TGI Friday's Inc v Weller Hotels & Taverns Pty Ltd

[1994] ATMO 84

Trade Marks Act 1955

Opposition in the name of WELLER HOTELS & TAVERNS PTY LTD to the registration of trade mark application numbers 438363, 438364 and 438365 in the name of TGI FRIDAY'S INC.

Decision of a Delegate of the Registrar of Trade Marks

Background

These trade mark applications were lodged on 19 December 1985 by TGI Friday's Inc., of 14665 Midway Road, City of Addison, Texas ("the applicant") in respect of the trade mark T.G.I. FRIDAY'S and the following goods and services:

1. paper, cardboard and goods made from these materials (not included in other classes); printed matter; photographs; stationery; plastic material for packaging (not included in other classes): class 16

1. clothing, footwear and headgear: class 25

1. restaurant services and alcoholic beverage bar services: class 42

438363 and 438364 were advertised as accepted for registration in September and 438365 in October 1988.  In March and April of 1989 notices of opposition to the registration of the trade marks were lodged by Weller Hotels & Taverns Pty Ltd, of C/- Lyons, Dunlop & Pratt, MLC Centre, 85 George Street, Brisbane ("the opponent").  The grounds of opposition were the same in each case and as follows:

(a)By reason of the reputation and rights acquired by the opponent, the use of the trade mark by the applicant in relation to the goods [services] in respect of which registration is sought would be misleading or confusing and an infringement of the opponent's rights.

(b)Use or registration of the trade mark by the applicant would be contrary to law or morality and/or contrary to the public interest.

(c)The trade mark would be disentitled to protection in a court of justice.

(d)The applicant is not the proprietor of the trade mark.

(e)The trade mark is not distinctive of the applicant's goods [services].

(f)By reason of the matters set forth in any one or more of the foregoing paragraphs the Registrar in the exercise of his discretion ought to refuse registration of the trade mark.

Evidence

The opponent's evidence in support consists of a statutory declaration by Alan John Weller, a Director of the opponent company, together with Exhibits AJW-1 to AJW-14.

The applicant's evidence in answer to this material consists of a statutory declaration by Daniel T. Cronk, Vice President of the applicant corporation, together with Exhibits I to V.

Hearing

The applicant was represented by Mr Michael Ellicott of Counsel, instructed by Ms Patricia Kennedy, of Spruson & Ferguson, patent attorneys of Sydney.

The opponent was represented by Mr Claude Anese,of Cullen & Co., patent attorneys of Brisbane.

It was agreed by both parties that their submissions would be directed in the main to application 438365 but would apply as appropriate to the other two applications.

Mr Anese noted that the opponent's case would rely essentially on grounds based on the provisions of sections 40, 28 and 33 of the Act.  It is well-established law that in these sorts of proceedings the matters must be determined on the state of facts existing when the applications were lodged: The Shell Company of Australia Limited v. Rohm and Haas Company and Anor 78 CLR 601 at p624. The relevant date for these proceedings is therefore 19 December 1985.

Section 40: proprietorship in the mark
This claim relies on the principle conveniently summarised by Mr Justice McGarvie in Settef S.p.A. v. Riv-Oland Marble Company (Vic) Pty Ltd (1988) AIPC 90-516 at page 38,435:

"The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there... A person who becomes proprietor of a trade mark in this way is entitled at common law to restrain a person who later commences to use the trade mark...

In considering who, within sec. 40(1) of the Act, was at the time of [the] application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia...

Use of the trade mark by Settef overseas gave it no right to proprietorship in Australia.  Any use at all in Australia gave it that proprietorship.  The Thunderbird case (1974) 131 CLR 592 at p 600."

In support of the opponent's claim to proprietorship in the subject trade mark Mr Anese referred to the declaration of Mr Weller.  In this Mr Weller describes how he chose, somewhere between 1982 and 1984, the word FRIDAYS as the name for a proposed complex of bars and restaurant facilities to be developed by his company O.R. & Z.C. Weller Pty Ltd, in conjunction with the Lend Lease Group, at the Riverside Centre.  A copy of architect's plans for the complex dated 21 September 1982 are shown at Exhibit AJW-1.  In about October 1984 he decided to start building a reputation in FRIDAYS by naming a newly renovated bar in his company's Embassy Hotel as FRIDAYS.  The Riverside Centre FRIDAYS complex opened in November 1985.  According to Mr Weller, the complex offered food, liquor, beverages, music, live entertainment, dancing and a retail liquor store.  The word FRIDAYS was used in relation to the complex in a stylised form shown in Exhibit AJW-4 and depicted below.

