 to 2006. It is sufficient to indicate that this is considerable with turnover amounting to many tens of millions and advertising expenditure in the order of many millions of dollars. The evidence does not provide a breakdown of the revenue/expenditure between products or between the two trade marks. However, it is clear that the primary business is the opponent’s chain of restaurants and pubs. It is also apparent that the opponent has diversified its business with a range of other products including wine, beer, mineral water and an array of merchandising products. The evidence also adduces plans for the development of theme parks, animated cartoon series, clothing, footwear and toys. The majority of advertising relates to ETTAMOGAH PUB but a number of advertisements, labels and menus focus on the broader family of Ettamogah concepts including Ettamogah airlines, and Ettamogah solus. The evidence also reveals a deliberate marketing strategy based around the concept of the Ettamogah Mob, the people from and frequenting the chain of restaurants and pubs.
The second O’Brien declaration refers to the email address [email protected] through which the opponent manages both the expansion of its franchising of the Ettamogah Pubs and the coordination and management of this business. This includes a wide range of activities from the construction of new facilities, licensing arrangements, employment and management of staff and interaction with suppliers. This email address has been in use since about 2002.
That declaration also attests to the sale of bottled spring water under the Ettamogah Pub trade mark, although no details are given as to the volume or length of sales or the financial figures in association with this activity.
The second O’Brien declaration indicates that the translation of Ettamogah is ‘Let’s have a drink’.
Evidence in answer
Mr Judd’s declaration indicates that he chose the name ETTAMOGAH OPERATIONS because Ettamogah was an indigenous Australian word. Mr Judd attests to the fact that his wife is a native American and that it was her idea that he use an indigenous Australian name. He goes on to say that this, together with the appropriateness of the meaning of Ettamogah was the basis for his choice.
The declaration includes sales and promotion figures for Mr Judd’s services associated with the trade mark. These appear to have been restricted to an area around Ipswich in Qld and neither sales nor promotion figures are significant.
Mr Judd’s declaration also refers to the township of Ettamogah and to the use of the name by third parties. He posits this as a basis for arguing that Ettamogah is a term in common use and that it should therefore receive little weight as a distinctive term in a comparison between marks. However, the principal example of this use, provided by Mr Judd is the Ettamogah Pub on the Sunshine Coast, which operates under license from the opponent.
Discussion
Before considering the grounds of opposition it is convenient to make a number of observations and findings. Although Ettamogah is a geographic place in NSW it is a very narrowly defined location near Albury, with a small population and no reason to believe that it is associated with particular goods or services, other than that of tourism based around the opponent’s establishment. Moreover, I am satisfied that both the cartoon and the replica pubs had acquired significant reputation well before the region of Table-Top was renamed Ettamogah. No direct evidence was submitted on what motivated Council to make this change. However, in light of the reputation acquired by the Pub prior to the name change and the Council’s references to the Pub in tourism literature immediately after the name change, I consider it highly likely that it was precisely this reputation that lead Council to rename the area in recognition of its main tourist attraction.
The evidence and submissions raise an issue about how Mr Judd chose the name “Operation Ettamogah” for his business in 2004, and what knowledge he had of the opponent or its trade mark. Mr Judd indicates that his choice of OPERATION ETTAMOGAH arose out of its origins as an indigenous word and because of the appropriateness of its meaning. However, he provides no details about where he first came across the name or how he ascertained its meaning. It is clear that he knows the town near Albury, although it is unclear when he became aware of this. It is also clear from the evidence that he is aware of the Ettamogah Pub on the Gold Coast and that he believed that this was not connected to the opponent.
