Swamp Productions Pty Ltd v D.C. Comics Inc

[1993] ATMO 15

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by D.C. COMICS INC to the registration of Trade Mark application numbers 470416 and 470417 in the name of SWAMP PRODUCTIONS PTY LTD

On 6 August 1987 SWAMP PRODUCTIONS PTY LTD (the applicant) of Unit 67B, 283 Given Tce, Paddington Qld lodged applications 470416 and 470417 to register the word SWAMP as illustrated below.   The goods covered by 470416 are 'Paper, cardboard, and goods made from these materials, not included in other classes; printed matter; stationery', and by 470417 are 'Games and playthings'.   A470417 carries the following endorsement

It is a condition of registration of this mark that it will only be used on games and playthings featuring the likeness of characters of the cartoon strip known under the name SWAMP.

Acceptance of the marks was advertised in the Official Journal - 470416 on 26 April 1990 and 470417 on 29 March 1990. As provided by s.49 of the Trade Marks Act, and following extensions of time of three months in each case, notices of opposition to registration were lodged by DC COMICS INC (the opponent), a New York Corporation of 75 Rockefellar Plaza, New York USA.   The relevant dates being 25 October 1990 for 470416 and 28 September 1990 for 470417.    
Service of evidence by both parties was completed on 22 October 1992, and on 4 January 1993 the opponent requested the matter be set down for hearing.   The hearing was arranged for Canberra on 25 January 1993.   Mr Andros Chrysiliou, a solicitor of Chrysiliou Moore Chrysiliou, Sydney, represented the opponent and Ms Yvonne Clark, a director of the applicant, appeared for the applicant.

Several grounds of opposition were set out in the notices of opposition but at the hearing Mr Chrysiliou advised he would be putting submissions on the matter of proprietorship of the mark and to the question of the distinctiveness of the mark or its capacity to become distinctive of the applicant's goods.   Referring to 470417(28) Mr Chrysiliou said that, in addition to these two grounds, he would address an objection under s.33 that the mark was substantially identical or deceptively similar to A283553(28).    I will deal with each these grounds in turn.

Proprietorship
Evidence on this matter from both parties consists of statutory declarations and attachments.    In support of the opposition and of relevance to the proprietorship issue Mark Smale, General Manager of Warner Bros Consumer Products which is the Australian licensing and merchandising agent for DC Comics, Inc., lodged two statutory declarations.   Examples of use of the mark SWAMP THING were attached to his declaration of 27 June 1992.   These attachments are undated except that one contains a logo indicating that it could not have been published before 1985 and a second includes a signed drawing dated '7.86'. 

In answer to the opposition Gary Clark, a director of the applicant, lodged a declaration with examples of use of the mark SWAMP.   I have been unable to locate dates on any of these attachments.

As neither side has presented firm evidence of first use of their marks I must take each statutory declaration at face value.   Mr Smale has not provided information as to how long he has held his present position but states he has access to, and is familiar with, the history of the opponent's trade marks and properties.   Because of his position I will assume he has wide knowledge of his company's activities.   Mr Clark is the creator and cartoonist of the SWAMP cartoon strip as well as being a director of the applicant.

Mr Chrysiliou's submissions were concerned with the statements in Mark Smale's second declaration of 23 July 1992.   Mr Smale stated that SWAMP THING comic books have been displayed for sale, offered for sale and sold throughout Australia since late 1972.   From late 1972 to mid 1980's comic books featuring the SWAMP THING trade mark and character were on sale in specialty comic book stores and through newsagents and news stands.   Since the mid 1980's the marketing of SWAMP THING comic books has been centred in the 40 to 50 specialty comic stores situated throughout Australia.   On the matter of proprietorship Mr Chrysiliou referred me to Rolewa Rentals Pty Ltd v Champagne Moet et Chandon 5 IPR 171, Re the Registered Trade mark "Yanx" Ex parte Amalgamated Tobacco Corporation Limited (1951) 82 CLR 199, In re Hicks Trade Mark (1897) 22 VLR 636, Moorgate Tobacco Co Ltd v Philip Morris Limited and Another (1984) 156 CLR 414, The Seven-Up Co v O.T. Ltd and Another (1947) 75 CLR 203. He submitted that the opponent has demonstrated prior use in Australia of the mark SWAMP THING. It was also Mr Chrysiliou's submission that the word SWAMP is separately rendered in this mark and is its dominating feature. Mr Chrysiliou put to me that the opponent's comics are the same goods as those covered by the class 16 application and that the endorsement on the class 28 application, linking the goods to the comic strip characters, placed these games and playthings as goods of the same description as class 16 goods. Mr Chrysiliou submitted that the onus was on the applicant to show there was no likelihood of deception and confusion and this it had failed to do (Dunn's Trade Mark 7 RPC 131, Sundream Pty Ltd v Hartland Investments Pty Ltd 13 IPR 302).

