Surf Life Saving Queensland Inc (SLSQ) v Perigian Beach Surf Club Incorporated

[2020] ATMO 65

TRADE MARKS ACT 1995

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

Re:Opposition by Surf Life Saving Queensland Inc (SLSQ) to registration of trade mark application number 1907024 (class 41) – PEREGIAN BEACH SL.S.C. (Device) - in the name of Perigian Beach Surf Club Incorporated.

Delegate:

Jock McDonagh

Representation:

Opponent: Ian Fullagher of the Opponent

Applicant: No appearance and no submissions

Decision:

2020 ATMO 65

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 43 ground established – registration refused.

Background

1. This is an opposition brought by Surf Life Saving Queensland Inc (SLSQ) (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Peregian Beach Surf Club Incorporated (‘Applicant’): 

Trade Mark:	(‘Trade Mark’)
Application Number:	1907024
Filing Date:	14.02.2018 (‘priority date’)
Services:	Class 41: Sports club services

1. Following the advertisement on 5 July 2018 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 12 July 2018.  The Opponent then filed a Statements of Ground and Particulars (‘SGP’) 2 August 2018, which was assessed by this office as adequate. The SGP raised one ground of opposition under s 43 of the Act. The Applicant filed a Notice of Intention to Defend on 31 August 2018. The parties then filed their evidence in line with the statutory procedure.

2. I heard the matter in Canberra on 20 August 2019 as a delegate of the Registrar of Trade Marks. Ian Fullagher of the Opponent appeared by telephone link. The Applicant is not professionally represented, and it did not appear at the hearing or file any submissions.

   Evidence

3. The following evidence was filed in the opposition:

Declarant	Status	Date	Exhibits
Evidence in Support
John Brennan (‘Brennan declaration’)	Chief Executive Officer of the Opponent	19.12.18	JB-1 to JB-5
Evidence in Answer
Rob Neely (‘Neely declaration’)	President of the Applicant	21.01.19
Evidence in Reply
Craig Williams (‘Williams declaration’)	General Manager Corporate Services of the Opponent	21.03.19	CW-1

1. Evidence from both sides indicates that there has been a history of disagreement between the Applicant which represents some local community members associated with the locality pf Peregian Beach, and the Opponent being the peak body representing Surf Life Saving Clubs in Queensland. Much of the evidence seems to go to whether the application was made in good faith, which is not relevant in these proceedings.

2. The Brennan declaration states that the Opponent is the governing body for surf life saving in Queensland, comprising 58 affiliated surf life saving clubs in Queensland in six regional branches.[1] It is directly affiliated with and part of Surf Life Saving Australia and the International Life Saving Federation.[2]

   [1] Brennan Declaration at [6].

   [2] Brennan Declaration at [7].

3. According to the Brennan declaration, there was an affiliated surf lifesaving club – Peregian Beach Surf Life Saving Club – that operated at Peregian Beach from 1962 until 1974. That club was re-established in 1985 but closed in 2014.[3]

   [3] Brennan Declaration at [8].

4. The defunct club transferred its membership and assets to the Noosa Heads Surf Life Saving Club, an affiliated club of the Opponent. The Noosa Heads club provided volunteer lifesaving services at Peregian Beach.[4]

   [4] Brennan Declaration at [9] and acknowledged in the Neely Declaration at [16].

5. In 2018, the Applicant formed an association that sought to provide surf club services to Peregian Beach delivered by a local organization.[5] The Applicant registered the Business Name PEREGIAN BEACH SLSC with ASIC.[6]

   [5] Brennan Declaration at [10]m and Neely Declaration at [2] – [4].

   [6] Neely Declaration at [3].

6. The initials SLSC are an abbreviation of Surf Life Saving Club and, in this context, denotes affiliation with the Opponent.[7] The Applicant argues that the Opponent does not own a trade mark or business name ‘SLSC’, and provides a lengthy list of alternative identities of the initialism SLSC.[8]

   [7] Brennan Declaration at [16].

   [8] Neely Declaration at [22].

7. The Applicant states that it has never held itself out to provide surf lifesaving services at Peregian beach or that it is affiliated with the Opponent.[9]

   [9] Neely Declaration at [23] and [24].

8. Much of the Neely declaration is commentary that is more in the manner of submissions, which I will take into consideration where relevant.

   Grounds of Opposition, Onus and Standard of Proof

9. As indicated in the SGP, the Opponent only nominated the ground of opposition under s 43. To oppose the application successfully the Opponent needs to establish that ground. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

10. The onus of proof in an opposition rests upon the Opponent.[10]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[11] The date at which the rights of the parties is to be determined is 14 February 2018, being the priority date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[12]

    [10] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

    [11] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

    [12] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

    Discussion

11. Section 43 provides:

    43Trade mark likely to deceive or cause confusion

    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.

12. In McCorquodale v Masterson[13] (‘McCorquodale’), Kenny J stated:

    The word “connotation” is defined in The Oxford English Dictionary (Oxford, 2nd ed, 1989) as meaning:

    1. The signifying in addition; inclusion of something in the meaning of the word besides what it primary denotes; implication.

    ...

    b. That which is implied in a word in addition to its essential or primary meaning.

