Sydney Gay and Lesbian Mardi Gras Limited v Gary Edwin Pike

[2002] ATMO 55

TRADE MARKS ACT 1995

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

Re:Opposition by SYDNEY GAY AND LESBIAN MARDI GRAS LIMITED to registration of trade mark application 766880(25) - MR. MARDI GRAS - filed in the name of GARY EDWIN PIKE.

Background

Gary Edwin Pike filed trade mark application no. 766880 on 8 July 1998. The subject of the application is the trade mark MR. MARDI GRAS, in class 25 of the International (Nice) Classification of Goods and Services, for "Apparel, clothing, footwear, headgear".

The trade mark application was accepted at the first report, and its acceptance was advertised in the Official Journal of Trade Marks on 5 November 1998.

On 5 May 1999, after an extension of time, a notice of opposition to registration of the trade mark was filed by a company identified in the notice as Gay & Lesbian Mardi Gras Ltd ("the opponent"). Eleven grounds of opposition were listed in the notice.

The opponent's evidence in support, applicant's evidence in answer and opponent's evidence in reply was duly served and filed. At the end of the process, the opponent requested a hearing of the opposition. This came before me, as a delegate of the Registrar, in Sydney, on 13 March 2002. Mr Gary Pike, assisted by Mr Gernot Hoover (his accountant and friend), represented himself at the hearing. Mr Richard Cobden, of Counsel, instructed by Ms Rebecca Ordish of Baker & McKenzie, Sydney, represented the opponent.

Evidence

Evidence in support

The opponent's evidence in support comprises a statutory declaration by Mr Mark Goggin, dated 4 May 2000. Mr Goggin describes himself in his declaration as "the General Manager of the Sydney Gay and Lesbian Mardi Gras ... an incorporated association."

Mr Goggin relates in his declaration a history of the Sydney Gay and Lesbian Mardi Gras, which he refers to simply as "the Mardi Gras". He says that, since its inception in 1978, the Sydney Gay and Lesbian Mardi Gras has grown in size, participation and events. He says:

The Mardi Gras currently encompasses five main events which are all held annually: a Parade, a post-Parade Party in February, a Festival and a Fair Day and another party in October. These five events are all held under and use the MARDI GRAS mark.

The Mardi Gras began as a commemorative march down Oxford Street on 24 June 1978 to mark International Gay Solidarity Day. Approximately 1000 people attended that march. Another parade was held on the same day in 1979, and it was at that time the name 'Mardi Gras' was adopted for the march. Since 1981, the Mardi Gras Parade has been held in the month of February to turn the Parade into a summer event. In 1994, the Parade was televised for the first time on the ABC, and in 1997 it was broadcast on commercial television. By 1995, the Mardi Gras Parade was attracting participants from every state and territory in Australia, and included many from overseas. From the mid-1990s, the Parade has consistently attracted crowds in excess of 500,000 reaching a high point in 1998 for the 20^th anniversary Parade, which had an official crowd estimate of over 750,000. In 2000, over 1.5 million viewers watched the Parade across various media forms - cable, internet and free-to-air television.

Mr Goggin goes on to describe the parallel growth in popularity of the associated events promoted under what he describes as the MARDI GRAS mark:

• The Mardi Gras post-Parade Party, which now spreads out over six halls of the Sydney Showground, with approximately 25,000 people attending every year, and tickets usually sold out six weeks in advance.

• The Mardi Gras Festival, which extends over several weeks and encompasses art, photography and craft exhibitions, a film festival, forums for discussion and debate, theatrical performances, sporting events and fashion parades. Rural towns in country New South Wales also host some associated events.

• The Mardi Gras Fair Day, in Hyde Park, which attracts more than 50,000 people annually to its stalls, equestrian events, aerobics displays and musical bands.

Mr Goggin declares:

A comprehensive impact study of the 1998 Mardi Gras Parade, post-Parade Party, Festival and Fair Day found a total economic impact of $99 million on the city of Sydney. The Mardi Gras Parade is the largest night time outdoor parade in the world. The Mardi Gras Festival is the largest gay and lesbian festival in the world.

Mr Goggin then describes in his declaration the "importance of costume and clothing to the Mardi Gras" and lists some of the merchandise, including clothing, associated with the Sydney Gay and Lesbian Mardi Gras. He also describes the significant preparation which co-ordination of the various events requires each year. He says that, although the events are not run for profit, their organisation requires the permanent full-time or seasonal employment of almost forty people, in addition to the work done each year by thousands of volunteers.

