Star Television Productions Limited v Star Entertainment Group Limited
[2019] ATMO 163
•13 November 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Star Television Productions Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by Star Entertainment Group Limited to remove trade mark number 859666 (classes 16, 38, 41 and 42) – STAR with star device - in the name of Star Television Productions Limited
Delegate: | Adrian Richards |
Representation: | Opponent: Gabriella Rubagotti of Counsel Applicant: Ben Gardiner of Counsel, instructed by Verdi Guy of King & Wood Mallesons |
Decision: | 2019 ATMO 163 Trade Marks Act 1995 (Cth) – application under section 92 – no use of the trade mark by the registered owner – authorised use not demonstrated – discretion to allow the trade mark to remain on the register not exercised |
Background
These reasons revisit an issue that has gained some prominence in recent judgments concerning use of a trade mark.[1] In particular, the type of relationship between the registered owner of a trade mark and the purported user of that trade mark that will properly fall within the meaning of authorised use as described in s 8 of the Trade Marks Act 1995 (Cth) (‘Act’).[2]
[1] Particularly the judgments of the Full Court of the Federal Court in Lodestar Anstalt v Campari America LLC (2016) 244 FCR 557 and Trident Seafoods Corp v Trident Foods Pty Ltd (2019) 369 ALR 367.
[2] Trade Marks Act 1995 (Cth) (‘Act’).
On 24 November 2016, Star Entertainment Group Limited (‘Applicant’) filed an application under s 92 of the Act (‘Application’) seeking removal of trade mark 859666 from the register in respect of all goods and services. The trade mark is registered for a broad range of paper goods and printed matter in class 16 as well as a variety of communication, education, entertainment and news services in classes 38, 41 and 42. It appears on the register in the following form:
(‘Trade Mark’)
This office advertised the Application for opposition purposes on 8 December 2016. The registered owner of the Trade Mark, Star Television Productions Limited (‘Opponent’) filed a notice of intention to oppose the Application on 8 February 2017. The Opponent’s Statement of Grounds and Particulars (‘SGP’) followed on 7 March 2017. This office sent a copy of the SGP to the Applicant, who responded by filing a notice of intention to defend the opposition to its Application on 2 May 2017.
Before any evidence had been filed, the parties sought a cooling-off period under reg 9.19 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).[3] The Registrar of Trade Marks was obliged to grant that request, along with the parties’ subsequent request to extend the cooling-off period. This meant that proceedings were on hold for over a year, after which the Opponent filed its evidence in support on 12 November 2018. This office provided the Applicant an opportunity to file evidence in answer, but it instead elected to proceed directly to an oral hearing of the opposition.
[3] Trade Marks Regulations 1995 (Cth) (‘Regulations’).
A hearing was scheduled for 27 June 2019 in Canberra. Prior to the hearing, the parties each filed a written summary of submissions in line with the timetable in reg 9.20(5) of the Regulations. The hearing went ahead as scheduled before me, a delegate of the Registrar of Trade Marks. In attendance for the Applicant was Ben Gardiner of Counsel, instructed by Verdi Guy of King & Wood Mallesons. The Opponent was represented by Gabriella Rubagotti of Counsel.
Evidence
The sole document filed in evidence is the declaration of Jamie Maxwell Nash, Alternate Director of the Opponent, made 9 November 2018 with annexures JMN-1 to JMN-4.
Mr Nash declares that the Opponent is, together with Star India Private Limited (‘SIPL’), one of several subsidiaries of Star Group Limited, and that this collection of corporate entities operate as a group known as ‘Star Group’. No documentation to substantiate these claims are provided. The Opponent also asserts that the entirety of the Star Group is owned by Twenty-First Century Fox, Inc, though again this is not substantiated. The deponent states that ‘Star Group has distributed various STAR [television] Channels in Australia through its local distributors who promote and advertise the Trade Mark…’ It is at this local distributor level (‘Local Distributors’) that actual use of the Trade Mark, is in the main, said to have occurred.
In evidence are the following advertising and promotional materials from those Local Distributors:
· A screenshot of visionasia.com.au, apparently taken on 30 April 2014, showing the following two images:
· A Wayback Machine[4] capture dated 26 February 2014 of a page from fetchtv.com.au advertising the ‘Taj Mahal Hindi and Urdu package on Fetch TV’, listing several channels with logos, including StarPlus and StarGOLD, represented as:
· A Wayback Machine[5] capture dated 14 February 2014 of a page from konnectv.com.au advertising free installation of a satellite dish and TV package, again listing several channels with logos, including StarPlus and StarGOLD, represented as:
[4] The Internet Archive, Wayback Machine (Search Engine) < Ibid.
