Surf Life Saving Australia Ltd v Southern Retail Trading Co Pty Ltd

[2001] ATMO 58

TRADE MARKS ACT 1995

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

Re:Opposition by SURF LIFE SAVING AUSTRALIA LIMITED to registration of trade mark application 768689(25) - BETWEEN THE FLAGS AUSTRALIA AND CROSSED FLAG DEVICE- filed in the name of SOUTHERN RETAIL TRADING CO PTY LTD.

Background

Application number 768689 was filed on 29 July 1998 (the priority date) by Southern Retail Trading Co Pty Limited of 2 Salisbury Street, Watsons Bay, New South Wales.  The application is for the following trade mark in Class 25:

The goods specified in the application are: clothing, hats, shorts, T-shirts, sweat shirts, dresses, caps.

The application was advertised as accepted in the Australian Official Journal of Trade Marks on 25 May 2000.  The opponent filed a notice of opposition 12 July 2000 in the following terms:

1. The Opponent is the owner of registered trade mark no. 722423 (red and yellow flag device).

2. The opposed trade mark is substantially identical with or deceptively similar to trade mark no. 722424 in respect of the distinctive red and yellow surf life saving flag.  The opposed trade mark would be likely to deceive or cause confusion.

There were further matters raised in the notice of opposition, but these were more in the nature of assertions of fact, rather than grounds of opposition.  Accordingly, I have not reproduced them here.  Further, during the course of submissions, the opponent indicated that the only grounds which would be relied upon were those which reflected sections 43 and 60 of the Trade Marks Act (Cth) 1995.  The applicant on the other hand, submitted that the notice of opposition was flawed as it did not, with sufficient specificity, raise or rely upon sections 43 and 60.  I will deal with this in due course.  It is however, sufficient for present purposes to proceed on the basis that the opponent's case is based on those specific provisions.

The parties were represented at the hearing.  The opponent was represented by Mr Simon Minahan of Counsel, instructed by Rigby Cooke Lawyers.  The applicant was represented by Mr Wayne Willis of FB Rice & Co.  Both representatives gave oral submissions and I have taken these into account. 

The Evidence
The evidence in support comprised a single statutory declaration dated 10 October 2000 by Gregory John Nance, the Chief Executive Officer of Surf Life Saving Australia Limited (SLSA). 

There was no evidence in answer or in reply.

The declaration of Mr Nance can be summarised as follows:

• SLSA is the owner of registered trade mark number 722423 and accepted trade mark numbers 798803 and 810248.

Trade Mark No. 798803 filed on 30 June 1999 is a word mark - "Swim Between the Flags". 

Trade Marks Nos. 722423 filed 20 November 1996 with a priority claim to 23 September 1995 and 810248 filed 14 October 1999 are:

• Exhibit A to the declaration comprised print-outs from the Australian Trade Mark Online Search System (ATMOSS) for each of the marks.  In the print-out for Trade Mark No. 722423, the Trade Marks Office has described the mark as "Flag is Rect, Halved Red Atop Yellow".  This is a method of cataloguing and searching marks, rather than an official description.  The registration covers the following services in Class 41:

  Education relating to sport, health, first-aid and safety; providing of training; sporting activities including the provision of surf life saving services and the conduct of sporting events; all the foregoing being related to surf lifesaving.

  810248 is described by the Trade Marks Office as "2 Flags In & Breaking Annulus".  It covers goods and services in Classes 16, 35 and 41. 798803 covers goods and services in Classes 12, 16, 35 and 41.  Neither mark includes clothing in its specification.

  Only 722423, which was lodged on 23 September 1994, has a priority date earlier than the current application which was lodged on 29 July 1998.

• SLSA is the charitable, successor organisation to surf life saving organisations that have been in existence since at least 1907.  The SLSA is the peak body for the various surf lifesaving organisations throughout Australia.

• For at least 85 years the various life saving organisations have used a red and yellow flag (the flag), which is graphically represented by 722423, to mark out the areas in which life saving patrols operate.  Mr Nance also asserts that the flags are supplemented by a warning of "Swim Between the Flags", although Mr Nance does not indicate whether this is an oral or written warning. 

