Subafilms Ltd v Tenancy Management Pty Ltd
[2006] ATMO 11
•23 January 2006
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Subafilms Limited to registration of trade mark application 868921(42) - YELLOW SUBMARINE & device - in the name of Tenancy Management Pty Ltd.
Delegate: | Deirdre O'Brien |
Representation: | Opponent Robert Lancy of counsel instructed by Davies Collison Cave, Patent and Trade Mark Attorneys Applicant Unrepresented |
Decision: | Section 52 opposition Grounds under ss42,43,44,58,60&62 not made out. Application may proceed to registration. Costs awarded against opponent. |
Background
Trade mark application 868921 was filed on 13 March 2001 by Bernard Hough[1] and Terrence O’Connor[2] in respect of the following class 42 services: providing of food and drink; temporary accommodation; bar; restaurant/nightclub; cafe or the like; food and drink supply franchises. The trade mark is depicted below:
[1] as trustee for the Sheldrake Trust
[2] as trustee for the O’Connor Family Trust
The application was examined and registration 758121 in the name of Subafilms Limited was raised as a ground for rejection under section 44. The ground for rejection was withdrawn after the services were limited to provision of food and drink, temporary accommodation, restaurants, cafes and the application was accepted.
Registration was thereupon opposed by Subafilms Limited (‘the opponent’). Subsequent to the filing of the notice of opposition, application 868921 was assigned to Tenancy Management Pty Ltd (‘the applicant’) and the services were further limited to temporary accommodation.
After both parties had filed and served evidence as provided in the Trade Marks Regulations 1995, the opponent asked to be heard. The matter came before me, as the Registrar’s delegate, in Canberra on 20 October 2005. Mr Robert Lancy of counsel, instructed by Davies Collison Cave, Patent and Trade Mark Attorneys, appeared for the opponent. The grounds of opposition pressed by the opponent at the hearing were those pursuant to sections 42, 43, 44, 58, 60 and 62 of the Trade Marks Act 1995. The applicant did not attend the hearing but relied on written submissions.
Evidence
The parties filed and served evidence as indicated in the table below:
DECLARANT MADE EXHIBITS NAME Evidence in support Neil Aspinall 18.12.2003 NSA1 to 14 Aspinall 1 John Walsh 20.03.2004 Walsh Beverley Fagan 19.05.2004 BF1 to 5 Fagan 1 Evidence in answer Kenneth Hough
Harold John Davies
Kenneth Mandelbus
Robert Verhagen
Suzanne O'Connor15.11.2004
11.11.2004
10.11.2004
09.11.2004
09.11.2004KMHA, KMH1-20
HJD-1
KM-1
RV-1
SO-1Hough
Evidence in reply Rosemary Hay 05.05.2005 RH1 to 2 Neil Aspinall 15.07.2005 NSA1 to 6 Aspinall 2 Beverley Fagan 27.07.2005 BF1 to 5
Section 58 and 62 grounds
As already noted, this application was filed in the names of Bernard Hough and Terrence O’Connor[3]. The opponent submits Mr Hough and Mr O’Connor were not the first user of the trade mark in Australia and so could not claim ownership. It follows from this, the opponent argues, that the application was accepted on the basis of representations that were false in material particulars. In other words, according to the opponent the application contravenes both section 58 and section 62.
[3] Messrs Hough and O’Connor assigned the trade mark to the applicant post acceptance.
Section 62(b) provides:
62. The registration of a trade mark may be opposed on any of the following grounds:
(a) …
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.In Kiwi Munchies Pty Ltd v Kraft Foods Holdings Inc[4] the delegate noted (at paragraph 35) that section 62(b) is ‘clearly directed to evidence that was material in the decision to accept the application for registration.’ This is consistent with the 1992 report of the Working Party to Review the Trade Marks Legislation which said[5] registration could be opposed on the ground ‘that acceptance of the trade mark has been obtained by misrepresentation; the Working Party intends that “misrepresentation” should be interpreted as meaning “a material misrepresentation of relevant facts” ’. As noted by the delegate in MB Holdings (Aust) Pty Ltd v B2 Import & Export SA CC[6] there is no ground for rejection on the basis of ownership and ‘it is unlikely, in the lack of something more, that the extent of the representation as to ownership present in the making of an application can be “the basis” of the decision to accept the application.’ There is nothing before me to show a different conclusion is warranted in this case[7]. Ownership of the applicant’s trade mark was not material to the decision to accept the application. Accordingly I find the section 62 ground fails.