Also in evidence is a series of extracts apparently from one or more publications showing the times of Indian language films and television shows on StarPlus and StarGOLD from October 2015. These pages include the same two representations shown immediately above. The air times for these shows are listed in Australian Eastern Daylight Time and Australian Western Standard Time. Precisely what publication(s) these extracts were taken from has not been disclosed.
The last aspects of the evidence arguably showing use of a trade mark within the Relevant Period are two partially redacted tax invoices. Both issued after the Relevant Period but purport to cover fees incurred during the Relevant Period. Both include a logo (reproduced below) and relate to license fees for television channels ‘STAR Plus SEA’ and ‘STAR Gold (ME)’, as well as a third channel going by a completely different description. Both were issued by SIPL to two different companies with addresses in Sydney.
There is very general evidence provided, claiming that many marks featuring a star device and the word STAR are used by various entities within the Star Group in various countries. Finally, there is evidence of the marks pictured below appearing on startv.com on 6 November 2018, well after the Relevant Period.
Grounds, relevant period, onus and standard
The Application seeks removal of the Trade Mark because of s 92(4)(b) of the Act. The relevant aspects of this provision appear below:
92Application for removal of trade mark from Register etc.
(4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(a)…
(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i)used the trade mark in Australia; or
(ii)used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Note 1:For file and month see section 6.
Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
Aside from some procedural questions raised by the above text and the surrounding provisions, none of which are at issue here, the central allegation is that the Trade Mark was not used in the three years before 24 October 2016 (‘Relevant Period’). The onus is on the Opponent to rebut that allegation.[6] In making findings of fact below I have applied the ordinary civil standard of the balance of probabilities.
Discussion
[6] Act (n 2) s 100(1)(c).
Use of the Trade Mark
The Opponent has not put forward a single example of use of the Trade Mark in Australia within the Relevant Period as it appears on the register. Instead, it has led evidence of use of several marks which it says are similar enough to the Trade Mark to meet the test provided in s 100(3)(a) of the Act. This provision is provided in its immediate context below:
100 Burden on opponent to establish use of trade mark etc.
(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:
…
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For file, month and registered owner see section 6.
…
(3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:
(a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period…
This phrase ‘with additions or alterations not substantially affecting its identity’ imposes the test as to whether the Trade Mark and the marks shown in the Opponent’s evidence are ‘substantially identical’.[7] The most commonly cited formulation of this test appears in the following way:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[8]
[7] Carter v Liberty Procurement Co Inc (2016) 125 IPR 235, 253 [51].
[8] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414.
On this basis I find that the mark that appears on the invoices is use of the Trade Mark, but the StarPlus and StarGOLD devices are too visually different to the Trade Mark as it appears on the register. Given this, I have only considered below whether those invoices can rightly be cast as authorised use.
Authorised use of the Trade Mark
The Opponent, who is also the registered owner of the trade mark, has not set out to show that it used the Trade Mark (or a substantially identical trade mark) in Australia within the Relevant Period. So as foreshadowed, a central question here is whether the use in evidence was authorised by the Opponent within the meaning of s 8 of the Act. That provision reads:
8 Definitions of authorised user and authorised use
(1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.
(2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.
(3) If the owner of a trade mark exercises quality control over goods or services:
(a) dealt with or provided in the course of trade by another person; and
(b) in relation to which the trade mark is used;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(4) If:
(a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
(b) the owner of the trade mark exercises financial control over the other person’s relevant trading activities;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(5) Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).
It may be fair to observe that the past has seen a relaxed attitude to authorised use when assessing the relationship between the registered owner and the actual user of a trade mark. This was most recently exemplified by a (reluctant) Federal Court finding that ‘a mere theoretical possibility of contractual control is sufficient to constitute authorised use’.[9] The legal position significantly changed in 2016 when the Full Court of the Federal Court decided that a bare license was insufficient to establish control over, and therefore authorised use of, a trade mark.[10] For the three years that followed that judgment there has been a very high level of scrutiny of the relationship between a registered owner of a trade mark and the user of it. This year saw some reprieve, with the Full Court of the Federal Court deciding that two companies ‘operated with a unity of purpose’ and through that inferred that one company effectively exercised the requisite control over the other for the purposes of s 8 of the Act.[11] The facts in Lodestar and Trident were very different. In Lodestar there was only a contractual relationship between user and owner, and the owner was found to have no serious interest in the quality of the goods that the user was putting to market. In contrast, Trident involved two quite clearly related companies—one owned the trade mark and the other used it. It was also crucial to the reasoning in Trident that there was common directorship of the companies at all relevant times.