• Mr Nance asserts that the flags are distinctive of SLSA in that they constitute the principal means by which members of the public are able to recognise the presence of surf lifesavers and the safest swimming areas. 

• The flags are used in connection with equipment, products, publications, promotions, water and beach safety events and activities developed, used, staged and carried on by SLSA.  Exhibit B provides examples of how the flags are to be used in relation to beach patrols.

• SLSA receives support from various sectors of society, including governments, corporate sponsorship and undisclosed commercial operations.  Copies of letters from corporate sponsors are produced as Exhibits C through H. These letters indicate that these entities recognise and use the flag because of its connection with surf life saving activities in Australia.  These letters were provided in relation to trade mark applications 780742 and 780743.  As such, they were, presumably, prepared and supplied to the TMO as evidence of the SLSA's use of the flag to assist with section 43 considerations.  780742 and 780743 can be described as shape and colour marks, being a red and yellow flag and a red and yellow surf lifesaving cap, respectively.

• The SLSA has developed a valuable reputation and substantial goodwill in the flag in Australia.

• The flag is the subject of Australian Standard 2416-1995.  The Standard, of which the relevant portion is reproduced as Exhibit I, utilises the design set out in 722423 and confirms its use to designate bathing areas patrolled by lifesavers.

Grounds of Objection
As mentioned above, the grounds of opposition do not, with any great specificity rely on sections 43 and/or 60.  The applicant has understandably objected to this lack of specificity, and prepared submissions to deal only with section 44.  In my opinion, this was a reasonable approach to take.  At the hearing, the applicant agreed that it was in a position to proceed and made oral submissions relating to sections 43 and 60, as well as the validity of the notice of opposition. 

In assessing the notice of opposition, I was mindful of the lack of specificity, but it was clear to me at least, that sections 43, 44 and 60 were all raised to some degree.  Accordingly, and while I have taken note of Mr Willis' submissions, I am prepared to determine this matter on the basis that the opponent has validly relied on sections 43 and 60 in opposing the application.  In saying this, I have read the grounds strictly. I have given appropriate weight to the modified grounds on which the opponent sought to rely in its written submissions at paragraph 3.  I will deal with this further in my discussion relating to section 60.

Submissions
Mr Minahan, on behalf of the opponent submitted:

(a)   A connotation can result from the trade mark as a whole or from a sign contained within it.  In this sense, the prominence and context of a potentially deceptive or confusing element is an important consideration in determining whether the mark is likely to deceive or cause confusion. Deception or confusion could arise due to an implied endorsement or licence of services by a person or organisation (George Schmidt v Down to Earth (Victoria) Co-Operative Society Limited 41 IPR 632). In the present case, the mark as a whole and/or the flags and/or the phrase "Between the Flags" gives rise to a clear implication of involvement with the SLSA;

(b)   The applicant did not contest the history or purpose of the SLSA as declared by Mr Nance;

(c)   SLSA and its predecessor have used red and yellow flags and the phrase "Swim Between the Flags" for many years;

(d)   The flag and phrase have been used in conjunction with sponsors, promotional events and materials;

(e)   The image of the flags and their meaning have been ingrained into the consciousness of Australian citizens and visitors to Australia so as to be a true icon of Australian culture;

(f)    An Australian Standard has been produced as the result of long years of user by the SLSA and its predecessors and affiliated organisations;

(g)   "Between the Flags" and "Swim Between the Flags" (the phrases) have also enjoyed a long period of use;

(h)   Notwithstanding that only 722423 was lodged before the priority date, the balance of the marks referred to in Mr Nance's declaration are reflective of the existing reputation in SLSA in the applied for words and images; and

1. That I am entitled under section 55 to have regard to matters within my own knowledge, and, in particular, take "judicial notice" of the widespread recognition of the flags and the phrases as having a surf life saving context.  Further, that I may have regard to the general significance of the flags and the phrase "Between the Flags" in Australian culture.