    [13] [2004] FCA 1247

13. To establish a ground of opposition under section 43, there must be an inherent connotation within the trade mark which is likely to deceive or cause confusion. The comments of Gyles J in Pfizer Products Inc v Karam[14] outlined the history of s 43 of the Act, stating that:

    [14] Pfizer Products Inc v Karam (2006) 70 IPR 599 (at [52 -53]).

    Section 43 does not have a long pedigree. It was enacted pursuant to Australia’s obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). TRIPS and the 1992 Working Party Report led to a 1994 Bill containing the following cl 42(2):

    ‘An application for the registration of a trade mark in respect of particular goods or services must be rejected if the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion regarding:

    (a)the nature, quality, origin, intended purpose, or some other characteristic, of the goods or services; or

    
    (b) any connection or relationship that they may have with any particular person.’

    That Bill was enacted but never came into force. In the 1995 Bill (and Act) cl 42(2) of the 1994 Bill was replaced by what is now s 43 of the 1995 Act. The Explanatory Memorandum stated that cl 43 provides:

    ‘That an application for registration must be rejected if the trade mark ... because of some signification inherent to it, would be likely to deceive or cause confusion regarding a characteristic of the goods or services.’
    [Emphasis added]

    It seems that the final form of s 43 is a wider version of the earlier clause with a similar purpose.

    ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question…

14. In Primary Health Care Limited v Commonwealth of Australia[15]Jagot J stated:

    [15] [2016] FCA 313 at [17]

    Insofar as use of a trade mark would be likely to deceive or cause confusion is concerned (the s 43 issue, on which the respondents bear the onus):

    (1)      The section:

    looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion... (Woolworths at [79]).

    (2) “In order for s 43 to apply, the Court must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations” (McCorquodale v Masterson [2004] FCA 1247; (2004) 63 IPR 582 at [26]).

    (3) The purpose of s 43:

    is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks... (Pfizer Products at [53]).

    (4)      “Whether there is a likelihood of deception or confusion is to be answered ‘not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered’: Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 at 362” (Scotch Whisky Association v De Witt [2007] FCA 1649; (2007) 74 IPR 382 (Scotch Whisky Association) at [52]). Deceptive similarity must be considered against the “background of the usages in the particular trade” (Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 410).

    (5)      “The probability of deception or confusion must be finite and non-trivial. There must be a ‘real tangible danger of its occurring’ - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15; (1954) 91 CLR 529 (sic) at 594-5 per Kitto J” (Woolworths at [43]). As such, the mere possibility of confusion is insufficient (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 (Southern Cross Refrigerating) at 595). Further, that “exceptionally stupid or careless consumers might be confused does not suffice” (Scotch Whisky Association at [61]).

    (6) “In order for s 43 to apply, the connotation must be clear and there must be a real and tangible danger that the trade mark, in the context of the relevant services, would be likely to deceive or cause confusion. It would be sufficient if there is ‘real and tangible danger’ of consumers having ‘reasonable doubt’ or being ‘caused to wonder’ about this issue: cf Southern Cross Refrigerating...at 595, per Kitto J” (Accor Australia at [269]).

    (7)      All surrounding circumstances must be considered including the circumstances in which the marks will be used, the circumstances in which the services will be provided, and the character of the probable users of the services (Southern Cross Refrigerating at 595).

    (8)      The test is not confined to a particular method of use of the marks; the question is “what can the applicant do if he obtains registration?” (Southern Cross Refrigerating at 595).

15. The Trade Mark itself is a logo that consists of a circular device with colours and drawings to suggest blue sky over waves. Superimposed on the circular device are the words PEREGIAN BEACH and an emu (‘peregian’ is apparently the word for emu in the local indigenous language). At the feet of the emu is the initialism ‘S.L.S.C.’. Except for the initialism, the features of the Trade Mark obviously tend to describe the location, Peregian Beach.

16. The operative test is the secondary meaning which arises from the reasonable expectations of the consumer after considering the meaning in the context of the services provided. It does not follow that all trade marks containing descriptive matter would attract a s 43 objection. Only if there is a real and tangible danger that the consumer’s expectations may turn out to be false and result in confusion, would section 43 be triggered.

17. The connotation of the initials ‘S.L.S.C.’ within the Trade Mark upon which the Opponent relies is, in the context of sports club services, that the Applicant is an operational surf lifesaving club under the jurisdiction of the Opponent.

18. Therefore, the Opponent submits that members of the public seeing such services under the Trade Mark would be confused or deceived into wondering or believing that there is some affiliation with, or sponsorship or endorsement by the Opponent as the relevant governing body for aquatic rescue.

19. I am satisfied that the initials ‘S.L.S.C. contained in the Trade Mark is a connotation that the Applicant is somehow affiliated with, or approved by the Opponent and is likely to deceive or cause confusion. Therefore, I am satisfied that the ground of opposition under section 43 of the Act has been established.

    Decision

    Section 55: Decision

    (1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a) to refuse to register the trade mark; or

    (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:  For limitations see section 6.

20. Subsection (3) is not applicable in this case. The ground of opposition under s 43 of the Act has been established. I accordingly refuse to register trade mark application 1907024.

    Costs

21. The Opponent sought its costs.  As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant in accordance with Schedule 8 of the Regulations.

    Jock McDonagh

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    24 April 2020