The Government of the Principality of Monaco v T.G.S.G. Group Pty. Limited

[2000] ATMO 122

TRADE MARKS ACT 1995

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

Re:Opposition by The Government of the Principality of Monaco to registration of trade mark application number 789895(25) MONTE CARLO and device - filed in the name of T.G.S.G. Group Pty Limited.

Background

This matter concerns trade mark application number 789895, filed on 29 March 1999 in the name of T.G.S.G. Group Pty Limited (the applicant).  The application covering the goods "clothing, footwear, headgear", in class 25 sought registration of the mark shown below:

 

Upon examination of the mark it was accepted, the acceptance being advertised in the Australian Official Journal of Trade Marks of 23 September 1999.  Registration of the mark was opposed by The Government of the Principality of Monaco (the opponent), who filed a notice of opposition on 22 December 1999.  The notice of opposition contains various grounds.  The opponent served and filed evidence in support.  An official letter was sent to the applicant's street address informing the applicant that a notice in relation to overdue evidence in answer, directed to the applicant's address for service, a P.O. Box address, had been returned to the Office undelivered and requesting the applicant to advise its current address.  No response was received.  Subsequently, the opponent's attorneys requested one month within which to request a hearing on the opposition or lodge written submissions, which was granted.  As a result, written submissions were received from the attorneys on behalf of the opponent.  The matter concerning the opposition has been referred to me for a decision on the written record.

The evidence
The evidence in support comprises one statutory declaration with exhibits by Mr Patrick Leclercq, the Minister of State for the Principality of Monaco.  An exhibit to his declaration shows an extract from the Monaco/Monte Carlo website on the Principality of Monaco.  Mr Leclercq stresses the role of the reigning Prince Rainier and his family who, through constant media attention, have contributed to an increasing popularity and reputation of the princely family as well as the principality.  Monte Carlo is the most luxurious area in Monaco and, with its casino, hotels and fashion shops, it aims to attract the most wealthy and elegant visitors from all over the world.  By reason of the success of Monte Carlo, the principality is known under the name of either Monte Carlo or Monaco by a large majority of people.  Mr Leclercq states that most of the renowned haute couture and fashion designers have opened retail shops in Monaco, especially in Monte Carlo and annexes an extract from the Monte Carlo website concerning shopping.  Another extract from the website gives a brief description of the famous casino in Monte Carlo.  He refers to important sporting and charity events held in the principality, noting that at the Bal de la Rose or the Red Cross Ball a panel of selected guests appear wearing superb haute couture and designer outfits.  Referring to the present application, Mr Leclercq says that the owner of the opposed mark has no relationship with Monaco or the area of Monte Carlo.  He sees no legitimate reason why the applicant would wish to use the subject mark, other than to benefit from the reputation enjoyed by Monte Carlo in the clothing and fashion industry.      

Opponent's written submissions and discussion
Of the eight grounds recited in the notice of opposition, the submissions concentrate on the grounds under sections 41, 43 and 60 of the Act. 

S.41 - mark is incapable of distinguishing the goods
In the opponent's view, the applicant's mark as a whole is one which requires some evidence of use or intended use, pursuant to s.41(5) of the Act, for it to be registered as a mark capable of distinguishing.  The words MONTE CARLO are seen by the opponent as the dominant feature of the mark and the means of verbal reference to the goods sold under it.  It is submitted that Mr Leclercq has established that the words MONTE CARLO convey a geographical significance to consumers and, if necessary, I could inform myself of that significance and the reputation of Monte Carlo - McDonald's Corporation v Steven M. Bowditch [1999] 104 ATMO 104 (15 October 1999).  The area of Monte Carlo has an obvious connection with class 25 goods, the opponent maintains, therefore the legitimate rights of other traders would be prejudiced by the granting of trade mark rights of the 'Monte Carlo' mark (as per Gummow J. in Oxford University Press v Registrar of Trade Marks (1989-1990) 17 IPR 509). The device elements in the mark, it is submitted, do not overcome its geographical significance; the crown device and the letters ABA only serve to heighten it, the former being associated with Monaco or Monte Carlo as a principality, and the latter, which are in the form of a car race track, embody Monte Carlo's reputation for car racing. The inclusion of the device elements in the mark is not sufficient to confer the requisite degree of inherent distinctiveness, the opponent says. Where the mark combines a device with a word, the word portion must be accorded greater significance in assessing its inherent capacity to distinguish, the primary reason being that the customers will refer to the word when describing or ordering the product. In this regard, the opponent relies on American Trading & Shipping Co Ltd's Appn (1936) 6 AOJP 78 and Golden Crumpet Co Australasia v Hardings Manufacturers Pty Ltd (1987) 8 IPR 147 and notes that the principle was also applied by Romer L.J. in Clement & Cie's Trade Mark (1899) 16 RPC 611 at 618. It adds that the importance of words in the mark, particularly their role in verbal descriptions was also considered in Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 at 658.