[9] Skyy Spirits LLC v Lodestar Anstalt (2015) 325 ALR 718, 732 [55].
[10] Lodestar Anstalt v Campari America LLC (2016) 244 FCR 557 (‘Lodestar’).
[11] Trident Seafoods Corp v Trident Foods Pty Ltd (2019) 369 ALR 367, 380-1 [45]-[52] (‘Trident’).
The situation as the Opponent describes it shares elements of both Lodestar and Trident, yet there is a lack of evidence that might allow me to engage with either approach. Lodestar involved a close reading of a licensing agreement while Trident required looking over company governance documentation. Neither of these are provided in the present opposition. All I have is a bare statement from an officer of the Opponent which says that SIPL is owned by the same entity as the Opponent.
On the Lodestar approach, the Opponent has not shown that SIPL billing an unrelated company for distributing two TV channels in Australia amounts to the Opponent exercising control over the use of the Trade Mark. This likely implies that some sort of license was in place between SIPL and at least two Local Distributors, but the terms of that license are not in evidence. For example, there is no reasonable way for me to infer from this imagined license that the Opponent was party to any of those licensing arrangements.
On the Trident approach, all I have to consider is a submission that SIPL and the Opponent are wholly owned (that is, 100% of their shares are held) by the same entity, Star Group Limited. One of the features of the modern corporation is the division between the management and ownership of a business. That is, the shareholders of a company do not normally manage that company directly. Instead, they have certain shareholder rights which generally include the power to appoint directors of the company. It is those directors, not the shareholders, that sit atop the management structure of a company. As I have mentioned, Trident relied on common directorship of two companies to conclude that those entities acted with ‘a unity of purpose’.[12] The Opponent has not even suggested, let alone demonstrated, that SIPL and/or its parent Star Group Limited have directors in common with the Opponent. This leaves me unable to reasonably conclude that the Opponent operated with a unity of purpose with SIPL and/or its parent Star Group Limited.
[12] Ibid 380 [45].
I am not satisfied that there was authorised use of the Trade Mark within the Relevant Period.
Discretion
Despite the Opponent’s failure to establish that there was use of the Trade Mark, there is a residual discretion under s 101(3) of the Act to allow it to remain on the register:
101Determination of opposed application—general
(3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
The discretion is limited only by the requirement that its exercise be consistent with ‘the subject matter, scope and purpose of the Act and Pt 9 in particular.’[13]
The purpose of Pt 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion.[14]
[13] Dick Smith Investments Pty Ltd v Ramsey (2016) 120 IPR 270, 297 [180].
[14] Austin Nicholls & Co Inc v Lodestar Anstalt (No 1) (2012) 202 FCR 490, 498 [38].
The discretion is weighed as things stand now.[15] The burden of persuasion is on the Opponent.[16] The Act and decided cases offer a non-exhaustive list of factors relevant to the exercise of the discretion, summarised below:
· Whether the Opponent used the Trade Mark in relation to similar (or closely related) goods and services[17]
· Whether the Opponent has abandoned the Trade Mark[18]
· Whether there is residual reputation in the Trade Mark[19]
· Whether the Opponent has sold goods or services in relation to the Trade Mark after the Relevant Period[20]
· Whether the Applicant entered the market without first performing a clearance search of the register[21]
· Whether the Opponent was aware of the Applicant’s sales under a similar trade mark[22]
· Whether removal of the Trade Mark would lead to deception or confusion[23]
[15] UCP Gen Pharma AG v Mesoblast Inc (2012) 95 IPR 562, 571 [33].
[16] Optical 88 Limited v Optical 88 Pty Limited (No. 2) (2010) 275 ALR 526, 580 [273].
[17] Act (n 1) s 101(4).
[18] E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008 77 IPR 69, 111 [202].
[19] Ibid.
[20] Ibid.
[21] Ibid 111-2 [202].
[22] Ibid 112 [202].
[23] Austin Nicholls & Co Inc v Lodestar Anstalt (No 1) (2012) 202 FCR 490, 498 [38].
Recalling my discussion of the evidence above, the Opponent has not shown that it used the Trade Mark or a substantially identical mark at all within the relevant period, so the first factor cannot support exercise of the discretion.
