The Trinh Tran v Richard Allan Meldrum & Jo-Anne Meldrum

[1999] ATMO 4

Trade marks act 1995

decision of a delegate of the registrar of trade marks with reasons

Re - Trade mark application number 723162 in the name of The Trinh Tran and opposition to the registration of that mark, by Richard Allan Meldrum and Jo-Anne Meldrum

Trade mark application number 723162 is an application filed on 2 December 1996 by The Trinh Tran, a natural person residing at 49 Westall Road, Clayton South in Victoria.  Mr Tran applies to register the word hot piranha for clothing.

The trade mark was accepted for registration and the Registrar of Trade Marks advertised this fact in the Australian Official Journal of Trade Marks of 22 May 1997. Advertisement of acceptance opens a three month period in which a person may oppose registration. Within that time, and in accordance with the provisions of section 52 of the Trade Marks Act1995, Richard Allan Meldrum and Jo-Anne Meldrum, of 18 Elizabeth Avenue, Taree in New South Wales, on 21 August 1997, filed notice of their opposition. The grounds of opposition which they cite are very wide, and range across sections 42, 43, 44, 58, 59, and 60 of the Trade Marks Act1995.   Mr and Ms Meldrum support this opposition with two declarations, the first from Mr Meldrum (with exhibits RAM 1 - RAM 7) and the second from Michael James Kirov (with one exhibit - MJK 1).  Mr Tran, the applicant, did not respond with any evidence in answer to the opposition.

In due course, and in accordance with the provisions of Part 5 of the Regulations, the agent for Mr and Ms Meldrum, Mr Michael Kirov of Spruson & Ferguson, patent and trade mark attorneys of Sydney, sought a hearing.  This hearing was appointed to be conducted before me and to take place in Sydney on 13 October 1998.  Mr and Ms Meldrum were represented at that hearing by Mr Kirov.  The applicant, Mr Tran, did not attend, was not represented and did not file any written submissions.

Background

The opponents’ history is spelt out in Mr Meldrum’s declaration.  He and Ms Meldrum are the registered owners of the trade marks 341872 and 437143 below.

Number	Trade mark	Class	Application date	Goods
341872	hot tuna	25	14 January 1980	clothing and all other goods included in this class
437143	25	28 November 1985	all goods in the class

The fish device registered under trade mark number 437143 is referred to by Mr Meldrum as the piranha device.  It is, however, indexed in the Trade Marks Office records as fish grotesque with mouth open, and I will refer to it simply as the fish device.

Mr and Ms Meldrum started their business some time before 1978, and for at least 20 years have continuously used their hot tuna and fish device trade marks on a range of leisure clothing that seems best described as beach and surf wear.  The Meldrums’ principal business is the manufacture and retail sale of this clothing, but their product lines extend into bags, watches and other accessory items such as key rings and decalcomania  (transfers).  The hot tuna and the fish device trade marks appear, says Mr Meldrum, on ‘virtually every item sold by our Company’.  The fish device, he says, is the ‘symbol associated with the words hot tuna and the two trade marks frequently appear on the same garments’ - a point I will come to again shortly. 

The Meldrums’ advertise in numerous magazines, including fashion publications such as Vogue and Elle; high circulation magazines such as Cleo Magazine; and magazines dealing with surfing, such as Surfing Life, Surfing World Magazine, and Waves/Tracks.  Some five million dollars has been directed to advertising in the last 20 years. Mr and Ms Meldrum’s company also promotes their trade marks through sponsorship of a number of international surf competitions.   Mr Meldrum says:

… our Company further promotes the hot tuna Mark and the piranha  Device through sponsorship of major surfing events.  Our Company’s sponsorship includes the sponsorship of seven professional surfers competing in the World Pro Surf circuit, as well as meeting the cost of photo shots and models.  The photos obtained are then used to promote in turn Our Company’s clothing and Accessories. 

