The Land of Legends Pte Ltd v DIWAN EMIRI

[2023] ATMO 108

TRADE MARKS ACT 1995

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

Re:Opposition by The Land of Legends Pte. Ltd. to registration of trade mark application number 2246990 (classes 16, 35, 39, 41, 43 & 44) – Arabian Land Of Legends – in the name of DIWAN EMIRI

Delegate:

Sheona Robertson

Representation:

Opponent: Corrs Chambers Westgarth

Applicant: Spruson & Ferguson

Decision:

2023 ATMO 108

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under sections 42(b) and 60 – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by The Land of Legends Pte. Ltd. (‘Opponent’) to the registration of the trade mark the subject of the application detailed below:

Application Number: 

2246990

Trade Mark:

Arabian Land Of Legends (‘Trade Mark’) 

Filing Date: 

4 February 2022 (‘Relevant Date’)

Applicant 

DIWAN EMIRI (‘Applicant’)

Goods & Services: 

Class 16: Books; notebooks and manuals; maps; tickets; brochures; photographs; packaging materials and albums.

Class 35: Retail store services for gifts, souvenirs, mementos, keepsakes and tokens of remembrance.

Class 39: Tourism services, including arranging of tours; transportation services; storage services.

Class 41: Entertainment services; social, cultural and sports events services including arranging activities and organisation of competitions (education or entertainment); conducting of entertainment events; face painting; health club services (health and fitness training); holiday camp services.

Class 43: Providing food and drinks services; hotel and temporary accommodation services.

Class 44: Spa Services.

1. Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks on 5 July 2022, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 3 October 2022.  The Applicant filed a Notice of Intention to Defend on 13 October 2022. 

2. The Opponent filed the following evidence in support of its opposition: 

• Declaration made on 20 January 2023 by David Finlayson, the Director of the Opponent, with Annexures 1 to 9 (‘Finlayson Declaration’).

1. The Applicant filed the following evidence in answer: 

• Declaration made on 2 May 2023 by Lan Pham, an Associate employed by Spruson & Ferguson Patent and Trade Mark Attorneys, the representative of the Applicant, with Annexures LP-1 to LP-3 (‘Pham Declaration’).

1. The Opponent did not file evidence in reply.

2. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  Both the Opponent and the Applicant requested that the matter proceed to a decision without hearing and the appropriate fee was paid.  As a result the matter has been allocated to a delegate of the Registrar of Trade Marks for a decision based on the written record.

3. As a delegate of the Registrar of Trade Marks, I have decided the opposition as required by s 55 of the Act. In doing so I take account of the materials filed during the proceedings, being the materials mentioned in paragraphs [2] to [4].

Grounds of opposition, onus and standard of proof

1. The SGP nominated grounds of opposition under ss 42(b) and 60 of the Act.

2. The onus of establishing at least one of the grounds of opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The date at which the rights of the parties are to be determined is the Relevant Date, being both the filing and the priority date of the Trade Mark.

The Opponent

1. The Opponent is a Singaporean company and affiliate of FTG Development, which owns and operates The Land of Legends Kingdom Hotel (‘Hotel’), The Land of Legends Theme Park (‘Theme Park’) and The Land of Legends Shopping Avenue (‘Shopping Avenue’), all of which are located in Antalya, Türkiye and which have been open to the public since around 2016. 

2. The relevant claims in the Finlayson Declaration can be summarised as follows:

• The Opponent has a number of trade mark registrations globally for the trade mark ‘THE LAND OF LEGENDS’ (‘Opponent’s Trade Mark’), though the Opponent’s Trade Mark is not registered in Australia.

• The Opponent and its predecessor, a Turkish company called Fine Otel Turizm Isl. A.S., have used the Opponent’s Trade Mark in Australia in relation to hotel, accommodation, spa, tourism, amusement park, entertainment, hospitality, restaurant and retail services and associated products since in or about 2016.

• Since opening in 2016, both the Hotel and the Theme Park have won several industry awards, including World Travel Awards and European Star Awards.