Regarding the second factor, despite the lack of evidence of use, there is no evidence that might support a finding that the Opponent performed an act of abandonment of, or indeed held an intention to abandon, the Trade Mark. The Applicant also has not sought to argue that the Opponent abandoned the Trade Mark.
The pair of invoices discussed above indicate that there might be some residual reputation in the Trade Mark in Australia, however on the evidence provided the esteem could only potentially be had by SIPL or possibly the two local companies who received invoices from SIPL. This paucity of evidence of reputation means that the third factor cannot support use of the discretion.
The Opponent’s submission that its evidence shows use of the Trade Mark after the Relevant Period is hindered in the same way as the rest of its evidence of use—there is nothing beyond assertion to indicate that any of it was authorised use. The fourth factor therefore cannot support the discretion.
There being no evidence from the Applicant, I am unable to find that it searched for earlier conflicting rights before entering the market. The fifth factor therefore weighs in favour of exercise of the discretion.
For the sixth factor, the Opponent’s evidence and submissions do not offer much information on the Applicant. There is a submission that the Applicant seeks registration for THE STAR in class 41 for ‘entertainment services’ among other things. This does not so much go to the Applicant’s sales as it does to the risk of deception or confusion should the Trade Mark be removed, to which I now turn.
The Opponent submits that its evidence shows ‘lengthy historical use’ of aspects of the Trade Mark (that is the star device and/or the word STAR with various other elements). Examples of this include the StarPlus and StarGOLD marks discussed earlier. The Opponent’s evidence asserts that ‘the Star Group operates various channels around the world’. The sole document led in support of this claim is a 56 page list of trade marks owned by the Opponent spanning 29 individual countries along with several European Union Community Trade Marks. As the Applicant correctly submits, the mere fact of these registrations does not demonstrate that any trade marks have been used. That said, if I were to take the Opponent’s assertion at face value, this list provides several other examples of a star device and/or the word STAR incorporated. These include STAR भारत, STAR BHARAT, STAR MOVIES, STAR WORLD, STAR उत्सव, STAR SPORTS, STAR 衛視中文台, INDIA STARPLUS, INDIA STARGOLD and STAR 卫视. Each is invariably shown with a star device of some description, if not the star device that is present in the Trade Mark.
The Opponent’s evidence also shows that as of 6 November 2018 the website startv.com displays the Trade Mark. Only the front page of that website is included in evidence. The content of that front page suggests that the registrant of that website is, among other things, a distributor of television channels and their associated program guides. Mr Nash declares that this is the website of Star Group. That is, it is not the website of the Opponent (and registered owner of the Trade Mark), but of the corporate group of which the Opponent is a part. Once more the problem of authorised use is apparent here, though for present purposes I simply note that the mark appears to have recently been in use in relation to some of its registered goods and services.
The Opponent’s submission on the risk of deception or confusion draws on the uses of the Trade Mark (or aspects of it) shown (or asserted) in the preceding two paragraphs together with its continued ownership to the star device (registered trade mark 859665). With that in mind it submits that removal of the Trade Mark would clear a path for third parties to own the Trade Mark or a very similar mark in relation to entertainment services, thereby causing ‘fragmented ownership’ of the Trade Mark.
In response to this line of argument, the Applicant draws attention to two issues. Firstly, the Opponent’s evidence does not establish that there in fact is a reputation in the Trade Mark in Australia. I have also discussed the slightness of any evidence going to this issue in paragraph 28 above. Secondly, there are around 200 trade marks on the register in class 41 that include the word star, and several times that number which include a star device. Given this, I find it impossible to distinguish the purported risk of fragmentation of the ownership Trade Mark by its removal and subsequent registration of other marks, from the plethora of other proprietary rights already present on the register.
On balance, taking each of the above factors into consideration both individually and together, I find that the Opponent has not met its burden of persuasion. I have not been satisfied that it is appropriate in all the circumstances to allow the Trade Mark to remain on the register.
Decision and costs
The ground for removal under s 92(4)(b) of the Act has not been rebutted. As such, the Trade Mark shall be removed from the register one month from the date of this decision. If the Registrar is served with a notice of appeal before then the Application shall be dealt with as the Court sees fit.
Both parties sought an award of costs. The general rule is that costs follow the event, and I have no reason to make an exception here. Accordingly, I award costs against the Opponent under s 221 of the Act in accordance with the amounts specified in sch 8 of the Regulations.
Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
13 November 2019
42
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