Mr Goggin's declaration is accompanied by Annexures A to M, and Exhibit MG-1, being mainly photocopied examples of posters and merchandise relating to the Sydney Gay and Lesbian Mardi Gras.

Evidence in answer

The applicant's evidence in answer comprises a statutory declaration by Mr Martin Pollock, dated 8 February 2001. Mr Pollock's status as a declarant qualified to give evidence on Mr Pike's behalf is not explained in the declaration. However, for clarity, I will explain that it is apparent from other correspondence on the application file that Mr Pollock is a Legal Practitioner with the patent and trade mark attorney firm Spruson & Ferguson, which was representing Mr Pike at the time of the declaration.

Mr Pollock explains in his declaration that he understands Mr Pike has been using his trade mark MR. MARDI GRAS for "approximately seven or eight years in Australia on a range of goods including jackets, caps and bags." He refers to a copy of an extract from Mr Pike's Internet website, featuring a photograph of an "MMG" jacket offered for purchase, which letters he explains stand for "MR. MARDI GRAS". (This is not apparent from the photograph itself.)

Exhibits MHP-1 to MHP-11 support Mr Pollock's declaration. The exhibits deal variously with:

• The results of a search of the Trade Marks Office Database for trade marks incorporating the words MARDI GRAS, requested by Mr Pollock.

• The results of a Freedom of Information request made by Mr Pollock for a copy of the file associated with Trade Mark Application No. 770057, in the name of Rockhampton City Council and opposed by the present opponent. The trade mark in question was

• The results of a search of the web site of the Australian Securities and Investments Commission, which lists 74 business names or company names incorporating the words MARDI GRAS, including two, for MISTER MARDI GRAS and MR. MARDI GRAS respectively, that Mr Pollock understands were registered by Mr Pike in "early 1998".

• Copies of entries from Internet searches made by Mr Pollock for sites relating to the words MARDI GRAS. These include material relating to the history of the Sydney Gay and Lesbian Mardi Gras festival.

Evidence in reply

The opponent's evidence in reply comprises a declaration by Ms Kelly Gardiner, Chief Executive Officer of Sydney Gay & Lesbian Mardi Gras Ltd. Ms Gardiner attests to her belief that Sydney Gay & Lesbian Mardi Gras Ltd has built up an extensive reputation in "the MARDI GRAS mark" since it was first used in 1978. She says:

When I hear or read a reference to "Mardi Gras" I almost always understand that reference to be to the organisation or to SGLMGL [Sydney Gay & Lesbian Mardi Gras Ltd] events and related activities, not to some other festival, parade or party.

Within Australia, and especially within NSW, the phrase "Mardi Gras" has acquired a secondary meeting denoting events, goods and services associated with SGLMGL.

Ms Gardiner's declaration is accompanied by Annexures A to W and Exhibit KG-1. The annexures are copies of various newspaper articles, dating from February 1997, which refer to the "Mardi Gras", or "Mardi Gras Festival". Exhibit KG-1 is a copy of the book A History of the Sydney Gay and Lesbian Mardi Gras, written by Graham Carbery and published in 1995.

Grounds and Submissions

The hearing on this opposition matter was quite lengthy, with both sides making numerous submissions in support of their respective stands. I will not report at length the full substance of the to and fro of submissions that occurred throughout the hearing, but I have attempted to include them in abbreviated form as relevant to this decision.

Mr Cobden's first comments at the hearing were to clarify that an error had been made in the notice of opposition, which names the opponent as "Gay & Lesbian Mardi Gras Ltd". This is at variance with Mr Goggin's declaration, which refers to the "Sydney Gay & Lesbian Mardi Gras, an incorporated association", and Ms Gardiner's declaration, which refers to "Sydney Gay & Lesbian Mardi Gras Ltd". Mr Cobden tendered an extract from the Australian Securities and Investments Commission "National Names Index", which shows that the "Sydney Gay & Lesbian Mardi Gras Limited" was registered as an Australian Public Company in 1990. He said that the difference in the name of the company as it appears in the notice of opposition, and in the description of it in Mr Goggin's declaration both represented errors in those documents. While I note for the record that Mr Pike expressed his reservations on this issue, I accept Mr Cobden's explanation that two simple errors have occurred. Henceforth, my references in this decision to "the opponent" may be taken to mean the "Sydney Gay & Lesbian Mardi Gras Limited".