Mr Willis' submissions on sections 43 and 60 can be summarised as follows:

Section 43 -

(a)   It is not necessarily appropriate for an entity, which may or may not have actually created a symbol which has now become part of the public domain, to attempt to claw it back in the manner proposed by the opponent;

(b)   In the present case, there is no real evidence to establish that "Between the Flags", as opposed to "Swim Between the Flags", has any particular connotation connected with the opponent;

(c)   If there is a connotation of affiliation or association with SLSA, it is not strong enough or material enough to bring into force the operation of section 43;

(d)   There are so many pre-existing marks of similar nature that there has been a dilution of any rights that the opponent might have had, such that the marks now evoke a connotation of beach culture, rather than of the opponent; and

(e)   If there have been past trade mark uses of the elements of the proposed mark, they have been restricted to services in Class 41, as opposed to clothing in Class 25.

Section 60 -

(a)   The opponent is limited, by virtue of its grounds of opposition, to relying on 722423, which is registered not as a flag, but as a dual-coloured rectangle;

(b)   There is no substantial identity nor deceptive similarity between 722423 and the proposed mark, or indeed, any other mark that the opponent may seek to rely by virtue of the material disclosed in the evidence;

(c)   There is no real likelihood of deception or confusion arising from the reputation in 722423 or the other marks; and

(d)  Finally, in the alternative - as the opponent presented no evidence of any use of its marks, including 722423, in relation to goods or services that were within, or closely related to, Class 25, the opponent cannot establish a commercial nexus between the opponent's alleged past use of the marks and the goods included in the application.  Accordingly, no reputation could have arisen in relation to clothing which would be likely to deceive or cause confusion as required by section 60.

Analysis
Section 43 - Trade Mark likely to deceive or cause confusion
Section 43 reads:

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.

Section 43, when used in opposition to registration, requires an opponent to show that:

(a)there is a connotation in the proposed mark or one of its parts; and

(b)because of this, the trade mark is likely, when in use, to deceive or cause confusion.

T.G.I. Friday's Australia Pty Limited v TGI Friday's Inc. [2000] FCA 720, is the most recent authoritative decision on the meaning of "connotation". The case confirms that the connotation must be in the mark itself, and cannot be determined as the result of external considerations, such as reputation.

The standard to be applied when testing for deception or confusion was set down by French J in Registrar of Trade Marks v Woolworths (1999) AIPC 91-499 at 39,695 (paragraph 43). In considering the phrase "likely to deceive or cause confusion", his Honour said:

The use of the word 'likely' in this context does not import a requirement that it be more probable than not that the mark has that effect.  The probability of deception or confusion must be finite and non-trivial.  There must be a 'real tangible danger of it occurring'.

The Trade Marks Office Draft Manual of Practice and Procedure Part 29 Paragraph 4 states:

If the inclusion of the name or representation is likely to lead the ordinary buying public to the conclusion that the person whose name or representation appears in the trademark, has endorsed the product or services in some way, then a ground for rejection exists unless the applicant has permission to use the name or representation in the trade mark upon the product or in relation to the services specified in the application.  

A similar approach was taken in George Schmidt v Down to Earth (Victoria) Co-Operative Society Limited 41 IPR 632. In that case, Hearing Officer Forno noted that deception or confusion might arise by virtue of an implied endorsement or licence of services by a person or organisation.

In the present case, the opponent submits that the flags which form part of the proposed marks, taken alone or in conjunction with the words "Between the Flags" give rise to an inevitable connotation of association, affiliation, approval, sponsorship or endorsement by the SLSA.  In particular, the opponent submits that this is true because of:

(a)   the iconic nature of [the] symbol of the life saving flags in Australian culture;

(b)   the established extensive promotional activity of the SLSA and its involvement in nationally televised sporting events; and

(c)   the nature of current merchandising practice.  (Paragraph 11 of the Nance declaration)

Notwithstanding these submissions, there was no impartial or anecdotal evidence put before me regarding the public's perception or recognition of the flag or the words "Swim Between the Flags" or "Between the Flags".  Nor was there any material which went further than merely asserting that SLSA had some proprietary rights over the flag symbol or the phrases.  By way of example, Mr Nance, who is the Chief Executive Officer of SLSA asserts at paragraph 12 that:

SLSA has developed a valuable reputation and substantial goodwill in the flag amongst beach users in Australia and members of the public generally, including tourists visiting Australia.

