The Australian Olympic Committee v Hugh Thompson

[2000] ATMO 78

TRADE MARKS ACT 1995

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

Re:Opposition by Australian Olympic Committee Inc. 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 Australian Olympic Committee Inc. (the opponent) filed a notice of opposition which did not directly state a ground of opposition under the Trade Marks Act1995 but implied a ground under s.42(b), that use of the mark would be contrary to law. The notice of opposition listed four paragraphs to be considered as grounds, which direct attention to the Olympic Insignia Protection Act 1994 and rights that the opponent claims issue from that Act. I also note that the correct Acts relating to Olympic insignia protection are the Olympic Insignia Protection Act 1987 (the OIP Act) and the Olympic Insignia Protection Amendment Act 1994 (the OIPA Act), and I will make reference to these Acts in my reasons.

The opponent did not file any evidence in support of its opposition. The notice of opposition, however, did provide material that, in the applicant's opinion, required a response by means of evidence in answer. Therefore, the applicant attested a single declaration (the Thompson declaration) as evidence in answer in the matter, and served it on the opponent on 29 July 1999. The declaration was then filed with this Office on 5 August. The opponent responded with its evidence in reply. The opponent's evidence in reply, of course, can only be considered insofar as it responds to the applicant's evidence in answer. The applicant's evidence did challenge the ethics of the Olympic Movement and the value of the Olympic Games as providing a role model for younger persons. The opponent's evidence in reply deals with a history of the Olympic Movement and, in particular, the circumstances surrounding the Sydney Games. As this material generally forms a response to the applicant's evidence I intend to allow the material some consideration as being properly filed and served evidence in reply. I must add, however, that I have carefully weighed up the conclusion that I have reached for this evidence and find that it does address the matter raised by the applicant. I would not, however, be prepared to generally consider any material in the evidence in reply that raised new issues.

The evidence, which I have allowed, comprises a declaration from Alan Grover, Director of marketing for the opponent. Following the usual standard notices providing both parties the opportunity to be heard in the matter, it has now been referred to me for a decision on the material held in this Office.

During the course of the opposition, the applicant wrote to this Office to put his point of view concerning the differences between the torch device in his trade mark and the torch and flame registered design of the opponent. This material was later served, in declaratory form as mentioned above, on the opponent as his evidence in answer for this opposition matter and properly filed with this Office. The material, however, rather than providing evidence in the matter, apart from some items listed in the Evidence section of this decision, is generally in the nature of a written submission arguing against the grounds listed in the notice of opposition.

The Grover declaration, submitted as the evidence in reply, also, provides more in the way of a history of the Olympic Movement and the relationships between, and the responsibilities of, the various authorised bodies than any evidence specific to the present matter. 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. The AOC, 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 the AOC 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

As mentioned above, the applicant's declaration provides little in the way of hard evidence in the matter, apart from a dictionary definition for the word 'Olympian' from the Concise Oxford Dictionary (edition not stated). Aside from that material, and a representation of the cover of the applicant's educational booklet and a photocopy of a photograph of a flaming torch logo used by the Labroke (sic) Sporting Casino, the remainder of the declaration consists of an argued submission. The Grover 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, that the opponent believes is relevant, 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.

I find little direct material to assist my decision in the matter from either party. Although a major issue to be decided concerns a comparison of the representation of the torch in the present application and an alleged registered torch design from the opponent, neither party provided a representation in their evidence. My impression of the evidence from both parties is that it lacks a clear direction in this matter - and I am left with the task of locating some of the most relevant material to the issues raised myself.

Discussion

As mentioned above, the opponent filed a notice of opposition, which did not directly state a ground of opposition under the Trade Marks Act1995 but implied a ground under s.42(b). The grounds asserted by the opponent claim that the present application resembles an Olympic torch and flame that has been registered under the OIP Act and directs me to consider s.19 of that Act. Although not specifically stated, I assume that the reference to a 'registered design' is in respect of the Designs Act 1906. The OIP legislation reads at s.19:

Olympic Insignia Protection Act 1987

Section 19. The Registrar of Trade Marks shall not register under the Trade Marks
Act 1955 a trade mark that contains or consists of any of the following marks or a mark so nearly resembling any of those marks as to be likely to be taken
for that mark:
  (a)  the olympic motto;
  (b)  the olympic symbol;
  (c)  where the design in relation to an artistic work is registered under
       this Act - the artistic work.