• Souvenirs bearing the Opponent’s Trade Mark are available for sale at the Shopping Avenue.

• Between June 2016 and December 2021, 288 Australians (including adults and children) were booked to stay at the Hotel. Many of these visitors also attended the Theme Park and Shopping Avenue. Australians staying in nearby hotels also visited the Theme Park and Shopping Avenue during this time.

• Since at least 2018, Australians have been able to book and review their stays at the Hotel on websites such as Trip Advisor and Booking.com.

1. The annexures to the Finlayson Declaration demonstrate use of the Opponent’s Trade Mark on the website (‘Opponent’s Website’) and on social media, hotel booking forms, theme park tickets, maps, entertainment programs and visitor wristbands, Trip Advisor reviews, and other marketing materials.

2. Annexure LP-3 to the Pham Declaration provides details of the applications and registrations for the trade mark ‘THE LAND OF LEGENDS’ in the name of the Opponent, including in Brazil, Dominican Republic, Oman, Qatar, United Kingdom, United States of America, United Arab Emirates and Turkey. The Opponent is also the owner of a registration for the following stylised variant of the Opponent’s Trade Mark in Türkiye:

The Applicant 

1. The Applicant has not filed any evidence as to the nature of the Applicant’s business and as such I have no information about it other than what is set out on the Register.   

1. It is declared that the Applicant has registered the Trade Mark or similar marks in numerous countries throughout the world including in Alegria, Japan, Kuwait, Lebanon, Russia and Saudi Arabia. Annexure LP-2 to the Pham Declaration contains copies of registration certificates, acceptance or publication notices and certified translations for the Applicant’s overseas registrations and applications.

2. It is also declared that the Applicant has registered or filed applications to register the trade mark ‘THE LAND OF LEGENDS’ in various countries including in Kuwait and Saudi Arabia.

Discussion

Section 60

1. 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)         another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, 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.

2. To establish a ground of opposition under s 60, the Opponent must demonstrate that as at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market, and because of that reputation use of the Trade Mark would be likely to deceive or cause confusion.

3. In McCormick & Co Inc v McCormick,[3] Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour considered the definition provided in the Macquarie Dictionary and decided that reputation is ‘the recognition of the [trade mark] by the public generally’.[4] Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[5]

   [3] [2000] FCA 1335 (‘McCormick’).

   [4] Ibid [81].

   [5] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘ConAgra’).

4. In Rodney Jane Racing Pty Ltd v Monster Energy Company, O’Bryan J observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[6]

   [6] [2019] FCA 923, [83].

5. In assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered.[7] In Le Cordon Bleu BV v Cordon Bleu International Ltee the Court observed that what amounts to a significant or substantial amount of people will depend on the nature of the goods or services in question.[8]

   [7] Renaud Cointreau & Cie v Cordon Bleu International Ltee[2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   [8] [2000] FCA 1587, [91] (Heerey J).

6. In McCormick, Kenny J quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[9]

   [9] ConAgra (n 5) [118].

7. In the SGP, the Opponent asserts that it acquired a reputation in Australia in the Opponent’s Trade Mark before the Relevant Date, owing to use in relation to goods and services including hotel, accommodation, spa, tourism, amusement park, entertainment, hospitality, restaurant and retail services and associated products since 2016. The relevant market for such goods and services would be a broad section of the Australian population.

8. The Opponent has provided limited evidence regarding the number of Australian consumers exposed to the Opponent’s Trade Mark. Because much of the Opponent’s evidence is undated, or dated after the Relevant Date, it is difficult to determine the extent of the  reputation in the Opponent’s Trade Mark as at the Relevant Date.

9. In my assessment, the Opponent’s claim to a reputation in Australia in the Opponent’s Trade Mark is not supported by the Finlayson Declaration. The Opponent may have developed a reputation in the Opponent’s Trade Mark overseas, particularly in Turkey, but I am not satisfied that any such reputation extends to Australia. In reaching this conclusion I have noted in particular the evidence described in paragraphs [27] to [33] below.