In their applications, the Opponent nominated the phrase “Lets have a drink” as the translation of the word Ettamogah. In his two applications, Mr Judd nominates the phrase “a place of good drink” as the translation. However, Mr O’Brien, for the opponent, declared that the phrase “A place of good drink” was a phrase coined by the opponent’s marketing department and included on their marketing literature, press releases and web-site, as a slogan associated with the Ettamogah Pub, as early as 2002. The opponent also asserts that the “the only realistic way Mr. Judd could have come across the name Ettamogah in 2004, was either that he was familiar with Mr Maynard’s cartoon or because he was familiar with the opponent’s Ettamogah Pubs.”
Mr Judd does not respond to the opponent’s evidence on this point, nor does he provide any more details about where he came across the name or the proposed translation. In the absence of any clear statement from Mr Judd, about where he came across the name and his suggested translation of it, I think it likely that whether he was conscious of it at the time or not, his choice was influenced by seeing the opponent’s trade mark and the associated slogan.
Grounds of opposition
At the hearing, Ms McFarlane indicated that, of the grounds listed in the notice of opposition, the only grounds which would be pressed were those set out in sections 42, 43, 44, and 60 of the Act. For completeness, I find that none of the other grounds listed in the notice have been made out.
Section 44
Section 44 relevantly provides that an application must be rejected if the trade mark applied for is substantially identical or deceptively similar to an earlier registered trade mark in respect of similar or closely related goods or services.
To establish a ground under section 44 three elements are necessary:
a)That the trade marks relied upon by the opponent, have earlier priority dates than that of the opposed trade mark;
b)That the opposed trade mark is substantially identical or deceptively similar to the opponent’s mark(s); and
c)That the services for which registration of the opposed trade mark is sought are similar or closely related to the goods or services of the opponent’s trade marks.
In support of their claim, the opponent refers to seven registrations for the trade mark ETTAMOGAH PUB (454030, 454031, 454032, 454033, 454035, 454037, 454039, 454043 all filed in 1986 for a wide range of goods and services). They also refer to their registration (1088580) for the trade mark ETTAMOGAH filed in December 2005 for goods and services in classes 3, 4, 5, 9, 11, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 30, 31, 32, 33, 35, 41 and 43.
It is not in dispute that the opponent’s marks have an earlier priority date and the opponent concedes that their trade marks are not substantially identical to the opposed trade marks.
In addressing the question of whether the trade marks are deceptively similar, Mr Tannahill argued that the Registrar’s previous view should also be considered. He pointed to the fact that the opposed mark was expressly accepted by the delegate in the face of the opponent’s prior registrations. Moreover, revocation of acceptance was considered and dismissed on the basis that, as a geographical term, ETTAMOGAH “could largely be discounted in the comparative process”. Mr Tannahill also drew the delegate’s attention to the fact that the applicant owned another registered trade mark OPERATION ETTAMOGAH, and that the Registrar had accepted the trade mark ETTAMOGAH in the face of this prior registration (both in respect of goods in class 11). Mr Tannahill submitted that in separate consideration of both marks (OPERATION ETTAMOGAH and ETTAMOGAH) it was clear that the Registrar considered that the two marks were not deceptively similar. I accept that the applicant has cause to be somewhat confused about the Registrar’s position, however, the question before me is not what the Registrar has previously held but whether in applying the relevant tests I am satisfied that the marks are deceptively similar.
Section 10 of the Act establishes the definition of ‘deceptively similar’:
10Definition 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.
The tests are well established[2]. The assessment must be made at the date of application of the opposed mark. The marks are not to be compared side by side but rather assessed on the basis of the overall impression left in the mind of potential consumers[3] (bearing in mind the concept of imperfect recollection[4]). Although a real tangible danger of confusion is required, and all circumstances are to be taken into account, it is enough if the result is that a number of persons are given cause to wonder about the origin of the goods, if ordinary persons entertain a doubt or there is a real likelihood that consumers will believe that the products emanate from the same source.
[2] Pianotist Company’s Application (1906) 23 RPC 774 at 777; Australian Woollen Mills Limited v. F.S. Walton & Company Limited (1937) 58 CLR 641); Southern Cross Refrigerating Company v. Toowoomba Foundry Pty. Limited (1954) 91 CLR 592; Berlei Hestia Industries Limited v. The Bali Company Inc. (19730 129 CLR 353 and Registrar of Trade Marks v. Woolworths Limited (1999) AIPC 91-499 ,697-8