The provisions in the Act dealing with this question are set out in s.41, i.e.:

41. …

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:  For goods of a person and services of a person see section 6.

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a) the Registrar is to consider whether, because of the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

Note 1:  For goods of a person and services of a person see section 6.

Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

To determine whether a composite mark such as the applicant's is capable of distinguishing, it is the combination of all the components constituting the mark that must be assessed.  The opposed mark consists of a number of components: what appears to be a fancy crown device, the words MONTE CARLO, which is name of a place, the letters ABA and the non-distinctive numbers 1961, all enclosed in a square.  Of these, the crown and the upper case letters are not only the most prominent but they are also represented in an unusual and striking manner, i.e. the fancy crown composed of three large diamond shapes and the letters rendered in an original and stylized form.  However, I think the manner in which the device element is depicted in the mark leaves open the question as to whether the device is a crown or simply a geometric pattern, the diamonds possibly alluding to the wealth and glitter of the casino Monte Carlo, rather than to the principality known as Monaco.  Similarly, while the parallel lines in the letters ABA may suggest to some purchasers a car race track, such interpretation is not immediately apparent.

If a trade mark comprises a device and a word that in itself would not be registrable, its adaptability to distinguish depends upon the relative proportion or the manner of representation of those components in the mark when consideration is given to the mark as a whole.  In the applicant's mark, whilst MONTE CARLO is a geographical name, in my estimation, the size and prominence of the two elements - the crown device and the letters - overwhelm the words MONTE CARLO in the mark.  I believe these elements are entitities in themselves, not simply some embellishments or flourishes in the sense Romer L.J. considered the patterns to be in the trade mark in Clement & Cie's, supra.  In any event, it has been held that, even if individual elements comprising a mark are not distinctive, their entire combination may yet render the mark as one adapted to distinguish the applicant's goods from those of other traders - Diamond T Motor Car Co's Appn (1921) 38 RPC 373 at 380. If the mark proceeds to registration, the rights in it will not reside purely in the geographical name MONTE CARLO but in the total mark. For the purposes of assessing whether the mark is inherently adapted to distinguish, the fact that the customers may identify the mark by describing it as 'Monte Carlo', as submitted by the opponent, is not relevant.

In view of my previous observations, I find that the combination of the component parts forming the applicant's mark is sufficiently distinctive for the mark to be capable of distinguishing the designated goods.  The opposition, as it relates to s.41, therefore fails.

S.43 - mark contains a connotation which is likely to deceive or cause confusion
Having referred to two decisions where the term 'connotation' is discussed, Down to Earth (Victoria) Co-operative Society Ltd v Schmidt (1998) 41 IPR 632 and Ken Done & Associates Pty Limited v Janet Teuma [2000] ATMO 66 (5 July 2000), the opponent submits that the mark contains a clear geographic reference, both in terms of the words, and also of the device elements. Any verbal reference to the mark would be to the words 'Monte Carlo'. In light of this, it is submitted, the mark contains a connotation that the geographic origin of the goods is Monte Carlo. The mark therefore contains a connotation such that use of it as a trade mark in relation to class 25 goods not originating from Monte Carlo would be likely to deceive or cause confusion amongst consumers. The test for deception or confusion, the opponent says, is whether there is a real risk that, because of use of the mark, a significant number of people will be caused to wonder whether the goods come from Monte Carlo, or have any particular connection with it. Although this well-known test enunciated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 concerned the risk of deception or confusion arising from deceptively similar marks, the opponent submits that it is equally applicable to s.43.

S.43 provides that -

43.  An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.      

In considering the meaning of 'connotation' in s.43, the hearing officer observed in Down to Earth case, supra, at 643:

Therefore it can be said that the word connotation refers to that which is implied in a trade mark - in addition to its essential or primary meaning.  A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark.  The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.  Considerations under s.43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public.  For example, deception or confusion could arise in regard to the character of the services, or the implied endorsement or licence of services by a person or organisation.