In her submission Ms Clark referred to the commencement date of the applicant's use of the mark.   Gary Clark's declaration states that the mark was first used in Australia in 1981.   He further states that most of the 33 newspapers in which the SWAMP cartoon appears were secured at, or about, that time.   Extensive use has been made of the mark since then and this includes use on a variety of other  products - some of which were shown in exhibits.

The evidence before me indicates that, dating from 1972, the opponent has rights in Australia in the mark SWAMP THING for comic books.   These goods are included in the specification of A470416.   They are not goods included in the specification of 470417.   While 470417 carries an endorsement linking it to the cartoon strip SWAMP, the goods covered by this application are 'games and playthings'.   Mr Chrysiliou's reference to the decision in Rolewa supra, where it was held that prior rights in a mark for certain goods could be extended to cover goods of the same description, cannot apply in this case. As noted at p.158 and p.159 of D.R. Shanahan's Australian Law of Trade Marks and Passing Off, 2nd ed., it is unusual for a claim to proprietorship to extend to goods other than those on which the claim is established by use.   Mr Shanahan considers it may well be that s.40 applies only where the goods are the same goods and any further consideration should proceed under s.28(1).   If this is not so I consider at the very least, the test which must be applied is that which is followed to decide whether goods are of the same description for the purposes of s.33 of the Act.   It may be that this test provides too broad a consideration in the matter of proprietorship and further enquiries as to actual circumstances of a particular trade would be required.   Applying the tests in John Crowther & Sons (Millnsbridge) Ltd's Appn. (1948) 65 RPC 369, I find that games and playthings are not goods of the same description as comic books so I will not therefore further consider these sets of goods. The opponent therefore has not used its mark in respect of the goods of A470417.

Three attachments to Mr Smale's declaration of 27 June 1992 show the opponent's mark in use.   In addition to the words, a character referred to in the declarations as the 'SWAMP THING character' also appears.   When referring to the decision in In re Hicks Trade Mark supra Mr Chrysiliou submissions went to Holroyd J's use of 'the word' not 'the mark'.   It must be said that in Hicks these were identical. To succeed in claiming proprietorship under the provisions of Section 40(1) of the Trade Marks Act the opponent must show that he has rights in the trade mark.   Two covers of the opponent's comic books were submitted and next to the word THING on each of these are recognised abbreviations that the words are being used as trade marks.   The letters TM in a circle appear in one and the letter R in a circle in the other - doubtless this latter refers to a trade mark registration in some other jurisdiction as the marks have never been registered in Australia.    The Kendall Co v Muslyn Paint and Chemicals (1962) 109 CLR 300 and Tavefar Pty Ltd v Life Savers (Australasia) Ltd 12 IPR 159 refer to the application of s.40 in cases where the marks in dispute are identical or substantially identical. I consider that I am entitled to compare the marks side by side as noted by the High Court in Shell Co (Aust.) Ltd v Esso Standard Oil (Aust.) Ltd (1961) 109 CLR 407. Mr Chrysiliou's submission that the word SWAMP is rendered separately from THING in the opponent's mark does not change the mark from being two words with a specific meaning, especially when associated with a particular character, to one word having quite a different meaning. I have not been shown that the opponent has any rights in the word SWAMP standing alone.