This section is amended by the Olympic Insignia Protection Amendment Act 1994, which inserts the following at s.14:

14. Section 19 of the Principal Act is amended by inserting after paragraph (b) the following paragraph:
  "(ba) where an artistic work of an olympic torch and flame is prescribed
under this Act - the artistic work;".

Further, in view of the reference to the Trade Marks Act 1955, and considering the fact that I am giving my reasons under the Trade Marks Act 1995, I note that section 10 of the Acts Interpretation Act 1901 provides:

10  References to amended or re-enacted Acts

Where an Act contains a reference to a short title that is or was provided by law for the citation of another Act as originally enacted, or of another Act as amended, then, except so far as the contrary intention appears:

(a) the reference shall be construed as a reference to that other Act as originally enacted and as amended from time to time; and

(b) where that other Act has been repealed and re-enacted, with or without modifications, the reference shall be construed as including a reference to the re-enacted Act as originally enacted and as amended from time to time and, where, in connexion with that reference, particular provisions of the repealed Act are referred to, being provisions to which provisions of the re-enacted Act correspond, the reference to those particular provisions shall be construed as including a reference to those corresponding provisions.

Hence, I am going to consider s.19 of the OIP Act as referring to the Trade Marks Act1995 rather than the repealed Act. If the present application is in breach of s.19 of the OIP Act, then it is a matter that I must consider as a ground of opposition under s.42(b) of the Trade Marks Act.

The relevant 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. In this regard, the opponent has made the claim that the application contravenes s.19 of the OIP Act.

The OIP Act specifically states, at s.19, that the Registrar of Trade Marks shall not register a trade mark that 'contains or consists of any of the following marks or a mark so nearly resembling any of those marks as to be likely to be taken for that mark'. The expression 'following marks' described here, has been amended in the OIPA Act of 1994 to directly include 'where an artistic work of an olympic torch and flame is prescribed under this Act - the artistic work'.

Thus, my consideration must turn to any design, concerning the Olympic torch and flame, registered by the opponent. The expression 'so nearly resembling any of those marks as to be likely to be taken for', from s.19 of the OIP Act (which must be applied to the presently applied for trade mark), is not a common expression in the current trade marks legislation. An extremely similar expression does occur in s.39(2) of the Act but is not an expression used for a comparison of conflicting trade marks. These comparisons are framed in the expressions 'substantially identical' and 'deceptively similar' trade marks in s.44 and s.60. Hearing Officer Ian Thompson has commented on the expression contained in s.19 of the OIP Act, in a recent decision issued from this Office[2], concerning the Olympic rings symbol in the following way:

[2] Australian Olympic Committee and Sydney Organising Committee for the Olympic Games v Alan ArchibaldCalder [2000] ATMO 35 (14 April 2000)

I think that the expression in section 19 of the OIPA, "or a mark so nearly resembling any of those marks as to be likely to be taken for that mark" anticipates that an offending trade mark, or part of it, in terms of the section will be one which is so close to the Olympic Symbol as to be almost interchangeable with it.  This degree of similarity, by its wording, is one approaching a substantial identity and the tests to be applied are a side by side comparison as in Shell Company Of Australia Ltd v Esso Standard Oil (Australia) Ltd  1B IPR 523 where Windeyer J says, at 529:

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.

I find that I am in agreement here with Mr Thompson that the words 'so nearly resembling' imply a requirement of closer connection between the compared articles than the expression used when comparing two trade marks, of mere 'deceptive similarity'. Mr Thompson's phrase of 'approaching a substantial identity' indicates, to me, that something more than 'deceptive similarity' is needed to satisfy the requirements of s.19 of the OIP Act but that something slightly less than 'substantial identity' would suffice.

The Designs Register contains six registrations owned by the AOC. Only one of these consists of, or contains, a representation of a torch and flame. This is Olympic Design number 016, represented below.

This torch and flame design bears very little resemblance, in my opinion, to the torch and flame device that forms part of the present application. I have, for convenience, reproduced the applicant's mark here for ready comparison.

I do not believe, by any stretch of the imagination, that I could accept that the present application contains a torch and flame device that 'so nearly resembles' the registered Olympic torch design as to be taken for it. For me to discuss the obvious points of difference between the two would, I believe, be superfluous.

Accordingly, I find that there is no registered Design to prevent the registration of the present trade mark, in terms of s.19 of the OIP Act, or s.14 of the OIPA Act.

Thus, as nothing has been established to show that the mark is 'contrary to law' I also find that the ground of opposition does not succeed under s.42(a) of the Trade Marks Act 1995.

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