St Andrews Links Ltd v John Charles Morton

TRADE MARKS ACT 1995

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

Re:Opposition by St Andrews Links Ltd to protection of International Registration Designating Australia 1166298(9) (International registration 914035) - ST ANDREWS LOGOFORM - in the name of John Charles Morton.

Delegate:

Hearing Officer: Iain Thompson

Representation:

Opponent: Louise Emmett of Madderns, patent & trade mark attorneys.

Holder: Was not represented and did not file written submissions

Decision:

2010 ATMO 100

Regulation 17A.29 opposition – section 60 – reputation of opponent’s trade mark –deceptive similarity – use of holder’s trade mark likely to confuse or deceive.

Background

These are proceedings under the Trade Marks Act 1995 (‘the Act’) and regulations thereto.
In this matter John Charles Morton (‘the holder’) of Johnstone, United Kingdom, has requested protection in Australia for an international registration, under the Madrid Protocol, designating Australia (‘the IRDA’). Current details of the IRDA are shown below:

Application No: 1166298

IR No: 914035

Priority Date: 9 June 2006

Goods:Class 9: Computers, computer hardware, modems, data processing apparatus, computer software for database management, sound recordings, magnetic tapes, audio and video cassettes, compact discs, video films, video recording.

Trade Mark:

(‘the opposed trade mark’)

Following examination of the IRDA, it was advertised as accepted for possible protection in the Australian Official Journal of Trade Marks on 7 August 2008.
On 5 February 2009, after seeking and receiving an extension of time in which to do so, St Andrews Links Ltd (‘the opponent’) of St Andrews, Fife, in the United Kingdom, filed Notice of Opposition to the registration of the trade mark. As the holder did not then have an address for service in Australia, the Notice was not served on the holder but the International Bureau was notified by the Trade Marks Office.
The opponent has filed evidence in support of its opposition to the protection of the IRDA – this evidence comprises a statutory declaration by Danny Campbell and another by Sylvie C Stulic. As the holder had by then nominated an address for service in Australia, the evidence was served on the holder at that address.
The holder has not served and filed evidence in answer.
The matter came before me for a hearing of the issues in Canberra on 19 August 2010. Louise Emmett of Madderns, patent and trade mark attorneys represented the opponent by telephone conference. The holder was not represented at the hearing and did not file written submissions.

The Evidence

Before detailing the evidence, I will record my general knowledge that St Andrews is a small city in Fife on the east coast of Scotland which is well-known for its golf and for its university (and possibly for its castle and cathedral which are both now ruinous). Both golf and the university have a long association with the city of St Andrews which was named for the Saint who is the patron Saint of Scotland.
Danny Campbell is Director of Retail and Licensing of the opponent. He gives evidence about the activities of the opponent as the marketing and licensing vehicle used by the St Andrews Links Trust (‘the Trust’). Concerning the Trust, Mr Campbell states:
St Andrews Links Trust is the body responsible for the management of the world famous St Andrews Links, comprising seven public golf courses including The Old Course which is the oldest golf course in the world. The Trust was formed by the St Andrews Links Order Confirmation Act 1974 (‘the Links Act’), a private Act of Parliament. The Links Act is the last in a succession of Acts of Parliament dating back to 1894.
Mr Campbell also explains the connection between the links at St Andrews and the game of golf:
Golf has been played at St Andrews Links golf course for over six hundred years and the course is widely regarded as "the home of golf”. The course consists of seven public golf courses, the most famous of which is the "Old Course" which is the oldest golf course in the world and is also generally considered to be one of the finest golf courses in the world. Now shown to me and marked as Exhibit DC I are media clips featuring the Old Course and demonstrating its reputation.
Concerning the long history of the game of golf at the course at St Andrews, and the use of the sign St Andrews in relation to golf, Mr Campbell states:
The trade marks ST ANDREWS and ST ANDREWS LINKS have been used in association with the St Andrews Links golf course since the year 1123, when the land that the courses of St Andrews Links reside was given to the people of St Andrews. The ST ANDREWS LINKS Logo, as depicted below, has been used in relation to the St Andrews Links golf course since at least as early as 1992. The trade marks ST ANDREWS and ST ANDREWS LINKS shall herein be referred to together the "Opponent's Trade Marks".
I record that the above trade mark features an image of St Andrew bearing two crossed staves which are held so as to align with the shafts of two golf clubs and to echo the St Andrews cross, or saltire, which is closely associated with Scotland and appears both on the Scottish national flag and British Union Jack as representing Scotland. The garland is associated with victors or leadership.
Mr Campbell attests to the marketing and merchandise of goods under the above trade mark and the trade mark St Andrews. At paragraph 8 of his declaration he affirms:
Now shown to me and marked as Exhibit DC4 are extracts from the official website for St Andrews Links golf course ( which prominently displays the Opponent's Trade Marks. Official merchandise displaying the Opponent's Trade Marks includes golf balls, divot tools, gift sets and other gift items, menswear, ladieswear, headwear, golf gloves, golf umbrellas, towels, tees, books, course guides and scorecards. This website is accessible in Australia and merchandise may be purchased via the website for delivery to Australia.
Since 2003, the Opponent has licensed use of the Opponent's Trade Marks to Electronic Arts Inc, a well known computer game company. The Opponent's Trade Marks feature in games produced by Electronic Arts Inc which allow the player to play a virtual game of golf on the "Old Course" at St Andrews Links golf course. Now shown to me and marked as Exhibit DC5 are screen shots featuring the Opponent's Trade Marks in the following computer games produced by Electronic Arts Inc:
a)           "Tiger Woods PGA Tour 03"
b)           "Tiger Woods PGA Tour 04"
c)           "Tiger Woods PGA Tour 05"
d)           "Tiger Woods PGA Tour 06"
e)           "Tiger Woods PGA Tour 07"
f)            "Tiger Woods PGA Tour 08"
g)           "Tiger Woods PGA Tour 09"