Exhibits C through H are form letters in which each company included the same assertion:

In our dealings with SLSA we have known the cap and flag to be associated with SLSA in the course of trade and recognise its valuable reputation and substantial goodwill in the provision of lifesaving services throughout Australia. 

In the absence of any evidence to support these assertions, I am not satisfied that any of these documents necessarily reflect the general public's perception of the flag symbol or the phrases.  However, the opponent did invite me to take "judicial notice" on this point and referred me to the decision of Hearing Officer Thompson in Amalgamated Television Services Pty Limited v Linda Cameron Pickard & Ors [1999] ATMO 103 (11 October 1999). In that case, Hearing Officer Thompson took what amounted to judicial notice of the notoriety of a fictitious seaside town featured in a television series.

With this in mind, I am satisfied that it is appropriate for me to have regard to my own knowledge in these matters.  I also believe it is appropriate for me to place on record the extent and basis of such knowledge.  From 1970 until the mid-1990s, I was a resident of the Gold Coast in Queensland, and spent a great deal of my time on its beaches and waterways.  I return to the Gold Coast on regular occasions.  As a result, I am well acquainted with the symbols that are the subject of this hearing, and the lifesaving movement in that region.  I am also aware of the extensive use of the flag and the phrase "Swim Between the Flags" to promote and ensure safe surfing and swimming. 

Based on this knowledge, I accept that the red and yellow flag used on beach patrols is a long-standing and well-recognised symbol associated with beach safety.  This is most certainly the case when the flag is used in a swimming area, or in advertisements and the like where a safety message is being relayed.  I also accept that the flag is used in relation to promotional activities, including sponsorships, community education, surf carnivals and the like.  The same can be said of the terms "Swim Between the Flags", "Bathe between the Flags" or simply "Between the Flags".  I am satisfied that each of these phrases is effectively interchangeable for the others.  I also accept that most people in Australia, who have had reason to venture onto or near patrolled Australian beaches will have been greeted by at least one of those phrases. 

It may also be true that the representation of the flag and "Swim Between the Flags" (the symbols) have become icons of Australia or beach culture.  The symbols are used in many, many ways.  However, not all of these uses are associated with either SLSA or any other specific life saving movement or association.  Rather, the symbols are used by many different organisations including tourism services, accommodation houses, local and state governments, and product manufacturers in the interest of surf and water safety.  I have been shown no evidence which suggests that all these uses are, or should be, by virtue of some ownership by SLSA, controlled by SLSA or any associated bodies.  Therefore, I am not satisfied that SLSA has some common law ownership of the symbols as the opponent has submitted.  Rather, I prefer the view put by the applicant that the symbols are effectively in the public domain.

Further, from a subjective point of view, I do not, when I see the symbols being used in this way, automatically assume that they are used with the approval or endorsement of SLSA.  I have been shown no evidence to contradict this.  Accordingly, I do not accept that the connotation arising from the use of the symbols is that the "user" is in any way associated with SLSA or that the use has been authorised by SLSA.  Rather, the message is accepted for what it is - general advice designed to promote beach safety and ensure a more enjoyable visit to the beach or other swimming area.  Accordingly, I am not satisfied, in a general sense, that there is any indication of affiliation, sponsorship, approval, endorsement or licence by SLSA when the symbols are used in this way.

Having so found, the issue of assessing whether the proposed mark, either as a whole or by virtue of a sign within the proposed mark, and when applied to the specified goods (clothing, hats, shorts, T-shirts, sweat shirts, dresses and caps), is likely to cause deception or confusion would appear redundant.  However, for the sake of completeness, I will say that I am satisfied that the considerations which I have set out above still apply, and there is no real, tangible risk of consumers being deceived or confused as to the source or authorised nature of the goods. 

In particular, I am not satisfied that there has been any use of the symbols on the uniforms of lifesavers. The formal requirements for the uniforms are set out at page 27 of Mr Nance's Exhibit B.  These requirements make no mention of either of the symbols.  On the contrary, the only words which are required for uniforms are "Surf Rescue".  Further, there is no evidence before me that the symbols have ever been used on such uniforms.  Accordingly, I cannot accept the submission of the opponent that there is a real risk that a consumer would be confused or deceived as to the origin of clothing bearing the applicant's mark.  I am not satisfied that a consumer would believe that they are purchasing "approved", "official" or "replica" life saving merchandise. Nor do I believe, given the widespread use of the symbols in the wider community, that a consumer would be confused or deceived into believing that clothing bearing the trade mark  was endorsed or affiliated with SLSA for say, fundraising purposes.