10. The Opponent provided evidence regarding the number of Australians that visited the Opponent’s Website between 2017 and 2019. The levels of engagement with the Opponent’s Website by persons in Australia are modest in terms of the potential pool of customers.

11. In paragraph 11 of the Finlayson Declaration the Opponent has provided the approximate total number of followers of each of its social media platforms, but details regarding the number of Australian followers of each account are not provided.

12. The Finlayson Declaration identifies, in paragraphs 15 and 19, a number of industry awards given to the Opponent. However, no information is provided as to the standing of these awards, either within the relevant industry or amongst the general public. Consequently, I am unable to determine the exposure of such awards to the relevant section of the Australian public.

13. Annexure 5 to the Finlayson Declaration contains representative images of souvenirs bearing stylised representations of the Opponent’s Trade Mark which are offered for sale in the Shopping Avenue. No information is provided as to the date souvenirs of this kind were first available for sale, or the numbers of souvenirs sold before the Relevant Date.

14. The information provided in paragraphs 23 to 26 of the Finlayson Declaration reveals only a modest number of Australians are likely to have visited the Hotel and the Theme Park before the Relevant Date. It follows that only a very modest number of Australian consumers would have received wristbands, maps, entertainment programs and related materials of the kind shown in Annexure 7 to the Finlayson Declaration.

15. Annexure 8 to the Finlayson Declaration contains only two reviews by Australian visitors to the Opponent’s facilities on Trip Advisor. Although the reviews are very positive, they are not on their own capable of demonstrating the Opponent’s Trade Mark enjoys a widespread reputation amongst Australian consumers.

16. Further, the Opponent has not provided any evidence as to sales or marketing expenditure in relation to the Opponent’s Trade Mark. I also note there is no information provided regarding distribution of the Opponent’s marketing materials referred to in paragraph 31 and represented in Annexure 9 of the Finlayson Declaration.

17. Overall, I am not satisfied on the evidence before me that the Opponent’s Trade Mark had, before the Relevant Date, acquired a reputation amongst a significant or substantial number of people in Australia. As s 60(a) of the Act has not been satisfied, it is not necessary for me to consider s 60(b).

18. Accordingly, the ground of opposition pursuant to s 60 of the Act has not been established.

Section 42

1. Section 42 of the Act provides:

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

   (a) the trade mark contains or consists of scandalous matter; or

   (b) its use would be contrary to law.

2. It is clear from the particulars provided for this ground of opposition in the SGP that the ground is being made under s 42(b) of the Act. The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would (rather than could) be contrary to law on the balance of probabilities.[10] 

   [10] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

3. In the SGP, the Opponent asserted that, owing to the Opponent’s reputation in Opponent’s Trade Mark, use of the Trade Mark in Australia by the Applicant would amount to misleading or deceptive conduct and the making of false representations under ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth).

4. The test for conduct contravening the ACL is a stricter one than the test for deception or confusion under s 60 of the Act.[11] Section 60 of the Act only requires that consumers are likely to be confused, whereas when, as is the case here, the Opponent’s ground under s 42(b) relies on reputation, the higher threshold under the ACL will only be satisfied if consumers would be misled or deceived owing to the Opponent’s reputation. If the Opponent cannot establish a ground of opposition under s 60 they will likewise be unable to establish a ground under s 42(b).

   [11] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

5. As previously stated, the Opponent has failed to establish a ground of opposition under s 60. It follows that on the stricter tests to be applied under the ACL, the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 or s 29 of the ACL. The ground of opposition under s 42(b) of the Act is not established.

Decision

1. Section 55 of the Act relevantly provides:

   (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)  to refuse to register the trade mark; or

   (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2246990 may proceed to registration not less than one month from the date of this decision. 

3. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

4. Neither party has sought orders as to costs and therefore I make no award of costs.

Sheona Robertson

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

8 August 2023