(Collectively, ‘the computer game’)

The declaration by Ms Stulic (who is the litigation paralegal at Electronic Arts, Inc) corroborates Mr Campbell’s evidence concerning the licensing by Electronic Arts Inc of the St Andrews trade marks for the computer game.
Confidential Australian revenue details of the computer game are provided and these are substantial.
The opponent thus explicitly claims a reputation for its trade mark in Australia has arisen in three ways:
·     Via the association of its St Andrews trade marks with the game of golf at its links in the place, St Andrews in Scotland.
·     By sales in Australia of the computer game which features its trade mark.
·     Because of sales from its Internet website which is accessible from Australia.
I consider that there is another way in which reputation of the opponent’s trade mark may have arisen in Australia. That is through the public habituation to the high degree of marketing of many sports and the locations at which sports are played. I will further discuss this below.

Submissions

Ms Emmett’s submissions focused on sections 60, 42 and 43 of the Act. For the sake of convenience, I will decide this matter under section 60 as the opposition should quite clearly succeed under that section.

Section 60

As the IRDA was filed prior to the commencement of the Trade Marks Amendment Act 2006, the following iteration of section 60 of the Act applies:
Trade mark similar to trade mark that has acquired a reputation in Australia
60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
Note 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.
Section 60 of the Act thus requires three enquiries:
·     The reputation in Austalia of the trade mark(s) upon which the opponent relies.
·     Whether the trade marks are, as a minimum, deceptively similar.
·     And, whether because of that reputation the use of the opposed trade mark would confuse or deceive.
The assessment of the reputation of a trade mark was discussed by Kenny J in McCormick & Company Inc v McCormick [2000] FCA 1335, where she said, at 81:
What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?
So the question is whether the opponent’s St Andrew’s trade marks had a reputation in Australia before 9 June 2006, the filing date of the opposed IRDA.
The opponent, as has been discussed, above, regards this reputation as arising in three ways – marketing through its website on the Internet, through the knowledge of golfers of the association between golf and St Andrews, and because of the marketing of the computer game.
There is no evidence that the opponent’s Internet site is directed to Australians, has sold merchandise to Australians, or even that any Australians have visited the website. The evidence of the opponent’s Internet activities is thus insufficient to establish that the trade mark has a reputation in Australia.
The marketing of the computer game in Australia has, as I have observed, led to substantial sales of goods which include, inter alia, the trade mark St Andrews. I consider that the use led to the trade mark St Andrews possessing a reputation in Australia in relation to computer games before 9 June 2006. It is arguable that the use of the words St Andrews on the computer game is not trade mark use. However, the words have been licensed as a trade mark by a third party, so are seen as such by both the licensor and the licensee and I have no argument or evidence from the holder that the use of the words are not use as a trade mark. I will therefore accept this use as trade mark use.
Additionally, this forum is not a Court of Law and the decision maker is entitled to make use of his common general knowledge. This decision maker is not a player of golf and has barely held a golf club, does not watch golfing tournaments on television, and is unacquainted with even the names of most of the leading exponents of the game of golf. However, even while suffering from these deficiencies, I am aware of the intense marketing under trade marks involved in all facets surrounding the game of golf and the fact that St Andrews is widely held to be the birthplace of the game. This knowledge must naturally be greater amongst those who actively play and follow golf within Australia.
I am also generally aware that certain places are closely associated with particular sports and that the marketing of goods under trade marks incorporating the names of those places creates an expectation that the goods are officially endorsed by the body running the sports at those places.
I consider that, in relation to goods or services directly related to golf, there can be little doubt that the opponent’s trade mark St. Andrews, had a reputation in Australia amongst golfers before 9 June 2006. Most golfers would be aware, in a general sense, that the links at St Andrews might be regarded as the birthplace of golf. Most golfers would also be aware of the marketing of golf and golf related goods and services – most local golf clubs of any size at which Australians play golf would have a range of its own merchandise such as coasters, beer coolers, tees, caps, jackets or shirts which incorporate the name of the club as a trade mark. Most golfers would also be aware of the marketing of video recordings or games which feature famous golf tournaments.
In Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 at 436 I observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the `esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals' and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.
There are some sporting venues which have such an immediate association with the sport which occurs in that location that any ensuing trade mark that features the name of that location has very little work to do in establishing a reputation in relation to goods or services which are normally associated with that sport. Examples such as Wimbledon (tennis or show jumping), Roland Garros (tennis), Circuit de Catalunya (formula one racing) or Epsom (horse racing) come readily to mind. The names are already affixed in the minds of the Australian public as associated with a sport and when used as a trade mark by its lawful owner is readily recognized by the public as both performing a trade mark function when used in relation to merchandising goods, particularly those which are normally associated with that sport. The reputations of such trade marks travel to Australia with relative ease – some overseas trade marks are so well known that the reputation arises also in Australia: Conagra Inc v Mccain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193, (1992) AIPC 90-892.
I am satisfied that one such location and trade mark is St Andrews, in relation to goods or services normally associated with the sport of golf. Merchandise normally associated with golf includes golfing paraphernalia, clothing, caps, videos, computer games, CDs and audio recordings such as those which are included in the specification of goods of the opposed application for protection.
I therefore conclude that the word mark St Andrews on which the opponent relies has a reputation in Australia.
There is no evidence before me which suggests that the device trade mark which features Saint Andrew and crossed golf clubs on which the opponent relies has a reputation in Australia. The opponent’s device trade mark does not, therefore, form a part of my considerations of deceptive similarity, below.
In considering whether the trade marks are deceptive similar, this is (as Ms Emmett submitted) to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658
The assessment has been otherwise described in the following terms by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020 at paragraph 50:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

And, finally, the context of the comparison should be a part of the consideration. This contextual comparison was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J, as he then was, said:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.
The comparison of trade marks for deceptive similarity is very much one of impression. If words form a major part of the trade mark, and are how the goods sold under the trade mark are to be requested – and how people are going to refer to the trade mark, the words should be afforded weight in the comparison: see E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 at para 69, albeit discussing substantial identity. The words are how goods are likely to be requested by reference to the opposed trade mark and are what the trade mark is likely to be called by the public.
The appearance of the crossed golf clubs within the opposed trade mark serves to reinforce the similarity due to the close association of the words St Andrews (and hence any ensuing trade mark) with the game of golf and St Andrews Links. The crossed golf clubs also tend to set the context of the comparison as they strongly suggest that the goods nominated under the opposed IRDA relate to the game of golf.
The crossed golf clubs within the opposed trade mark thus suggest that the goods in respect of which protection of the opposed trade mark is sought are related to golf – either games connected with golf, or even possibly teaching aids for golfers. Such goods are notionally included within the goods in respect of which protection is sought. It is inevitable, I consider, that if the opposed trade mark was used on such goods, there would be an expectation on the part of the purchaser because of the reputation of the trade mark St Andrews that the goods were marketed or licensed by the opponent or under its aegis.
I consider that the word mark St Andrews on which the opponent relies is deceptively similar to the opposed trade mark.
The opponent has established its opposition under section 60 of the Act.

Decision

I refuse protection to application 1166298.

Costs

The opponent, having been successful, is entitled to its costs at the official scale which I award against the holder.

Hearing Officer

Trade Marks Hearings

8 October 2010

[2010] ATMO 100

8 October 2010

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