On the question of proprietorship then, even though I find that the opponent has demonstrated use of its mark on goods included in A470416, it has not defeated the applicant's claim for use of its different mark on those goods.   As noted above, the opponent's  mark has not been used on the same goods or goods of the same description as the goods covered by the applicant's different mark in A470417.   As there is no likelihood of confusion by use of this other mark, there is no onus on the applicant to show there has been no confusion.

Distinctiveness
Mr Chrysiliou submitted as a further ground of opposition that the trade mark SWAMP is not distinctive nor capable of becoming distinctive of the applicant's goods.   He put to me that SWAMP is a common English word with direct reference to a particular area of land.   Other traders may wish to use it on printed matter such as books, cards, posters and the like to legitimately describe their goods as containing information about swamps or swamp life.   He referred to future uses to which the resources of swamps might be put - for example development of paper produced from trees native to swamps.  He referred to exhibits attached to Mr Clark's declaration which showed use of the word as a descriptor - within the cartoon one character says 'Croc hunters are in the swamp' and a boat is labelled 'swamp tours', and one of the books is titled 'Head high in the swamp'.

In support of this objection Mr Chrysiliou lodged a statutory declaration in which he outlined a number of uses of the word 'swamp'.   In this declaration he noted that

Harriet Beecher Stowe published a book titled 'Dread: A Tale of the Great Dismal Swamp' in 1856:

one definition of SWAMP is an area of wet, spongy land or marshy ground supporting a wide variety of insect and animal life:

certain animal names contain the word as a descriptor or qualifier, and that 'swamp' is also used as a descriptor or qualifier on boats and buggies used in these areas:

a particular type of music and a specific types of dress are known as 'swamp' style

Mr Chrysiliou referred me to comments by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 in respect of excluding words from the language which a manufacturer may wish to use in the course of his business. In the matter of direct reference and descriptive words, he referred me to Burger King Corp v Registrar of Trade Marks (1973) 128 CLR 417 and Mark Foys Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190. In respect of the specific meaning of 'swamp' in respect of music and fashion he referred me to the decision in Eutectic Corp v Registrar of Trade Marks (1980) 32 ALR 211. Mr Chrysiliou concluded his submissions on these grounds of objection by noting that traders should be able to describe swamp music, write about swamp fashion and free to produce 'swamp' dolls without concern that the word SWAMP is not available to them.

Ms Clark submitted that registration of the word 'swamp' will not prevent other traders using it in respect of swamp animals and the vehicles cited in Mr Chrysiliou's declaration.   Additionally, registration for these goods would not adversely affect the clothing and music industries.   Ms Clark referred to Gary Clark's declaration noting that the animals in the comic strip are found in Australian swamps and the word does have some reference to the cartoon strip but that does not prevent it functioning as a trade mark.   She also noted that the Registrar did not refuse the application.   From Mr Clark's declaration, she pointed me to substantial evidence that the mark is widely known in Australia by a very large number of people as it has been seen extensively around Australia for 10 years or more.   The 33 Australian newspapers in which it appears have a combined daily circulation of 3 million, which means the readership is higher than that.   Most of the newspapers in which the cartoon strip appears have run it since at least 1984.   It first appeared in Australian newspapers in 1981.   In addition use of the SWAMP characters and the word SWAMP in textbooks, pamphlets, posters and journals has been authorized by her company.   Examples of use were tendered as annexures to Mr Clark's declaration.

Having considered these submissions I do not consider that the word SWAMP has a direct reference to 'paper, cardboard and goods made from these materials, and stationery' which are included in the specification of goods covered by 470416.   The development of papyrus some 2000 years ago has already demonstrated that swamp vegetation may be used to produce paper but so far as I am aware there has been no need to use the word 'swamp' to describe this product.   There is no objection to registration for paper and cardboard goods and stationery.