Mr Meldrum exhibits the hot tuna Summer Catalogue for summer 1997-98.  It depicts numbers of these professional surfers and models, and scattered throughout are images of both the hot tuna and the fish device trade marks. He also exhibits a selection of decalcomania featuring these signs - and says more than a million of them have been distributed. These exhibits bear out Mr Meldrum’s statement (which I mentioned above) that the words hot tuna and the fish device are frequently used together.  I include a sample of these depictions below. From these examples, the

meaning of Mr Meldrum’s statement that the fish device is the symbol associated with the words hot tuna becomes apparent. There are also examples in evidence, though not so many, of the fish device being employed along with a textual reference to piranha.  The following depiction comes from Exhibit RAM3 - the 1998 Winter Catalogue. This design is promoted both as a ‘screen print’ and as ‘stickers’.  Here, the term hot tuna,  the word piranha and the fish device all appear together: the words hot tuna appear on the ribbon behind the words Strange but true, a somewhat distorted version of the fish device is prominently featured, and the word piranha appears in the words piranha boy. 

One other print in the collection of screen prints and stickers shows the picture of a tin of soup labelled as Piranha Soup and said to be by hot tuna.

It is clear that Mr and Ms Meldrum’s business has had notable success. Their company at present sells clothing and accessories under the hot tuna and fish device trade marks through a large number of retail stores around Australia.  The company also has its own retail outlets in Oxford Street Sydney, in Hunter Street, Newcastle, and in Chapel Street, Melbourne. The trade marks are used in a range of combinations and formats and, as can be seen from the examples above, the combinations have strong and dramatic graphic impact. Some indeed may be found confronting. All together, the Meldrums’ evidence shows they use their two trade marks in a way that is striking and memorable and that this, to a considerable degree, results from the way in which the component parts of the two marks are combined. Turnover of goods under these combination marks is impressive, with Australian sales between 1975 and 1998 reaching almost $90 million. Exports have likewise flourished, and to this end, Mr and Ms Meldrum have achieved registrations for hot tuna and the fish device, and of trade marks which combine both marks, in some 20 other countries.

In summary, the opponents have demonstrated that by virtue of some  20 years of extensive and innovative use, and by exploiting the somewhat bizarre association of their friendly hot tuna trade mark with their fierce fish device, they have built a considerable reputation. A further uncontested claim that emerges from the Meldrums’ evidence is that the fish device is referred to by the Meldrums and is sometimes put before the public, as a piranha.  Against this history I turn to the grounds of opposition and to the submissions made on behalf of the opponents, Mr and Ms Meldrum, by Mr Kirov.

The section 42 ground

Section 42 of the Trade Marks Act1995 reads:

1. 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.

Mr and Ms Meldrum rely on paragraph 42(b) and allege that against the background of their success, Mr Tran’s intention in seeking registration must be read as calculated to imitate, and thereby to mislead and deceive. Registration of Mr Tran’s application trade mark, Mr Kirov submits, would therefore be contrary to law. In support of this proposition he refers me to a decision by the Registrar’s delegate, Hearing Officer Ian Forno, in Castlebrae v Anheuser-Busch Inc. (1993) 27 IPR 273. In this decision (an opposition under the provisions of section 49 of the Trade Marks Act1955) Mr Forno referred to a finding by Davies J., in Anheuser-Busch Inc v Castlebrae Pty Ltd, (1991) 23 IPR 54. His Honour found that in the face of one spuds mackenzie, a character developed by and associated with Anheuser-Busch Inc, Castlebrae’s use of the trade mark spuds macstud was calculated to mislead and deceive. In accordance with his Honour’s findings, Mr Forno then found that Castlebrae’s attempt to register spuds macstud as a trade mark was contrary to law. There is no evidence before me, however, to show that a court has found Mr Tran’s use of hot piranha calculated to mislead and deceive. On the contrary, Mr Kirov relies on nothing more than the unsupported allegation that, in light of Mr and Ms Meldrum’s success with their hot tuna and the fish device trade marks, Mr Tran could not have adopted hot piranha innocently. An unsupported allegation, however, is not enough for a finding that a trade mark is contrary to law, and I dismiss the opposition so far as it is grounded on section 42 of the Act.

The section 43 ground

Section 43 of the Act reads as follows:

1. 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 determining the section 43 ground I note the Explanatory Memorandum which spells out the meaning of this section.  Section 43, it says, provides that an application for registration must be rejected if the trade mark: …  because of some signification inherent to it, would be likely to deceive or cause confusion regarding a characteristic of the goods.