[4] (2005) ATMO 22
[5] at 1.3.3.8A(8)
[6] (2001) 54 IPR 584 at 587
[7] cf O’Brien Glass Industries Ltd v Cleary (2004) 60 IPR 595 at 601 where the delegate found section 62(b) had been made out based on the evidence before her of the circumstances under which the opposed application had been made.
With respect to section 58, it is well established that ownership of a trade mark is vested in the person who first used the trade mark in Australia in relation to the relevant goods or services or who first applied to register it, whichever event is the earlier.[8] According to the applicant, in March 1995 the creator of the submarine device forming part of the applicant’s trade mark ‘transferred to the partnership the right to use the device in a Yellow Submarine trade mark (to be owned by the partnership)…’ [9] The partnership referred to is the partnership between Messrs Hough and O’Connor, the persons who originally applied for trade mark registration. In the same month the partnership authorised use by Denbrook Investments Pty Ltd (‘Denbrook’) of the trade mark which is the subject of this application. Denbrook registered the business name Yellow Submarine Backpackers and prepared and distributed cards and brochures advertising a backpackers’ hostel. That material displayed the trade mark. The trade mark was also displayed at the hostel premises. In 1998 the Yellow Submarine Backpackers business was transferred to Tenancy Management Pty Ltd. At the same time the Hough and O’Connor partnership authorised use of the trade mark by Tenancy Management Pty Ltd. In February 2004 the partnership assigned ownership of the trade mark to Tenancy Management Pty Ltd following which Tenancy Management Pty Ltd was recorded by this office as the owner of the trade mark.
[8] Moorgate Tobacco Co Ltd v Phillip Morris Ltd (1984) 156 CLR 414
[9] Point 3 in the 14 point chronology contained in the Hough declaration. The paragraphs in the declaration are not numbered.
It is clear that the trade mark was first used in the ordinary course of business by Denbrook. That use, however, was authorised use as defined by section 8 and so, pursuant to section 7(3), is taken to be use by the Hough and O’Connor partnership. The applicant does not specify in relation to which services the partnership had authorised Denbrook’s use. The evidence shows Denbrook provided temporary accommodation and café services at the same Brisbane location. I believe it can be safely concluded Denbrook was authorised to use the trade mark in relation to those services.
The onus is on the opponent to make out the ground of opposition. It needs to establish a prima facie case for refusing registration on the basis of the applicant not being the owner of the trade mark. The opponent argues Messrs Hough and O’Connor could not have carried on business together as they were located in different states. However an application to register a trade mark is not contingent on the applicant having used, or having an intention to use, the trade mark itself. An application can be made on the basis of the applicant having authorised, or intending to authorise, use by another party[10]. The evidence shows Messrs Hough and O’Connor authorised the use of the trade mark by Denbrook. The opponent has pointed to aspects of the applicant’s evidence which, the opponent says, need clarification. I agree there are ambiguities in the evidence such as those noted previously relating to the authorised use by Denbrook. But such ambiguities are not sufficient for me to be satisfied this ground has been made out[11]. I find the section 58 ground fails.
[10] Section 27(1)(b)(ii)
[11] as was also the case in Orlane SA v Somboonsakdikul (2005) ATMO 41 and Societe Guy Laroche v Uniopt GmbH (2005) ATMO 54
Section 44 ground
In support of this ground the opponent relies on its registration 758121 which, as previously noted, was cited during examination. Registration 758121 is for the word trade mark YELLOW SUBMARINE and covers goods in classes 4, 6, 9, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28 and 34 and services in class 41. As already indicated the applicant’s trade mark is a composite trade mark comprising the words YELLOW SUBMARINE and the drawing of a cartoon submarine and is for temporary accommodation in class 42.
Applying the accepted tests[12] I find, as did the examiner, that the trade marks are deceptively similar. A section 44 ground also requires that the cited goods and services are closely related and/or similar[13]. During examination the application included bar services which the examiner held were similar to the opponent’s entertainment services. The examiner withdrew the citation when bar services were deleted from the application. Since then the applicant’s services have been further restricted to temporary accommodation. The opponent now argues that temporary accommodation and the opponent’s myriad of entertainment services in class 41[14] are hospitality services as discussed by the delegate in Watermark Restaurant Pty Ltd v The Watermark Hotel Group Pty Ltd[15]. In that case the delegate held the provision of food and drink to be closely associated in the public mind[16] with the provision of hotel accommodation. Here, the opponent says, its entertainment services, both live and online, are the sorts of services likely to be offered on temporary accommodation premises. Be that as it may, this ground requires a finding that the services are similar. In making such a finding I have to be satisfied the services have the same trade channels and are of the same nature[17].