Mr Cobden next moved on to the substantive matters of the opposition. He indicated that the opponent intended to rely primarily on the grounds laid out in sections 58 and 60 of the Trade Marks Act 1995 ("the Act"). He also made brief initial points in relation to sections 41, 42, and 43, to the effect that:

• A finding in favour of the opponent in relation to section 60 should also lead to a finding in its favour under section 41 - if Mr Pike's trade mark was found to be deceptive, it could not be capable of distinguishing. (See section 41 - Trade mark not distinguishing applicant’s goods or services.)

• Further, establishment of the section 60 ground would also mean that the conduct of the applicant in using his mark would "necessarily contravene section 52 of the Trade Practices Act 1974 and accordingly the ground under section 42 would be made out as a matter of course." (See section 42 - Trade mark scandalous or its use contrary to law.)

• Finally, for the record, Mr Cobden made the opponent's formal submission that the holding of the Full Federal Court in TGI Friday's Australia Pty Ltd v TGI Friday's Inc. (2000) 100 FCR 358 (2000) 48 IPR 513, that section 43 excludes similarity to another name, is wrong. However, the opponent did intend to not pursue this point any further in the present context. (See section 43 - Trade mark likely to deceive or cause confusion.)

Section 58 - ownership of the trade mark

Section 58 of the Act provides:

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:    For applicant see section 6.

Mr Cobden firstly dealt with the test for substantial identity between the applicant's and opponent's trade marks. This test is a threshold test for section 58, which here requires the opponent to demonstrate that it has had use in Australia, prior to the filing date of the applicant's trade mark, of the same or of a substantially identical trade mark, for the same goods. Mr Cobden said that, applying the relevant test set out in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, the trade marks MARDI GRAS and MR MARDI GRAS were substantially identical. The test in question is put by Windeyer J (at page 414) in this way:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

When comparing the applicant's and the opponent's trade marks, Mr Cobden submitted that the MR. in Mr Pike's trade mark should be simply disregarded. He referred me to PB Foods Limited v Malanda Dairyfoods Limited (1999) 47 IPR 47 in support of this argument. In that case, the trade marks CHILL and CHOC CHILL were found to be substantially identical.

Mr Cobden argued that the opponent's evidence clearly shows that it has used the substantially identical trade mark MARDI GRAS on clothing, prior to the filing date of Mr Pike's application, also in respect of clothing.

Section 60 - similar trade mark with a reputation in Australia

Section 60 of the Act provides:

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.

Note 1: For deceptively similar see section 10.

Note 2: For priority date see section 12.

Substantial identity between the relevant trade marks can be a factor for the purposes of section 60, but the threshold is not so high - trade marks need not be substantially identical to be tripped by the section, if they are at least deceptively similar. The definition of "deceptively similar" provided by section 10 is "a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion".

Mr Cobden moved on to argue that, for the purposes of section 60, his client enjoyed an enormous reputation in Australia, at the time of filing of the MR. MARDI GRAS application, for the trade marks MARDI GRAS, GAY MARDI GRAS, SYDNEY GAY MARDI GRAS, GAY & LESBIAN MARDI GRAS and SYDNEY GAY & LESBIAN MARDI GRAS.

Discussion

Firstly, I must consider, in terms of section 58, whether Mr Pike is the true owner of the trade mark MR. MARDI GRAS. "Ownership" under the present Act has the same meaning as "proprietorship" under the previous Act, the Trade Marks Act 1955 (see the Reader's Guide, page iii, of the Trade Marks Act 1995). In The Shell Company of Australia Ltd v Rohm and Haas Company and Anor (1948-1949) 78 CLR 601, Dixon J said, at page 627:

The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration.

Mr Pollock claims in his declaration that, by 2001, Mr Pike had already been using his trade mark for several years. However, as Mr Cobden pointed out, Mr Pike himself has "taken no opportunity to put on any direct, documentary or credible evidence of trading activities or intention". Further, said Mr Cobden, there is "not one shred of documentary or objective evidence that Mr Pike has used his trade mark MR. MARDI GRAS at all, let alone for the period claimed by the Pollock declaration". I accept Mr Cobden's submission that Mr Pollock's unsupported, third-party assertion of Mr Pike's use of the trade mark cannot be given weight under these circumstances. Therefore, for the purposes of section 58, I propose to treat the trade mark MR. MARDI GRAS as "so far unused", at the time that application for its registration was made.