The trade mark here is hot piranha and, for the purposes of section 43, I am to look at this mark and consider whether any connotation which derives from those words is likely to deceive or cause confusion. It is necessary for that purpose to look at the mark in the context of the goods - and the goods here are clothing. There is nothing, so far as I can see, in the meaning of the words hot piranha which has any direct, or indeed indirect reference to these goods other than the fact that amongst the meanings that attach to the word hot, is the meaning fashionable and exciting(The Macquarie Dictionary - second edition). While fashion and excitement are values which one may or may not ascribe to the goods that Mr Tran markets under the trade mark hot piranha, that evaluation is purely a matter of opinion based on individual preference, and a disappointed expectation as to whether the clothing achieves that aim, does not come within the scope of deception and confusion.

I find that the opposition ground, so far as it relies upon section 43, is not made out.

Substantial identity or deceptive similarity ¾ Section 44

For the purposes of the section 44 ground, Mr and Ms Meldrum must show that hot piranha - which has a later priority date than either of the Meldrums’ marks - is substantially identical or deceptively similar to hot tuna, or to the fish device, and that the goods nominated in the respective trade mark claims are similar or closely related. The nominated goods in all three marks include clothing and the outcome of this ground therefore depends on a comparison of the marks.

hot piranha is clearly not substantially identical with hot tuna ¾  since the marks refer to two quite different kinds of fish.  Nor is it substantially identical with the  fish device trade mark ¾ since the application trade mark comprises the two words hot piranha and the opponents’ device is a fish of uncertain species and contains no reference to hot.

In respect of deceptive similarity, and first comparing the two trade marks hot piranha and hot tuna, Mr Kirov submits that the combination of the word hot with the names of fishes is off-beat and unique and quite enough to create a common idea.  That common idea, he says, will cause purchasers to expect that the two trade marks hot tuna and hot piranha indicate a common trade source.  In some contexts, for example in the manner in which the opponent has combined its trade marks, I agree that the terms hot piranha and hot tuna may engender a similar quirky offbeat images but it is also the case (as discussed above) that hot is a laudatory description.  As applied to clothing, it means fashionable and exciting. In the context of clothing, therefore, the terms hot piranha swimsuits, or hot tuna swimsuits can simply be read as hot swimsuits by piranha and hot swimsuits by tuna. Comparing the marks themselves then, and giving due weight to the fact that hot, the word they both share, has a significant descriptive meaning; and taking account of the fact that the words piranha and tuna are different in meaning - and have nothing in common in respect of sound or appearance - I cannot agree that these two trade marks are sufficiently alike to justify a finding that they are deceptively similar.

In respect of the fish device, , Mr Kirov urged me to acknowledge that it is a conventional representation of a piranha.  There was nothing in evidence, however, to show what a piranha looks like, or that this drawing is a fair representation of one.  Mr Kirov referred me to no general reference sources.  He simply assured me that as a child, he himself, as well as his school friends, had drawn piranhas, and that they looked just like Mr and Ms Meldrum’s trade mark.  I have never drawn piranhas and I do not have the knowldege to recognise one.  Thus I cannot agree that Mr and Ms Meldrum’s fish device is a conventional representation of a piranha, nor can I accept that the public, in the absence of the kind of guidance provided in the Meldrums’ publicity, and unaided by captions or context, will understand this device to be a representation of a piranha.  I am not satisfied that there is a link between the idea of a piranha and the fish depicted in trade mark 437143, and I come to the conclusion that the application trade mark hot piranha is not deceptively similar to this device mark.

Ownership ¾ section 58

As per the directives of his Honour, Justice Gummow, in Carnival Cruise Lines Inc v Sitmar Cruises Ltd., (1994) AIPC 91-049 at p38,114, in order for Mr and Ms Meldrum to make out a superior claim of ownership, they must show prior use of a trade mark which is substantially identical to the trade mark they oppose. It is clear that Mr and Ms Meldrum’s use of their hot tuna and fish device trade marks which commenced before 1978, predates Mr Tran’s application date of 2 December 1996; and, as I mentioned, Mr Tran has made no claim of use. However, I have found that the application mark is neither substantially identical nor deceptively similar to either one of the Meldrums’ trade marks. Accordingly, I must find that the ownership ground is not made out.