Applications for registration of FRIDAYS in two stylised forms and in respect of services described as "a discotheque" were filed in Mr Weller's name on 30 October 1985 and given the numbers 435404 and 435405.  The trade mark specified in 435404 is essentially the same as that shown in Exhibit AJW-4.

Other relevant material in the opponent's evidence is at Exhibit AJW-10 and comprises a magazine article dated May 1988.  The subject of the article is a review of accommodation, restaurant and entertainment facilities in Brisbane, and includes this reference:

"One popular spot is Friday's (sic) at the Riverside Centre.  Friday's is open seven days a week (sometimes with live music) and is basically a licensed restaurant during the day and a dance venue/bar at night.

Mr Anese submitted that this material establishes that the opponent's use of the FRIDAYS commenced well before the relevant date of 19 December 1985, perhaps as early as 1982 when the dealings with the architect in developing the Riverside Centre complex began, or in 1984 at the Embassy Hotel bar, or at the latest in November 1985 when the complex opened.

In noting that the opponent's trade mark consists of the word FRIDAYS while the subject mark is T.G.I. FRIDAY'S, Mr Anese submitted that there is insufficient judicial authority to consider the law to be settled in respect of the question of whether claims to proprietorship in trade marks must relate to identical or near identical marks.  He argued that the marks FRIDAYS and T.G.I. FRIDAY'S are sufficiently close in any case that they must be considered identical or substantially identical, and that therefore the opponent's earlier use of its trade mark operates to defeat the applicant's claim in terms of section 40. 

Mr Ellicott, on behalf of the applicant, submitted that it is by no means clear from the Weller declaration that use of the opponent's mark commenced before December 1985.  He queried whether the sort of promotional use referred to at paragraphs 11 and 12 of the declaration could be accepted as use in a trade mark sense in relation to class 16 and 25 goods, even if it could operate as use in respect of nightclub services.  But in any case, Mr Ellicott argued, the opponent must be able to demonstrate earlier use in respect of an identical trade mark: Innes v. Lincoln Motor Co. (1921) 29 CLR 277 at p281. That case dealt with the provisions of section 27 of the previous Trade Marks Act, but Mr Ellicott submitted that the equivalent provisions of section 40 of the present Act are cast in terms which require the same interpretation, and also cited a recent decision of the Registrar, Brot Bodyline Pty Ltd v. Bodyline Cosmetics Limited (19930 AIPC 90-969 at p39,216, as supporting this line of practice.

I agree with Mr Ellicott that it is difficult to avoid the conclusion that for the question of proprietorship to arise at all the parties must be claiming the same mark or marks which are so nearly identical as to be virtually the same mark: The Kendall Co v. Mulsyn Paint and Chemicals (1962-1963) 109 CLR 300; Tavefar Pty Ltd v. Life Savers (Australasia) Ltd (1988) AIPC 90-500 and the Bodyline decision above.  The question is not whether the marks are so close as to be deceptively similar, a comparison appropriate under sections 28 or 33.  Rather it is one of substantial identity, to be determined according to the tests set out in The Shell Co of Australia Ltd v. Esso Standard Oil (Australia) Ltd (1961-1963) 109 CLR 407. I must therefore compare the two trade marks side by side and note their similarities and differences. From this assessment, I think it is clear that the addition of the letters T.G.I. to the word FRIDAYS constitutes a substantial alteration to the mark consisting solely of that word, notwithstanding that the letters by themselves may not be inherently distinctive. Whether considered visually, aurally or from the viewpoint of the "idea" of the mark, the composite must be seen as a different mark from that consisting of the word alone.

On this basis I cannot find that the opponent's claim to proprietorship in the subject trade mark displaces that of the applicant, and I make no decision as to whether the opponent's use of its mark started before 19 December 1985. 

Section 33: deceptive similarity between the trade marks
The case that the opponent seeks to make out on this ground is essentially that the opponent's trade mark application numbers 435404 and 435405, being in respect of substantially identical or deceptively similar marks as those of the applicant, and services which are the same or of the same description as the applicant's specified services, or closely related to the applicant's specified goods, and having an earlier registration date than the subject applications, constitute a bar to the registration of those applications.