[3] Australian Woollen Mills Limited v. F.S. Walton & Co. Limited (1937) 58 C.L.R. 641 at 658
[4] Rysta Limited’s Application (1943) 60 RPC 87 at 108
What is required then is a comparison of the respective marks to ascertain the overall impression left on the recollection (which may be imperfect) of persons of ordinary intelligence. The comparisons which must be made, then, are between ETTAMOGAH and OPERATION ETTAMOGAH and between ETTAMOGAH PUB and OPERATION ETTAMOGAH.
Ms McFarlane for the opponent made reference to the decision in the ‘Vaporub case’[5] in which his lordship indicates, at 105-106, that:
“a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features.”
The dispute in that case was whether the expression ‘Karsote Vapour Rub’ infringed the registered trade mark VICKS VAPORUB SALVE. Their lordships found that it did because the word ‘Karsote’ prefaced to ‘vapour rub’ “is quite insufficient itself to dissolve any confusion that was bound to arise from associating the appellant’s goods with a word so distinctive as ‘Vaporub’.” Although this was an infringement case, it deals directly with the question of the likelihood of confusion when faced with the use by a trader of an essential feature of another’s trade mark. Ms McFarlane submitted that “it is plain that the word Ettamogah in the oponent’s trade mark ETTAMOGAH PUB, is the essential feature of the mark” and, using Lord Radcliffe’s words to describe the current situation, that “the presence of the word ‘operation’ in the opposed trade mark is insufficient to dissolve the confusion that is bound to arise from associating the applicant’s services with a word so distinctive as Ettamogah”.
[5] De Cordova v Vick Chemical Co (1951) 68 RPC 103.
In addressing this issue, Mr Tannahill for the applicant argued that ETTAMOGAH was not an essential element of the opposed mark and should be given little weight in a comparison of marks. He contended that the central idea of OPERATION ETTAMOGAH was of a business venture or activity characterised by military style precision. Secondly, he argued that the impression left by the opponent’s trade mark ETTAMOGAH was of an aboriginal name for a geographic location.
Both parties submitted that “Operation” added a sense of the military style or approach to the activities of the business or added a sense of direction and purpose. The applicant argued moreover, that because this came first in the subject phrase, this was sufficient to create a completely different idea or identity in the two marks. He pointed to ‘Operation’ in the context of ‘Operation Desert Storm”, and submitted that ‘Desert Storm’ was meaningless without it. It is, he submitted, the word ‘Operation’ that creates the overall impression. The same is true for OPERATION ETTAMOGAH: the word ‘Operation’ is significant and cannot be dismissed.
I agree with Mr Tannahill, that ‘Operation’ does add to the impression left by the phrase. However, in their respective situations ‘Desert Storm’ and ‘Ettamogah’ each provide the context or field of activity of the operation. ‘Operation’ identifies the type of activity or some characteristic of it, whereas ‘Desert Storm’ and ‘Ettamogah’ answer the question ‘Which activity?’. They are, other considerations aside, of at least equal significance in identifying the activity that is being described or its origins.
Mr Tanahill’s second argument goes to the question of these other considerations. He contends that in the context of OPERATION ETTAMOGAH, ‘Ettamogah’ is a very weak term. It is, he argues, a geographical reference and should not be imbued with distinctive significance. He pointed out that Ettamogah is a small township outside Albury, that it is very common in Australia to use indigenous terms as place names and that the overall impression left by the phrase was of an indigenous word being used as a place name. Members of the buying public are likely, he argued, to believe that the goods or services come from the geographical location of Ettamogah.
It would be easy at this point to stray into a discussion of the merits of the opponent’s trade mark ETTAMOGAH, seen through the prism of S41 of the Act. Mr Tanahill was careful not to do this. Rather, he emphasised that the use of this indigenous geographic reference meant that the overall impression left by the applicant’s mark was of a military operation.
Ms McFarlane argued, that the word Ettamogah leaves a distinctive impression, that it is only barely a term with geographic significance, and that any such significance that it does have, has arisen solely because of the opponent and it’s predecessors in title of the Ettamogah intellectual property.