However I agree with Mr Chrysiliou that other traders must be free to use the word SWAMP in respect of books, calendars, posters, post-cards and the like concerned with swamps.   'Swamp' is the most apt word to use to describe general printed matter which has as its subject matter, swamps.   There are other words which are close - bog, marsh, mire, wetlands - but these are not interchangeable with swamp and so the word is not distinctive of printed matter per se.   The matter of direct reference to the content of printed matter was canvassed in Intermed Communications Inc.'s Appn (1985) AIPC ¶90-256, where it was found that NURSING 79 was not capable of becoming distinctive of a magazine.

I do not believe the same objection applies when SWAMP is used on 'cartoon strips'.   As a general rule, cartoon strips are a fanciful series of drawings in narrative form relating comic incidents or adventure stories in the continuing development of a theme.   While the cartoon strip may be loosely based in a swamp, or the subject matter concerns fanciful swamp life, I consider SWAMP is not a word which other traders would need to use, in good faith, on these goods.   This being so, the mark, when used in connection with cartoon strips, satisfies the requirement of s.26(1).   S.26(1) requires that for a mark to be distinctive it must be adapted to distinguish a person's goods in the course of trade from those with which he is not connected.   The applicant has submitted evidence of long and substantial use of the mark on cartoon strips.   Notwithstanding the evidence, and because I find this mark has no direct reference to the goods, 470416 may proceed to registration for 'printed matter being cartoon strips' in addition to 'paper, cardboard and goods made from these materials; and stationery'.  

In respect of 470417 I do not consider that SWAMP has any meaning which could be considered apt for normal description of games and playthings.   I agree with Ms Clark that registration of this mark will not prevent other traders from using words like 'swamp boat' or 'swamp buggy' to describe their toy vehicles.   Neither will registration prevent the use of Swamp Wallaby, Swamp Pheasant, Swamp Eel and similar words to describe their soft toys or animals.   Mr Chrysiliou's submission that the reference to a style of clothing closely related to, or a derivative of, 'punk', prevents registration in class 28 as it would cause problems for those wishing to trade in 'swamp dolls' is not persuasive.   No submissions have been made that this is a likely trade or indeed a trend in the marketplace.   Problems may exist for registration in respect of clothing or music but for these goods no objection under s.24 exists in respect of 470417.   

S.33 - Registration A283553(28)
The opponent has no registered trade marks which could be considered as substantially identical or deceptively similar to either of these marks.   As the claims under S.40 and S.24 have been unsuccessful, registration A283553(28) for the mark SWAMP FOX in the name of Minnesota Mining and Manufacturing Co. for the goods 'Fishing rods and all other goods included in this class' has been raised as a ground of opposition to 470417(28).   This registration carries a disclaimer of the word FOX of its surnomial significance.   In passing I note that A283553 was raised as a citation in the first examination report for this application.   It was withdrawn when the attorney proposed the endorsement set out at the commencement of this decision.   A letter of consent from the cited proprietor was also provided at that time.

Mr Chrysiliou noted that a letter of consent to registration had been provided by the registered proprietor but submitted that the Registrar has recognised that letters of consent do not take into account the public interest as they are an arrangement between traders.   He referred me to the tests for comparing marks set out in Shell Co. (Aust.) Ltd v Esso Standard Oil (Aust.) Ltd (1963) 109 CLR 407. He submitted the doctrine of imperfect recollection was applicable in the matter (Rysta Ltd's Appn (1943) 60 RPC 87) especially as children would be purchasing toys and playthings.

In submitting that SWAMP was the prominent and distinctive feature of SWAMP FOX Mr Chrysiliou referred me to Application by Radford Chemical Company Pty Ltd 16 IPR 615 in which Seven Up Co v Bubble Up Co Inc (1987) AIPC ¶90-433 was applied. He noted that the word 'swamp' in Swamp Fox was rendered separately from 'fox'. Mr Chrysiliou further submitted that the marks would appear to be related as found in John Fitton & Co Ltd's Appn (1949) 66 RPC 110, Baron Phillipe de Rothschild S.A.'s Appn  (1988) IPD 10096 and RKH Pty Ltd v Christian Dior 6 IPR 78. Mr Chrysiliou then addressed the endorsement applied to this application and set out at the beginning of this decision. He submitted that the application is not restricted for use on specific characters but could be applied to any series of swamp-type animals or swamp settings. It was also submitted that an important point to remember is that a trade mark does not have to be used on goods in a strict trade mark sense but can have other functions and be used in different contexts (Shell Co (Aust.) Ltd v Esso Standard Oil (Aust.) Ltd supra).  
Ms Clark advised that she understood the goods to which SWAMP FOX is applied are toys which can link one tree with another.   She also directed me to the letter of consent provided by the registered proprietor of A283553.   I note that the goods specified separately from 'all other goods included in thi class' are 'fishing rods'.