An application for registration is made under section 27 of the Act, which specifies:

(1)      A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a)      the person claims to be the owner of the trade mark; and

(b)      one of the following applies:

(i)        the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii)       the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii)      the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

Note:    For use see section 7.

Therefore, by filing his application, Mr Pike has declared himself to be the owner at that date of the trade mark MR. MARDI GRAS. The Registrar has accepted that claim, at face value, in accepting his trade mark for registration. It is now up to the opponent to displace the claim by demonstrating use of the same, or a substantially identical trade mark, on the same goods of interest, prior to 8 July 1998.

Mr Cobden argued that the opponent's evidence clearly shows its use of the trade mark MARDI GRAS, which he said is substantially identical to MR. MARDI GRAS, on clothing, prior to July 1998. The question of the clarity of that evidence was hotly debated between the parties during the hearing, and I will consider it further in discussion of the section 60 issues. However, as I have already described, the threshold test for ownership under section 58 is substantial identity between the trade marks. In Trade Mark Law in Australia, (2000) Elkington, Hall and Kell say of ownership disputes, at page 77:

The battle therefore is between the party who was first to file and an opponent who claims to have been first to use. In such cases the first user prevails. But this ground of opposition is tightly confined. The use must have been commercial use, as a trade mark, of the very mark applied for or one extremely close to it, and for the goods or services of application or "the same type of thing".

Mr Cobden has drawn my attention to the findings in relation to the trade marks CHILL and CHOC CHILL in PB Foods Limited v Malanda Dairyfoods Limited, supra. I do not believe that the situation there is quite analogous to the present case. In deciding that the trade marks CHILL and CHOC CHILL were substantially identical, and applying Windeyer J's test quoted above, Carr J found (at paras 31 and 32) that the essential feature of both trade marks was the word CHILL. This word "serve[d] to denote the trade origin of the goods." The word CHOC, he said, had "different work to do". The word was "utterly descriptive". This phrase, as Carr J went on to explain, was borrowed from a decision by Hearing Officer Forno, Microcom Pty Ltd v Microcom Systems Inc (1998) 41 IPR 163. In that decision, Hearing Officer Forno found the words NETWORKING PROTOCOL to add nothing to the mark MICROCOM NETWORKING PROTOCOL, such that the trade marks MICROCOM and MICROCOM NETWORKING PROTOCOL were substantially the same.

I must now consider whether the word MR. in MR. MARDI GRAS is also "utterly descriptive", such that it adds nothing to Mr Pike's trade mark to distinguish it from the opponent's trade mark. The Trade Marks Office Manual of Practice and Procedure, in Part 22, which deals with "trade marks capable of distinguishing", discusses "Mister or Mr trade marks", at paragraph 13.1. It says:

It is a common practice for traders to adopt the title Mr or Mister followed by the name of their goods or services. It is also practice for persons eminent in a particular field or activity to be referred to by the title Mr or Mister. In view of this, trade marks which consist of the words Mr or Mister followed by the name of the goods or services are not considered inherently adapted to distinguish. (See "Mister Donut" case [1983] RPC 117). However, Mr or Mister followed by a word describing an attribute of the goods or services is inherently capable of distinguishing, for example Mr. Tasty for cakes or Mister Speedy for transport services.

It seems to me that, far from the presence of MR. in the trade mark adding nothing to an otherwise "capable of distinguishing" trade mark, it is the "MR." in MR. MARDI GRAS that gives it a greater capacity to distinguish that it might otherwise have. Like "tasty" cakes, or "speedy" transport services, an argument could be made that the words "mardi gras" describe an attribute of flamboyant clothing. The work MR. has to do in the trade mark is therefore not "utterly descriptive". Instead, MR. functions to "denote the trade origin of the goods", in the same way that the words CHILL and MICROCOM did in the trade marks discussed above. MR. is, therefore, an additional essential feature which, by appearing in Mr Pike's trade mark, makes it different from the opponent's claimed mark. Under these circumstances I cannot find that, when placed side by side, the trade marks MR. MARDI GRAS and MARDI GRAS are substantially identical, so that ownership of one equates to ownership of the other. Accordingly, I find that the opponent has been unsuccessful in terms of section 58 of the Act.

I turn now to the opponent's arguments under section 60. These are that, before 8 July 1998, it had acquired such an extensive reputation in Australia, in a trade mark deceptively similar to Mr Pike's trade mark, that use of his trade mark would be likely to deceive or cause confusion.