[12] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407; Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641
[13] Subsection 44(2)(a)(i)
[14] including, inter alia, musical entertainment; interactive entertainment; organisation, production and presentation of shows, roadshows, stage plays, musicals, live performances, virtual reality entertainments and entertainment events; concert services; orchestra services; live band performances; discotheque services; club entertainment services; night club services
[15] (2002) 55 IPR 406 at 415
[16] supra note 15, at 419. The delegate did not find said services were ‘similar’. Rather she held there was likely to be deception or confusion in terms of section 60 because of the reputation of the opposing party’s trade mark with respect to restaurant services.
[17] Australian Tourism Company Ltd v Mid Sydney Pty Ltd (1998 ) 42 IPR 561 at 568
Temporary accommodation services are in essence the letting of a room or rooms in a boarding house, hostel, hotel, motel and the like for short term residence. In the Australian market the person hiring the room will generally expect it to contain a television set and radio. In more expensive establishments consumer expectation will be that there is access to online entertainment and to the Internet. Consumers will further expect that there is a concierge from whom they can obtain information about entertainment and perhaps make bookings for the theatre or shows. However all these services are incidental to the essential service of letting rooms[18]. Providers of temporary accommodation are not in the same trade as providers of entertainment and their respective services differ in their overall nature. I find the applicant’s services are not similar to those of the cited registration. The section 44 ground fails on this basis.
[18] supra note 17, at 567
Section 60 ground
This ground requires the existence of a deceptively similar trade mark with a reputation in the Australian marketplace at the filing date of this application[19]. The opponent’s evidence clearly establishes that the expression YELLOW SUBMARINE has been famous world wide since the 1960s, first as the title of a song written and recorded by the music group The Beatles in 1966 and then as the title of an animated movie featuring The Beatles released in 1968[20] and of the movie soundtrack released in 1969[21]. However the names of songs or the titles of movies or movie soundtracks are not, in the main, trade marks[22], capable of distinguishing the services of one trader from those of another[23]. To make out this ground the opponent has to show that in addition to being well known for the foregoing reasons, YELLOW SUBMARINE was also well known as a trade mark at the relevant date[24]. It is a similar situation to that faced by the opposing party in Twentieth Century Fox Film Corporation v Durkan[25]. There the delegate found BRAVEHEART had an overwhelming reputation as the name of a movie but there was nothing in evidence to show BRAVEHEART had been used as a trade mark.
[19] 13 March 2001
[20] and re-released in 1999
[21] ditto
[22] The delegate in Twentieth Century Fox v Durkan (2000) 47 IPR 651 (‘BRAVEHEART’) found the name of a movie was not a trade mark. On the other hand the delegate in Twentieth Century Fox Film Corporation v Die Hard (2001) 52 IPR 455 held the name of a series of movies, DIE HARD, did function as a trade mark. Elsewhere the title of a single book has been found not to be a trade mark (Fortuity Pty Ltd v Savvides (2000) AIPC 91-644) whereas the title of a series of books can function as a trade mark (see Musidor BV v Robert William Tansing (1994) 29 IPR 203 at 207).
[23] Section 17 provides that a trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
[24] The opponent’s evidence (Exhibit NSA-5 to Aspinall 1) shows it has numerous trade mark registrations throughout the world but this fact by itself this does not establish trade mark reputation.
[25] (2000) 47 IPR 651
This case differs from BRAVEHEART insofar as I am satisfied from the opponent’s evidence YELLOW SUBMARINE had been used as a trade mark prior to the filing date in connection with the sale of memorabilia from the movie[26] and merchandise such as toys, lunch boxes and cookie jars[27]. But the market for animation art is a specialised one and no total figures for the sales of licensed merchandise have been provided. It seems from the information in Exhibit NSA-12 that authorised sales in Australia in the years 1999 to 2001 were insignificant and limited to sales of men’s ties, boxers, cigarette lighters, cards and animation cells[28].
[26] such as original artwork (Fagan 1)
[27] Aspinall 1 and Fagan 1
[28] This is not entirely clear. The opponent’s evidence is open to interpretation as to what merchandise has been sold, when and where it was sold and in what quantities.