I agree with Ms McFarlane that Ettamogah has, at most, only a very slight geographic tinge and that there is no real likelihood of consumers believing that the applicant’s goods and services originate there. Moreover, quite apart from the secondary meaning associated with the registered mark, in light of the evidence, I consider that the primary meaning associated with the word Ettamogah in the mind of consumers is much more likely to be Mr Maynard’s cartoon than the small village bearing the same name.
The authorities[6] indicate that words which are invented, or at least not in common use in the language, create a much greater possibility of deception and confusion. While not ‘invented’, the word Ettamogah is not in common use. It is quite an unusual word, and has a characteristic, almost idiosyncratic ring to it. As such, it must contribute a significant element to the recollection of both OPERATION ETTAMOGAH and ETTAMOGAH PUB.
[6] See Eutectic, 52 RPC 136 at p153.
While the authorities[7] indicate that non-distinctive matter may be given less weight when comparing marks, they also indicate that even disclaimed material cannot be ignored in such a comparison. The issue will be what is the overall impression created by the two marks. A similar issue arises in relation to geographic elements. They cannot be simply ignored, an assessment must be made of their weight and of their contribution to the overall impression left by the mark. As outlined above, I consider that Ettamogah has, at most, only a very slight geographic tinge, and that this has arisen precisely because of the success and reputation of the Ettamogah/Ettamogah Pub brand. I have also indicated above that the dominant feature of both OPERATION ETTAMOGAH and ETTAMOGAH PUB is the word Ettamogah. Although one is an establishment and the other an activity, the common, most memorable and characteristic element of both is the word they share in common. I consider it highly likely that consumers will entertain some doubt or have cause to wonder whether goods and services offered under the respective brands originate from the same source. I consider that this is true even where some care and attention is paid to the purchase (such as in the installation of refrigerated water coolers). I conclude then that the marks ETTAMOGAH PUB and OPERATION ETTAMOGAH are deceptively similar.
[7] Kleenoff 51 RPC 129 at p1444; Ustikon 44 RPC 412 at p425
It follows then that the opposed mark OPERATION ETTAMOGAH is also deceptively similar to the opponent’s mark ETTAMOGAH. It is perhaps necessary however, to reiterate the principle that the element Ettamogah cannot simply be dismissed or even be significantly discounted because of its supposed geographic signification[8]. ETTAMOGAH, solus, is a registered trade mark. As such, there is some presumptive validity that the term has a secondary meaning – that it does serve to distinguish the owner’s goods or services. Accordingly, it must carry substantial weight in any comparison in which the term is used within another mark. This is true even where there is a strong primary meaning. It would hold true, if for instance, a town with the significance of Albury had been registered solus for the relevant goods or services. This is simply another way of saying that use of the essential feature of a trade mark by someone other than the rightful owner, is “bound to” cause confusion.[9] Where this is the sole feature of the registered mark it is self evident that it is the essential feature.[10]
[8] This would be true even if Ettamogah had more significance as a geographical place than it does.
[9] De Cordova v Vick Chemical Co (1951) 68 RPC 103.
[10] Nevertheless see Polo Textile Industries Pty Ltd v The Domestic Textile Corporation Pty Ltd (1993) 26 IPR 246.
I am required then to make a comparison between OPERATION ETTAMOGAH in its entirety and ETTAMOGAH, giving weight to the essential features. As a registered term it is clear that Ettamogah is an essential feature of the mark, since it is the whole of the mark. While the sharing of a common element is not in itself enough to render two marks deceptively similar, the feature shared in common between these two marks is the sole feature of one and the dominant feature of the other. The impression left by both is dominated by the highly idiosyncratic term Ettamogah. I consider therefore, that the two marks ETTAMOGAH and OPERATION ETTAMOGAH are also deceptively similar.
The third element to be established by the opponent under S44 is that the goods and services are similar or closely related.
As amended, the specification of the opposed application is as follows:
Class: 35 Retail, wholesale and distribution of refrigerated water coolers and parts and accessories therefore;
Class: 37 Installation, maintenance and repair of refrigerated water coolers and parts and accessories therefore;”
The opponent’s Ettamogah registration 1088580 covers:
Goods in class: 11 including relevantly apparatus for refrigerating, … water supply and sanitary purposes;
Services in Class: 35 including “retail services”;
In deciding whether the goods and services are of the same description or closely related it is the notional use that either party could properly make of the trade mark that must be considered.[11]
[11] See for example Registrar of Trade marks V Woolworths Limited 45 IPR 411
Clearly, “retail services” broadly specified in class 35, include the retail services sought by the applicant. In respect of the class 35 claims they are therefore similar services.
Similarly, the opponent’s ETTAMOGAH registration which specifies inter-alia “apparatus for refrigerating” and for “water supply”, could include refrigerated water coolers or at the very least could include goods of the same description as refrigerated water coolers. Furthermore, in Woolworths, Justice French indicated that “services which provide for the installation, operation, maintenance or repair of goods are likely to be closely related to them.”[12] I see nothing in the case before me to justify moving away from this principle.
[12] Woolworths supra at 424
The opponent is the owner of a prior registered trade mark, (1088580; ETTAMOGAH), which is deceptively similar to the opposed mark, and is registered for goods and services which are either of the same description or closely related to the applicant’s services. Accordingly, I find that the ground under S44 is made out.
An opponent’s success in a single ground of opposition is sufficient to prevent registration of a trade mark. Accordingly I do not need to consider the grounds under S42, 43 or 60, although these would be available to the opponent in the event of an appeal from my decision.
Decision
Subsection 55(1) of the Act provides:
(1)     Unless the proceedings are discontinued or dismissed, 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.
I am satisfied that the opponent has met the onus upon it in terms of the ground of opposition under section 44. Accordingly, I refuse to register trade mark application number 1097021.
Costs
I see no reason to depart from the principle that costs follow the event. I therefore award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant, Mr Trevor Judd.
Michael Arblaster
Deputy Registrar
Trade Marks
4 December 2009

[2009] ATMO 101

4 December 2009

Key Legal Topics

Areas of Law

Commercial Law

Intellectual Property

Legal Concepts

Costs

Remedies

deputy registrar:	Michael Arblaster
Representation:	Opponent: Florence McFarlane and Jennifer McEwan of EKM Patent Applicant: Ian Tannahill of Ahearn Fox
Decision:	2009 ATMO 101 1097021 - Section 52 opposition - opposition successful under section 44 – application refused - costs awarded against applicant.