The tests for deceptive similarity are different from those for substantial identity, involving much more subtle comparisons of the whole impressions given by each trade mark being compared. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641, set out useful guidelines at page 658:

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

Mr Cobden has claimed, for the purposes of section 60, that the opponent has a significant reputation in Australia in respect of five individual trade marks:

• MARDI GRAS

• GAY MARDI GRAS

• SYDNEY GAY MARDI GRAS

• GAY & LESBIAN MARDI GRAS

• SYDNEY GAY & LESBIAN MARDI GRAS.

Applying the tests of Dixon and McTiernan JJ, I cannot accept that "the ordinary person" would be deceived or confused between use of any of the last four trade marks in the list, and use of the trade mark MR. MARDI GRAS. The addition of the words SYDNEY, GAY and LESBIAN, in their various combinations, completely alter the look, sound and meaning of those trade marks in a way that makes them perfectly distinguishable from the trade mark MR. MARDI GRAS.

I believe that MARDI GRAS by itself is the only trade mark out of the collection representing the opponent's ambit claim to reputation that is potentially caught by the deception and confusion test of section 60. If the opponent did indeed have a reputation in those words alone, at the relevant date, then I accept the possibility that Mr Pike's use of his trade mark might result in deception and confusion of the public.

In his submissions, Mr Cobden gave a brief history of the expression "Mardi Gras". He said:

The words "Mardi Gras" have passed into ordinary English in at least two senses. The word translates literally from French as "Fat Tuesday" and is of course the French name for what is known traditionally in English as "Shrove Tuesday" or "Pancake Tuesday"; it is the day before Ash Wednesday when, particularly in former times, Christians began their Lenten and period of abstinence or denial. That is the reason, of course, that an event called "carnival" takes place on that Shrove Tuesday - "carnival" is literally, "carni vale" or, farewell to flesh. Flesh in that sense has a double meaning of both meat and carnal pleasures.

In its plain derivative of that meaning, Mardi Gras has come to refer to particular carnivals of great exuberance, Plainly, the Rio De Janeiro and New Orleans Mardi Gras festivals derive directly from that meaning. That further meaning is a carnival at any time of the year.

This information is also reflected in some of the exhibits attached to Mr Pike's evidence in answer to the opposition. In addition to references to the New Orleans and Rio De Janeiro celebrations, extracts from Internet websites give details of other mardi gras events in Alabama, California, Florida, Louisiana, Mississippi, Missouri, and Texas in the United States, as well as in Switzerland and London.

Notwithstanding this general use of the words "mardi gras" to denote "carnivals of great exuberance", Mr Cobden submitted that:

Particularly in the greater Sydney area of New South Wales, and as a result of extensive national promotional activity, throughout Australia, any ordinary meaning of 'Mardi Gras' has been displaced, so that it refers to the event promoted, organised and presented by [the opponent].

In order to determine the validity to this claim, I turn now to consideration of the opponent's evidence of use.

Annexed to Mr Goggin's declaration there are three photocopies of sample T-shirts, manufactured to celebrate the Sydney Gay and Lesbian Mardi Gras prior to the filing date of the MR. MARDI GRAS application. These relate to the years 1986, 1994 and 1998. They show use with devices of the words SYDNEY GAY MARDI GRAS 1986, SYDNEY GAY & LESBIAN MARDI GRAS WE ARE A FAMILY 1994 and 1998 SYDNEY GAY & LESBIAN MARDI GRAS. They do not show use of the words MARDI GRAS alone. There are also examples of a tea towel, postcards and a coffee mug from the pre-filing-date years, but these show only use of the words MARDI GRAS in various combination with the words SYDNEY, GAY and LESBIAN.

Mr Goggin pertinently describes in his declaration a controversy surrounding the launch of the 1987 T-shirt range, as documented in the book by Graham Carbery, also in evidence. This controversy related to the decision by the sub-committee organising the production of T-shirts that year to act on the manufacturer's suggestion that the words SYDNEY and GAY be left off the shirts, leaving just the words MARDI GRAS, so as to widen their appeal to "straights". (The word LESBIAN had not yet been incorporated into the full title by that stage.) According to Mr Carbery, this was a very unpopular move with the proudly gay or lesbian patrons of the mardi gras, and resulted in a significant drop in sales of T-shirts that year. There is no actual example of a 1987 T-shirt showing just the words MARDI GRAS provided in the evidence.