Intention to use ¾ section 59

Mr Kirov here wished me to take into account a letter of 4 August 1998 which, apparently, was sent by Loke & Associates, solicitors acting for Mr Tran, to Spruson & Ferguson  (Mr Kirov’s firm).  This letter was not, however, part of the evidence and I therefore declined to give it any weight at all.

Apart from the letter, Mr Kirov otherwise relies on the submissions put in respect of the section 42 ground, namely, that Mr Tran’s intention to use, seen in the light of Mr and Ms Meldrum’s reputation, was not an intention to use the mark, but to mislead and deceive. This I have already dismissed as unsubstantiated allegation.

I find that the section 59 ground is not made out.

Deception and confusion per reputation - section 60

Section 60 reads:

1. 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.

The issue here is whether the trade mark hot piranha is deceptively similar to any trade mark which, prior to 2 December 1996, conveyed a reputation that had been generated by the activities of Mr and Ms Meldrum or by their company. As distinct from the terms of section 44, the provisions of section 60 are not confined to comparison with such trade marks as are either registered or pending under the terms of the Trade Marks Act.   The relevant issue is not the status or priority date of the alleged conflicting trade mark, but the reputation incorporated in that mark.

Mr Kirov relies on the facts established in the Meldrum declaration, particulars of which are detailed above.  To briefly recapitulate, this evidence establishes that the company owned by Mr and Ms Meldrum has extensively and continuously used their two trade marks, hot tuna and the fish device, in respect of leisure and surfing clothing (and various accessories) in Australia, since as early as 1978.  The resultant reputation is largely due to a very successful tactic whereby the two marks are coupled in such a way, and with such consistency, that the words hot tuna are now associated with the fish device.  I agree with Mr Kirov when he says that part of the success of these trade marks lies in this coupling and the incongruity of associating the benign tuna, with the savage and grotesque fish device.   Further in evidence is the fact that Mr and Ms Meldrum have associated the term piranha with the fish device. Whether the depiction of Piranha Boy (see above), is use of the trade mark, is a matter which I am not required to go into here. In terms of reputation, however, I am satisfied that devices of this kind, used in association with products bearing the hot tuna and fish device trade marks, does show that Mr and Ms Meldrum can lay claim to notoriety which resides not only in the term hot tuna and in the image of the fish device but encompasses the word piranha and the ideas associated with that word.

Taking the evidence as a whole, I find that the reputation established by Mr and Ms Meldrum prior to 2 December 1996 exists in the words hot tuna, in the fish device and further extends to the word piranha and the ideas associated with that word. I hold that the fish device, as, for example, it is employed in their combination trade mark depicted below, is, due to the opponents’ market activities,  likely to be regarded by purchasers as the opponent’s depiction of a piranha.

The opponents’ reputation appears to me particularly to reside in the above trade mark, and in the final summing up of the evidence and the submissions, I find that the trade mark hot piranha is deceptively similar to it and, because of the reputation established by the opponents in that mark, use of the trade mark hot piranha is likely to cause deception and confusion.

In coming to this conclusion I give weight to the following matters:

§the evidence indicates that - regardless of the fact that it is labelled as tuna  - Mr and Ms Meldrum’s company regard and refer to the fish in this mark as a piranha

§catalogues displaying Mr and Ms Meldrum’s  trade marks show that the fish device is denominated as a piranha

§the word piranha is incorporated into some of combination trade marks employed by Mr and Ms Meldrum

§the Meldrums’ reputation is shown to be associated with the word piranha

§an idea similar to the idea in the somewhat incongruous combination of the words hot tuna and the grotesque fish device in the Meldrums’ combination trade mark, is evident in the trade mark hot piranha

§and finally, in light of the established reputation,  there is the common construction shared by the marks hot piranha and  hot tuna.

Decision

In respect of all of the grounds relied on in this opposition, other than the section 60 ground, I have found that the opposition does not succeed. 

In terms of the section 60 ground, however, I have found for the opponent.  On the basis of that finding, I refuse to register this trade mark. 

Costs

Mr Kirov, on behalf of Mr and Ms Meldrum, applied for an award of costs.  As the successful party, Mr and Ms Meldrum are entitled to them and, with the authority of section 221 of the Act, I make that award.  As per the provisions of regulation 21.13, the amount of costs must be taxed allowed and certified by a trade marks officer appointed by the Registrar for that purpose.

Helen R. Hardie
Deputy Registrar

19 January 1999