In Ken Done v Teuma, supra, cited by the opponent, the hearing officer said:

It seems to me, from these comments, that if a connotation (or implied meaning) does exist for a particular trade mark, that could lead to deception or confusion in the minds of the purchasing public, then it must be possible to identify that meaning from that trade mark alone.  Simply by a consideration of the mark applied for alone, it must be the case that a sufficiently strong meaning, from the inherent characteristics of the mark itself, would be apparent for a substantial number of Australians - if s.43 were to operate in favour of the opponent.  The Trade Marks Office Draft Manual of Practice and Procedure in Part 29 at paragraph 1.4, in dealing with s.43 states as a guide:

Considerations under [s43] concentrate on the matter within the trade mark that could cause deception and confusion in the mind of the relevant buying public.  For example, deception or confusion could arise in regard to:

·Character of the goods and/or services including their composition, nature or other properties

·Quality or quantity of the goods and/or services

·Geographical origin of the goods and/or services

·Intended use or purpose of the goods and/or services

·The endorsement of licence of a product or service by a person or organisation.

It has been pointed out by the opponent that Monte Carlo has a reputation for luxury living, including haute couture clothing fashions and that the presence of the words Monte Carlo in the applicant's mark therefore would be likely to lead to a connotation concerning the origin of the goods.

In describing the significance of clothing and fashions associated with Monte Carlo, Mr Leclercq refers to famous haute couture and fashion designers who have set up retail shops in the Monte Carlo district, such as Hermes, Christian Dior, Yves St Laurent, Louis Vuitton, Burberry or Chanel.  The opponent does not provide evidence that the fashion goods sold in these shops are actually made in Monte Carlo or Monaco and that Monte Carlo is known as a manufacturing source for fashion clothing, as, for example, would be Paris or New York.  Applying my general knowledge and understanding, as I am entitled to under reg.21.15(8), well-known fashion houses such as those mentioned by Mr Leclercq are located in other parts of the world, mainly in major cities, where fashion goods manufactured under the famous trade marks are marketed.  Thus, the outlets for the fashion clothing and footwear of these designers are not exclusive to Monte Carlo.  For these reasons, I do not see the connotation exhibited by the applicant's mark alluded to by the opponent.

I conclude therefore that the ground of opposition based on s.43 is not justified.

S.60 - trade mark that has acquired reputation in Australia
In relation to this ground, the opponent argues that, at 29 March 1999, use of the mark by the applicant would have been likely to deceive or cause confusion, in light of the reputation in the name Monte Carlo attained by the opponent.  The ground based on s.43 is more appropriate in the present case, the opponent says, given that the objection arises from a geographic connotation contained in the mark.  However, the opponent continues, to the extent that s.60 may be relevant, Mr Leclercq's evidence indicates that the Government of the Principality of Monaco has developed a sufficient reputation in the words 'Monte Carlo' through its promotional activities, such as on the Internet, through travel agencies and other means, so that use of the applicant's mark would be likely to deceive or cause confusion amongst consumers in Australia. 

The relevant section of the Act reads:

60.  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.

In order to substantiate a s.60 ground, the opponent needs to establish that a trade mark substantially identical with, or deceptively similar to, the opposed mark has attained a degree of reputation in Australia before the date on which the applicant filed the present application and that, in view of that reputation, deception or confusion could arise amongst a substantial number of persons interested in purchasing the applicant's goods.

Neither in the notice of opposition, in its submissions, nor in the evidence has the opponent referred to any trade mark that has achieved a reputation, that being the starting point for considering the likelihood of deception or confusion caused by the applicant's mark within the meaning of s.60.  As I cannot place any weight on the submissions in relation to this ground which focus on the place known as Monte Carlo, rather than on a trade mark, as evidenced by Mr Leclercq's declaration, I must dismiss the s.43 ground of opposition. 

Goods should be subject to a limitation
The opponent submits that, if it is found that the mark satisfies the requirements of the Act, including sections 41, 43 and 60, the present application should only be accepted with a limitation to the goods.  It says that where a mark contains geographical reference, the specification of goods must not cover goods upon which use of the mark would be misdescriptive.  In view of the clear geographical reference in the applicant's mark, the goods should be restricted to those originating from Monaco or Monte Carlo, the opponent maintains. 

With respect, I cannot accept the opponent's argument that, when used in respect of the goods in question, the applicant's mark would be misdescriptive if the statement of goods was not restricted to those goods which originated from Monaco or Monte Carlo.  Such a restriction would be required only if the opponent demonstrated that Monte Carlo was famous for manufacturing clothing, footwear and headgear, and that purchasers would expect the goods to emanate from there.  As stated previously in respect of the s.43 ground, I have found no evidence that the place name MONTE CARLO (or any other feature) included in the applicant's mark would be likely to indicate to the prospective purchasers where the goods were manufactured, or to be associated in their minds with the origin of class 25 goods. 

Conclusion
I have found that none of the grounds of opposition pursued by the opponent have been successful.  Accordingly, I dismiss the opposition and direct that the mark should proceed to registration, providing that the registration fee has been paid.

Vija Zars
Hearing Officer

10 November 2000