The many newspaper articles annexed to Ms Gardiner's evidence in answer for the opponent do show that the Sydney newspapers The Sun-Herald and the Sydney Star Observer both used, throughout 1998, the unqualified phrase MARDI GRAS in their headlines to identify the Sydney Gay and Lesbian Mardi Gras. There is also a single article copied from The Australian, which has its head office in Sydney. Mr Pike argued at the hearing that all these references represented shorthand headline generic use of the words MARDI GRAS by newspapers that would fully expect their local readership to understand the reference to a local celebration. He said that newspapers in New Orleans and Rio De Janeiro (much older venues for mardi gras than Sydney) would likely use the same words in the same manner, without this representing in any way a recognition by the newspapers of anyone's trade mark rights in the words. I am inclined to agree with him. Indeed, closer reading of most of the articles reveals an immediate qualification, in the smaller text under the headlines, that the MARDI GRAS being reported on is the SYDNEY GAY AND LESBIAN MARDI GRAS.

My reading of the opponent's evidence as a whole concurs with many of the observations made upon it by Mr Pike during the hearing. That is, the evidence demonstrates that people closely concerned with the activities connected with the Sydney Gay and Lesbian Mardi Gras use the shorthand reference of MARDI GRAS to describe it. These are people involved in the organisation of events, such as Mr Goggin and Ms Gardiner, whose declarations are in evidence, and Mr Carbery, whose book chronicles the history and growth of the event over the years. Their motivation in using the label would be generated by expediency and familiarity, rather than any deliberate recognition of a trade mark. The Sydney press also uses this shortened form, for the same basic reasons. Their use of headlines that do not include the full six-word title of the Sydney Gay and Lesbian Mardi Gras reflects both the space constraints faced by the print media, and also the largely parochial nature of their publications, in reporting a local event to a local audience. It does not represent reporting of MARDI GRAS as a trade mark, and therefore also does not represent evidence of the opponent's reputation in those words.

By contrast, the promotional material generated by the opponent itself since its first beginnings has all, with the possible exception of the missing 1987 T-shirts, deliberately qualified the relevant mardi gras events. The qualifications have been at the very least GAY, or SYDNEY GAY, then later GAY AND LESBIAN, or SYDNEY GAY & LESBIAN. The words MARDI GRAS function in these contexts in the same way that ARTS FESTIVAL, or STREET PARADE or any other descriptive term for a community gathering might be used in advertising material. They are used according to the primary meaning of "carnival affair at any time of the year" that Mr Cobden described earlier. The main message behind the full wording used is that these are "carnival affairs" held in Sydney by (and for) gays and lesbians.

The story of the 1987 T-shirts exemplifies why the opponent has not been able to convince me that it had, in July 1998, a reputation in the words MARDI GRAS alone. The SYDNEY GAY & LESBIAN MARDI GRAS celebrations have a proud history founded on a political protest and expression of international gay solidarity initiated in Sydney in 1978, when public opinion about such matters was very different from what it is today. These origins differentiate the Sydney celebrations from the various mardi gras held in other cities all over the world. Through the years, patrons seem to have had little wish to minimise the importance that the qualification SYDNEY GAY & LESBIAN has to their mardi gras celebrations, and in 1987 actively resisted doing so.

From the evidence, I have no doubt that the SYDNEY GAY & LESBIAN MARDI GRAS has become a well-known identifier in Australia, and arguably throughout the world, for several very popular community events held annually in Sydney. However, the opponent is not entitled to use this circumstance as a basis from which to claim a separate reputation in the plain words MARDI GRAS, at the relevant date, such as might ensure success under section 60 against the trade mark MR. MARDI GRAS. I find that this ground of opposition has failed, and with it, the section 41 and 42 grounds that Mr Cobden briefly alluded to as being dependant upon the section 60 ground, but did not pursue further in his hearing submissions.

Decision

I have found that the opposition has failed on the grounds pursued by the opponent at the hearing. For completeness, and as I have no basis to be satisfied that any of the other grounds of opposition raised in the notice of opposition have been made out, I find each of those grounds has also failed. I direct that the application may proceed to registration one month from the date of this decision, subject to the payment of the appropriate fee. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

The opponent has sought its costs in this matter. However, it is usual for costs to follow the event, and I see here no reason to deviate from that course. I award costs, according to the official scale, against the unsuccessful opponent, Sydney Gay & Lesbian Mardi Gras Limited.

Claudia Murray

Hearing Officer

Trade Marks Hearings

28 June 2002