The opponent argues that trade mark reputation should not be decided on the basis of sales and advertising figures alone and points to McCormick & Co Inc v McCormick[29] which establishes, the opponent says, that factors such as use in the media, public visibility and image and overseas reputation should also be taken into account. I do not disagree with this argument but all those things in the opponent’s evidence go to establishing the reputation of YELLOW SUBMARINE as the name of a Beatles song and movie and of the movie soundtrack, not to its reputation as a trade mark. I agree with the opponent as to public awareness of the practice of brand extension and that the makers of successful movies often authorise third party use of the movie title as a trade mark. Nonetheless the starting point for section 60 is still trade mark reputation. I find the section 60 ground fails on this threshold test.
[29] (2000) 51 IPR 102
Section 43 ground
Section 43 provides:
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.
In Big Country Developments Pty Ltd v TGI Friday's Inc[30] it was held that the connotation must be inherent to the trade mark itself. Prima facie the words YELLOW SUBMARINE in the applicant’s trade mark describe a yellow coloured underwater craft. The applicant says that in certain circles YELLOW SUBMARINE means an illegal drug. Notwithstanding this, I am satisfied from the opponent’s evidence that for a substantial number of Australians the words YELLOW SUBMARINE are synonymous with The Beatles song and movie of that name and thus will connote that song and movie. Although The Beatles as a group disbanded in 1970 and two of its members are now dead, the group has legend status in the history of pop music and is described in the Macquarie Dictionary as follows:
Beatles
1. the, British band, formed in 1959, generally considered the most popular and influential of pop groups; before 1962 the group included Stuart Sutcliffe and Pete Best.
[30] (2000) 48 IPR 513 at 521
The question therefore is whether this connotation of a Beatles song and movie in the applicant’s trade mark is likely to deceive or cause confusion when the trade mark is used in relation to temporary accommodation.
In Twentieth Century Fox Film Corp v South Australian Brewing Co Ltd[31], which involved the use of the name of an imaginary beer featured in the cartoon television series THE SIMPSONS, there was evidence of extensive licensing of merchandise such as t-shirts depicting images from the series. The court found such merchandising would reinforce the public expectation that all merchandise depicting such images had been produced under licence. There is no such evidence before me. As already noted, sales of merchandise associated with the movie YELLOW SUBMARINE have been limited. But even if there had been extensive merchandising of such goods, I am not satisfied the public would expect brand extension to encompass temporary accommodation. In BRAVEHEART[32] the unsuccessful applicant intended to use BRAVEHEART THE MUSICAL in connection with theatre musical productions in class 41. The delegate found a substantial number of Australians would regard this as indicating the makers of the film BRAVEHEART were now making a musical version of the film for the stage. The applicant’s accommodation services, on the other hand, are not the sort of services consumers would expect the makers of a successful movie to be involved in.
[31] (1996) 34 IPR 225
[32] supra note 25
The opponent points to the practice of well known entertainers and entertainment organisations endorsing ‘themed’ venues such as the Hard Rock Café chain of restaurants owned by The Rank Group plc and the Sticky Fingers restaurant in London promoted by Bill Wyman of the music group The Rolling Stones[33]. If, for example, the applicant were to use its trade mark in connection with temporary accommodation services located within an entertainment venue with the theme of the YELLOW SUBMARINE movie and which prominently displayed representations of The Beatles and other characters from the movie, it is likely consumers would believe the services were being offered under the aegis of The Beatles or of those controlling their intellectual property. However temporary accommodation services are not ordinarily offered under such circumstances[34] and there is nothing in evidence to show that the applicant’s services are or have been or are likely to be offered in this way.
[33] Exhibit NSA-14 to Aspinall 1 which also shows that in 2003 there were four Hard Rock resorts in Las Vegas, Bali, Orlando and Pattaya offering accommodation, food and entertainment.
[34] According to Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595, when considering the likelihood of deception all the surrounding circumstances have to be taken into consideration. His Honour said this ‘includes the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods.’
The opponent has provided an expert opinion[35] that the applicant’s use of the trade mark in relation to the provision of food and drink, temporary accommodation, restaurants and cafes would result in consumer deception or confusion.However there are no facts in the declaration to substantiate this belief with respect to any of these services[36]. While it is arguable consumers could assume authorised use if the trade mark were to be used in relation to restaurant services[37], I see no reason why they would assume such an association with temporary accommodation unless prompted to do so by the manner in which those services were offered. The applicant is not authorised to promote such an association and it could not properly do so[38].
