Sydney Organising Committee for the Olympic Games v Hugh Thompson

[2000] ATMO 77

TRADE MARKS ACT 1995

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

Re:Opposition by Sydney Organising Committee for the Olympic Games to registration of trade mark application 724276(41) - OLYMPIAN STAR and device - filed in the name of Hugh Thompson.

Background

Application number 724276 was filed in the name of Hugh Thompson on 19 December 1996 in respect of a variety of services in class 41. During the course of examination, these services were amended to read 'An educational guidance and motivational system for use by teachers in managing and facilitating school pupils' effective learning and appropriate behaviour, featuring a points-based scheme using coloured stars and optional treats or rewards.' The application was accepted with this specification and advertised in the Australian Official Journal of Trade Marks of 29 October 1998. The representation of the mark is as shown.

On 29 January 1999 the Sydney Organising Committee for the Olympic Games (the opponent) filed a notice of opposition which listed five grounds under the Act. These grounds encompass s. 59 and s.60 and, pursuant to s.57, also involve ss.41, 42(b) and 43.

The opponent filed a single declaration from Catherine McGill, legal counsel for the opponent, to support its case. From this declaration, a relevant history of the opponent emerges as follows. The Olympic Charter provides that the International Olympic Committee (IOC) has claimed all rights in the Olympic symbol, the Olympic flag, the Olympic motto and the Olympic anthem. Following endorsement and its nomination by the Australian Olympic Committee (AOC) for Sydney to bid to host the XXVII Olympiad in 2000, the IOC announced Sydney as the successful bidder on 23 September 1993. Thereafter the IOC, the AOC and the City of Sydney all entered a contract that includes clauses that outline the formation by the AOC of the Sydney Organising Committee for the Olympic Games (SOCOG). The Host City Contract (HCC) includes clauses outlining the entire financial responsibility for the staging of the Games. This responsibility lies with the City of Sydney, the AOC and SOCOG. Additionally, the HCC creates an obligation for the signatories to protect the Olympic indicia. Elements within these indicia include the five rings Olympic symbol, the terms 'Olympic' and 'Olympiad' and the Olympic motto. SOCOG, under the terms of this contract, is not only committed to obtain protection of the indicia but to take any necessary steps to 'ensure that there are no other marketing programs in the Host Country, the activities of which will have any impact on the marketing programs related to the Games'[1]. Thus, the present opposition has, at its core, concerns by SOCOG in relation to both its legal and financial obligations under the HCC. In addition, the Commonwealth parliament has passed the Sydney 2000 Games (Indicia andImages) Protection Act 1996 (the 'Indicia Act') which provides at s.12(1) that:

[1] The Host City Contract at 40(c)

A person, other than
(a) SOCOG; or
(b) SPOC [Sydney Paralympic Organising Committee Limited]; or
(c) a licensed user;
must not use Sydney 2000 Games indicia and images for commercial purposes.

The New South Wales state parliament has passed the Sydney Organising Committee for the Olympic Games Act 1993 (NSW), the SOCOG Act, that places similar responsibilities on SOCOG to act in a financially sound manner within its budget.

The Evidence

The McGill declaration provides a detailed history of the roles of the various bodies in the organising of the modern Olympic games, with particular reference to the XXVII Olympiad for Sydney later this year. The declaration, after setting out both the Commonwealth and State legislation also makes the claim that the opponent will be seriously disadvantaged in its ability to meet its legal and financial obligations under the various Acts, should this application proceed to registration.

The applicant chose not to submit any evidentiary material at all. Following further allowance of time for either party to request to be heard, the matter has now been directed to me, as a delegate of the Registrar for a decision on the material held in this Office.

Discussion

As mentioned above, the opponent lists five grounds of opposition under the Act relating to s.41, s.42(b), s.43, s.59 and s.60.

None of the material submitted goes to the considerations that must be made in terms of s.41, s.43, s.59 or s.60. Thus, I find that in relation to those four grounds, the opposition is not successful. The remaining consideration falls under s.42(b). The legislation for this opposition ground reads:

Trade mark scandalous or its use contrary to law

42. An application for the registration of a trade mark must be rejected if:

(a) ….
(b) its use would be contrary to law.

The expression 'contrary to law' has been considered in several decisions issued from this Office. In general, to succeed the opponent would need to either have already achieved a favourable decision in the courts under legislation other than the relevant Trade Marks Act or have incontrovertible evidence of such illegal circumstances. As the opponent has not provided evidence of the former, I must consider the opponent's claim that the present application offends under the latter. The McGill declaration draws my attention to the following legislation:

• Sydney Organising Committee for the Olympic Games Act 1993 (NSW), the SOCOG Act and

• Sydney 2000 Games (Indicia and Images) Protection Act 1996 (C'th), the SIIPA Act.

Ms McGill's declaration then makes the claim that 'unauthorised use of the word OLYMPIAN wrongly suggests a connection with the Olympic Movement and would deter other traders, … from becoming sponsors … as they would fail to gain the widespread benefits from this category for their products'.

In the Background section above I have quoted s.12(1) of the SIIPA Act, which clearly indicates that use, for commercial purposes, of the indicia and images of the Sydney Olympic Games is restricted to parties authorised to use them. I believe that the applicant does not contest that it has any form of licensing or authorisation to use the indicia or images of the Sydney 2000 Games. Thus, I must decide if the applicant's OLYMPIC STAR trade mark, together with the device containing the cartoon character of a star holding a torch from which a trail of stars is emanating, is prohibited by the legislation.

To determine what indicia and images, if any, are relevant to this question I turn to the definitions found in s.8 and s.9 of the SIIPA Act. The word Olympian is found in s.8 in the following context:

8 (1) For the purposes of this Act:
common Sydney 2000 Games indicia means:
(a) any of the following phrases:

(i) "Games City";
(ii) "Millennium Games";
(iii) "Sydney Games";
(iv) "Sydney 2000"; or

(b) any combination of the word "Games" and the number "2000" or the words "Two Thousand".
Sydney 2000 Olympic Games indicia means:
(a) either of the following words:

(i) "Olympiad";
(ii) "Olympic"; or

(b) any of the following phrases:

(i) "Share the Spirit";
(ii) "Summer Games";
(iii) "Team Millennium"; or

(c) any combination of "24th", "Twenty-Fourth" or "XXIVth" and the word"Olympics" or "Games"; or
(d) any combination of a word in List A with a word, words, phrase or number in List B:

List A	List B
Olympian	Bronze
Olympics	Games
Gold
Green and Gold
Medals
Millennium
Silver
Spirit
Sponsor
Summer
Sydney
Two Thousand
2000

From this material, it is apparent that the phrase OLYMPIAN STAR is not one of the combinations prohibited by the legislation. Nowhere else in the relevant legislation can I find a reference to material concerning any restriction for the use of the word Olympian.

Thus, there exists nothing before me to find that this trade mark is 'contrary to law' in terms of s.42(b) of the Trade Marks Act 1995 in the manner asserted by the opponent. Hence, this ground of opposition is not successful.

Conclusion

From the foregoing, I have found that the grounds of opposition relied on by the opponent have not been established and, in my capacity as a delegate of the Registrar, I dismiss this trade mark opposition.

Don Nancarrow
Hearing Officer

28 July 2000