It is a matter of fact that the opponent's applications predate the subject applications.  I have already found that the opponent's trade mark is not substantially identical to the applicant's.  The matter of deceptive similarity is to be judged on different criteria, set out in cases such as Shell, above, and Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd (1937) 58 CLR 641 at p658. Applying these familiar tests I have no hesitation in finding that the respective marks are deceptively similar. The remaining question is whether the opponent's "discotheque" services are sufficiently related to the applicant's services and goods.

Again the tests are familiar ones: the nature, uses and trade channels of the respective goods and services: Jellinek's Appn (1946) 63 RPC 59. On the basis of these I am satisfied that the opponent's "discotheque" services are not closely related to the applicant's class 16 and 25 goods specified in application numbers 438363 and 438364. The comparison of the opponent's services with those of the applicant's "restaurant services and alcoholic beverage bar services" is not quite so clear cut.

I note that the Macquarie Concise Dictionary (2nd Edition) defines a discotheque as

a place of public entertainment or a club in which patrons may dance, esp. to recorded music

Mr Anese referred me to the Webster's entry which includes reference to a nightclub where one can dance to recorded music and, by extension to the entry for "nightclub", submitted that a discotheque is a place where one can dance and obtain food and drink, including alcoholic drinks.  This meaning, he argued, makes the opponent's services of the same description as the applicant's.

Mr Ellicott argued that the essential nature of a discotheque differs from restaurant and bar services in that one does not go to a discotheque for a meal or a drink, but in order to dance.  Thus, he submitted, one might go to restaurant first in an evening for a meal, then go on later to a discotheque to dance.  On this basis the respective services may be differentiated and the marks found not to be in conflict.

Although the Macquarie entry makes no mention of food or drink being served at a discotheque, I think it is common knowledge that the consumption of alcoholic beverages is an integral part of attendance at such establishments.  It is also common knowledge, I believe, that bars in some hotels have so-called "disco nights" when disc jockeys provide recorded music for patrons to dance to or simply to listen to while they drink.  While I would agree with Mr Ellicott that the essential nature of restaurant services differs from those of a discotheque, I do not believe the same can be said of the latter vis a vis alcoholic beverage bar services.  The nature of these two sets of services is very similar in that they provide the means for patrons to obtain alcoholic drinks, their uses are to relax and socialise, and they can be obtained through much the same trade channels, such as hotels.  I find, therefore, that the opponent's discotheque services are of the same description as the applicant's alcoholic beverage bar services.

Overall then, the opponent's applications constitute a bar to the acceptance of application number 438365 so long as it specifies alcoholic beverage bar services, and the opposition succeeds to this extent on this ground.

Section 28: likelihood of deception and confusion
The opponent's case on this ground is based on the reputation in its marks acquired through use.  Adapting the well known test from Smith Hayden & Co. Ltd's Appn (1946) 63 RPC 97, I must be satisfied that, having regard to that reputation, the subject marks if used in a normal or fair manner in connection with any of the goods or services specified, will not be reasonably likely to cause deception or confusion amongst a substantial number of persons. Again, the relevant date at which these matters must be determined is 19 December 1985.

Apart from the details of use of its marks I have noted in the opponent's evidence, there are details of expenditure on advertising and annual turnover for the Riverside Centre complex given at paragraphs 15 and 16 of the Weller declaration.  These details relate, however, to the financial years 1985/86 through to 30 March 1991.  While in total they represent quite substantial amounts, for the period in question they provide little or no useful information.  Similarly, the magazine article I referred to earlier which describes Friday's as a popular night spot in Brisbane, in terms which suggest it is reasonably well-established, is dated May 1988, well beyond the relevant date.  I am not prepared, on the basis of the material before me, to find that the opponent's reputation in its mark was sufficient at 19 December 1985, that use by the applicant of its marks would give rise to the necessary likelihood of deception or confusion among a substantial number of people.

Decision

In summary, my findings in these proceedings are that the opposition has not been successful on the grounds based on sections 40 and 28.  The opposition has been successful on the section 33 ground to the extent that application 438365 may not be registered in respect of "alcoholic beverage bar services".  It may proceed to registration in respect of "restaurant services", however, and I allow a period of three months from the date of this decision, subject to any appeal, within which the applicant may amend this application appropriately.  Application numbers 438363 and 438364 are free to proceed to registration.  Given the nature of my decision in these proceedings, I think it appropriate that the applicant, as the party who has been largely but not entirely successful, be awarded 80% of its costs, such costs to be allowed according to the official scale.

Susan Farquhar
Deputy Registrar
4 November 1994