[35] Walsh declaration
[36] In coming to this opinion the declarant relies on the well known exploitation of the intellectual property rights to successful books and movies by licensing the use of the name of the book or movie on goods including toys, books, stationery, garments. He also refers to the merchandising of goods such as clothing, sporting goods, toys, books, china, stationery and gifts in relation to restaurant chains, international theatre productions and sporting events. He is aware of licensed use of YELLOW SUBMARINE on goods including posters, movies, DVDs, videos, CDs, clothing and giftware.
[37] I note the finding of the UK hearing officer in relation to UK trade mark 2213983 that the provision of food and drink in class 42 are similar services to entertainment services in class 41. The hearing officer’s decision is in evidence at Exhibit NSA-13. Against this is the finding of a hearing officer in this office that restaurant and entertainment services are not similar (Hard Rock Café International (USA) Inc v Finradio SRL (1999) 45 IPR 333.
[38] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362
As confirmed by Justice Kenny in McCorquodale v Masterson[39] section 43 requires that I be satisfied there is a real, tangible danger of deception or confusion occurring. I need to consider the connotation within the trade mark itself, the nature of the services in relation to which it will be used and the way those services have been or are likely to be provided. I am satisfied the applicant’s trade mark does connote a Beatles song and movie, however I am not satisfied that members of the public would reasonably believe the applicant’s accommodation services were in some way associated with the makers of the movie or that they were offered with the knowledge and approval of The Beatles or the movie makers. The section 43 ground therefore fails.
[39] (2004) 63 IPR 592 at 589
Section 42 ground
The opponent submits use of the applicant’s trade mark would be contrary to sections 52 and 53 of the Trade Practices Act 1974 and to the common law of passing off. Simply stated section 52 prohibits a corporation from engaging in misleading or deceptive conduct. It would be misleading or deceptive conduct in this case if, in offering its accommodation services, the applicant were to represent either overtly or indirectly[40] an association between itself and The Beatles such as by way of approval, endorsement or recommendation[41]. The evidence does not show the applicant has engaged in any such conduct, nor has the opponent provided any evidence of consumers being misled[42]. The association in the public mind between the expression YELLOW SUBMARINE, The Beatles and their marketing activities with the applicant’s accommodation services is not so immediate that the use of the trade mark in itself gives rise to misleading or deceptive conduct.
[40] Seven Network Ltd v News Interactive Pty Ltd (2004) 63 IPR 28 at 32
[41] As noted in Twentieth Century Fox Film Corp v South Australian Brewing Co Ltd (1996) 34 IPR 225 at 242, the precise nature and content of the association may be difficult to define.
[42] If the opponent had been able to point to misleading or deceptive conduct on the part of the applicant, it would not have been necessary for it also to provide evidence of consumer deception. However it has failed on both counts.
Section 53 of the Trade Practices Act prohibits a corporation from making false representations in the course of trade. Relevant here are the provisions of subsections 53(c) and (d) which prevent a corporation from falsely representing it or its services have a specific sponsorship, approval or affiliation. This is a narrower test than that contained in section 52[43] and there is nothing in the applicant’s trade mark per se, nor in the way the evidence shows the applicant offers its accommodation services, to satisfy me any such misrepresentation has been made.
[43] Hogan v Pacific Dunlop Ltd (1988) 12 IPR 225 at 254
Relief pursuant to the tort of passing off is only possible if there has been some sort of misrepresentation which is likely to damage the opponent’s business. The opponent has established neither.
As the opponent has not shown use of the applicant’s trade mark would be contrary to law, the section 42 ground fails.
Decision
As none of the grounds of opposition pressed by the opponent has been made out, my decision pursuant to section 55[44] is that trade mark application 868921 may proceed to registration upon expiry of the appeal period. If the Registrar is served with a notice of appeal within time, I direct that registration shall not occur until the appeal has been decided or discontinued.
[44] Section 55 provides:
Unless the [opposition] 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.
The opponent submits that, as allowed by subsection 55(b), the applicant’s services should be limited to those in relation to which the trade mark has been used namely temporary accommodation for backpackers. The opponent further submits that registration should be limited to the state of Queensland for the same reason. I find it is not necessary for the applicant to limit its application in this way in order for it to proceed to registration. Registration is not on the basis of evidence of trade mark use prior to the filing date such as required in the application of subsections 41(6) or 44(3)(a). Nevertheless I direct the application may be so amended if requested by the applicant.
Costs
I award costs against the opponent according to the official scale.
Deirdre O'Brien
Hearing Officer
Trade Marks Hearings
23 January 2006
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