Finally, the proposed mark is, in my opinion, typical of "resort" or "beach" clothing.  Certainly, as the applicant's attorney pointed out, there are a number of "flag" marks that are already on the register.  Some evoke images of the ocean and maritime pursuits.  I believe that the applicant's mark, when it is taken as a whole, does the same.  I am not satisfied, even allowing for imperfect recollection, that there a real risk of a substantial number of beach-goers being confused as to whether the wearer of clothing bearing the proposed mark is able to render emergency assistance - Smith Hayden & Co Ltd's Appn (1946) 63 RPC 97 at 101.

Accordingly, I am not satisfied that the elements of section 43 ground have been made out, and this ground of opposition must fail.

Section 60 - Trade Mark similar to trade mark that has acquired a reputation in Australia
Section 60 reads:

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.

Accordingly, to satisfy section 60, the opponent has the burden of establishing the following elements:

1. a pre-existing trade mark;

2. substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

3. the acquisition of a reputation in Australia by the pre-existing trade mark; and

4. a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

The opponent's notice of opposition alleges that the applicant's trade mark is substantially identical with or deceptively similar to trade mark number 722423 - the red and yellow rectangle shape.  However, in his written submissions, Mr Minahan sought to broaden these grounds to include SLSA's "pre-existing marks ... namely the flags [722423], the expression "Swim Between the Flags" and the use of those in conjunction."

As I have already mentioned, due to the lack of specificity in the original notice of opposition, and in the interests of fairness between the parties, I intend to read the original grounds strictly.  This has the effect of confining my assessment to the relationship between the current application (768689) and the only trade mark referred to in the notice of opposition (722423).  I note that Mr Nance's declaration refers to 722423, 798803 and 810248.  However, in my opinion, the latter two are referred to only to give some indication of the history and activities of SLSA.  This was not sufficient to put the applicant on notice that the opponent wished to rely on marks other than 722423 at the hearing.

At the hearing, the opponent did not pursue substantial identity.  It did however, allege  deceptive similarity.  I am not satisfied that the applied for mark or any of its constituent parts are deceptively similar to trade mark number 722423.  Nor am I satisfied that 722423 has acquired a reputation in Australia which would lead to the applicant's mark causing confusion or deception amongst consumers or beach-goers.  In this regard, I repeat my findings in relation to section 43 as far as they are relevant.

Even if I were wrong in excluding a comparison between the applicant's mark and the phrase "Swim Between the Flags" either alone or in conjunction with 722423, I would not be reasonably satisfied that these alternative "trade marks" would satisfy the elements of section 60.  In particular, I am not satisfied that the opponent has made use of the phrase in a trade mark sense.  There is no evidence before me that SLSA or any other entity has used the phrase to distinguish their services or goods from any other entity as required by section 17. Rather, as I have already discussed, the phrase is used as a generic safety announcement by a number of entities.  Accordingly, as there is no trade mark use which can be pointed to, no reputation could have arisen in accordance with the terms of section 60.  Finally, and again for the reasons set out above in relation to section 43, I am not satisfied that even if there were a trade mark and resultant reputation, that the requisite likelihood of confusion or deception would arise.

Accordingly, the section 60 ground must also fail.

Conclusion
Neither of the grounds of opposition have been made out.  Accordingly, subject to the expiry of the relevant appeal period and the following comments, I direct that trade mark application number 768689 may proceed to registration.

During the course of examination of this application, a section 44(3) issue was raised relating to another trade mark which used the phrase "Swim Between the Flags" with a graphic device - trade mark number 745035.  The applicant for that mark has consented in writing to the registration of the present trade mark. I therefore direct that the following endorsement be entered on trade mark application 768689 prior to registration: Provisions of section 44(3) applied.

Costs
There is no reason that the costs here should not follow the cause. Accordingly, I direct that the opponent is to pay the applicant's costs in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Geoff Purvis-Smith

Hearing Officer

6 July 2001