For the purpose of deciding whether or not the two marks are substantially identical I should compare them side by side.   While these marks both contain the word SWAMP, they are clearly distinguished by the addition in A283553 of the word FOX.   The disclaimer of the word FOX does not carry through to the market place and what is seen and remembered is the whole mark.   I find these two marks are not substantially identical.   Different tests are applied to decide if they are deceptively similar.   I do not put too much emphasis on Mr Chrysiliou's argument that children as purchasers may have imperfect recollection of these marks.   If they are using their own money (or anyone else's) to buy goods for themselves, children are well able to recall and recognize trade marks.   The case law, however, goes beyond imperfect recollection and Mr Chrysiliou quite rightly pointed me to circumstances where the essential feature of one mark was incorporated into another and also where marks appear to be related.   (Application by Radford Chemical Company Pty Ltd supra; John Fitton & Co Ltd's Appn supra; Baron Phillipe de Rothschild S.A.'s Appn supra).   I agree with him that SWAMP is an essential feature of A283553.   Also when seen together the marks could indeed appear as part of a related group of marks.  

I have not found any reference to 'swamp fox' in the standard dictionaries.   But given the number and variety of other animals prefixed by 'swamp', it is not such an unlikely combination that the public would recognise the mark as invented.   This being the case it is quite likely that confusion or deception could occur between the two marks.   There is no argument that the two sets of goods of these marks are the same goods, as A283553 covers all goods in class 28.

In some cases the Office does consider a letter of consent from the proprietor of a cited mark helpful (Trade Mark Examiners Manual 5.03.03).   As noted there, they may be of assistance in border-line cases where the marks are not considered strongly deceptively similar or where there is some distance between the goods/services of the applications.   Here, however, neither of these circumstances is present.   The goods are the same and the marks are deceptively similar - linked because of the common distinctive element and the likelihood that the marks would be seen as being related.   While the goods of both marks remain the same, under the provisions of s.33(1) then A283553 acts as a bar to registration of 470417.

S34 provides for registration of deceptively similar trade marks where honest concurrent use or prior use of the marks can be demonstrated by an applicant.   A283553 is registered from 26 November 1974 and as Mr Clark states that a licensing contract was signed to produce soft toys in 1986 the provisions of s34(2) may not be applied.   The evidence in respect of the soft toys - the only toys and playthings covered by Mr Clark's declaration - is very slight.   It appears that a proto-type was developed but it is not clear that the mark has in fact been used on goods which are, or have been, in the market place.   There is insufficient evidence to support a case for honest concurrent use under the provisions of s.34(1).  

Costs
Mr Chrysiliou telephoned me on 27 January 1993 with a request that I consider the question of costs, which he overlooked at the hearing.   I advised him I would keep this in mind.

Decision
I have found that the opposition fails on the grounds of proprietorship of the mark SWAMP in respect of both applications.

In respect of the distinctiveness of the mark, I found there was no objection in respect of 470417(28).   In respect of 470416 I found that while the mark is descriptive of some of the goods of the specification, this application may proceed to registration for 'Paper, cardboard, and goods made from these materials, not included in other classes; printed matter being cartoon strips; stationery'.   I will allow two months from the date of this decision for the application to be amended or it will be refused.

The third basis of opposition is directed to 470417(28) under the provisions of s.33 and I have found that A283553 is an objection to registration of this application.   As there were no grounds for applying the provisions of s.34, registration of 470417 is refused.

As each party has been partly successful in this matter I direct that each bear its own costs.

Patricia Wearne
Senior Examiner
22 February 1993