The Weather Channel Inc v XYZnetworks Pty Ltd

[2011] ATMO 116

TRADE MARKS ACT 1995

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

Re:Opposition by The Weather Channel Inc, to registration of trade mark application 1122530 (9, 16, 18, 25, 35, 38, 41) - The Weather Channel - filed in the name of XYZnetworks Pty Ltd.

Delegate:	Alison Windsor
Representation:	Opponent:  Angus Lang of Counsel, instructed by Gilbert & Tobin Lawyers Applicant:  Sophie Goddard SC instructed by Spruson & Ferguson Patent and Trade Mark Attorneys
Decision:	2011 ATMO 116 S52 Opposition: Grounds pursued under ss 41, 42(b), 58, 60 and 62A –subsection 41(6) applies – trade mark devoid of inherent adaptation to distinguish for services in classes 35, 38 and 41 – evidence insufficient to establish that trade mark did distinguish at filing date – opposition successful in respect of those classes – application may proceed for classes 9, 16, 18 and 25 following amendment to delete previously noted classes - costs awarded against applicant.

Background

1. XYZnetworks Pty Ltd (‘the Applicant’) filed an application to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’).  Current details of the application are shown below:

   Application number:   1122530
   Filing date:                7 July 2006

   Goods/Services:        Class 9: Sound recordings, audio visual recordings and multi-media entertainment products, including downloadable sound and audio visual content; videos, DVDs and compact discs; interactive products for entertainment; digital music (downloads); digital audio visual works (downloads);computer games and software; multi-media games and software; entertainment and educational products in digital form

   Class 16: Printed matter; publications; magazines; posters; calendars; stationary; instructional and training material; paper and cardboard articles

   Class 18: Hand bags, fabric shopping bags, umbrellas

   Class 25: Clothing, headgear, footwear

   Class 35: Advertising and promotion services, retail and distribution services in this class all being adapted for the entertainment, education, media and communications industries; retail, on-line retail, licensing, promotion, wholesale and distribution services in this class in relation to merchandise products connected with entertainment, education, media and communication services, films, television and radio programs; retail and promotion of pre-recorded videos, DVDs and other audio-visual products, multimedia and interactive products; business management and administrative services adapted for the entertainment, media and communications industries

   Class 38: Telecommunication services; broadcasting and transmission of television programs, films and audiovisual entertainment; webcasting entertainment; providing the telecommunication format for interactive television and other forms of interactive entertainment

   Class 41: Entertainment and education services including providing entertainment content and information using websites and online chat rooms; production of television programs for distribution to others; interactive television services; production of entertainment and education content and the distribution of television programs, films, edutainment and audio or audiovisual entertainment to a television network; the distribution of entertainment content for others by a variety of electronic telecommunication means; the programming and presentation of television, film and audiovisual content; providing television entertainment and interactive entertainment by means of the Internet; on demand entertainment services using a variety of telecommunication means and the Internet; providing entertainment information online; publication of texts and magazines in print or electronic format; organisation and presentation of competitions; organisation and presentation of conferences, seminars and workshops

   Trade Mark:             The Weather Channel (‘the Trade Mark’)

   Endorsement: Provisions of subsection 41(5) applied.

2. The application was examined as required by section 31 of the Act. The first official report that issued on the application raised grounds for rejecting the Trade Mark under the provisions of section 41 of the Act in respect of the services nominated in classes 35, 38 and 41. The Applicant filed evidence of use of the trade mark and it was then accepted for possible registration under the provisions of subsection 41(5), and advertised as such in the Australian Official Journal of Trade Marks dated 10 January 2008.

3. On 9 July 2008, following the grant of an extension of time for the purpose of doing so, The Weather Channel, Inc (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration.  The parties then served and filed evidence in accord with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

4. I heard the matter in Sydney as a Delegate of the Registrar of Trade Marks on 11 August 2011.  The Opponent was represented by Angus Lang of Counsel, instructed by Gilbert & Tobin Lawyers.  The Applicant was represented by Sophie Goddard SC, instructed by Spruson & Ferguson Patent and Trade Mark Attorneys.

   Grounds for Opposition and Onus

5. The Notice included all grounds for opposition articulated in the Act. However, at the hearing, the Opponent pursued only those grounds based on sections 41, 42(b), 58, 60 and 62A. For completeness, I treat the remaining grounds as having been abandoned.

6. The onus is on the Opponent to establish one or more of the grounds it has pursued on the balance of probabilities.[1] 

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13 at [22] to [26]; Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

7. The date at which any ground must be established is the application filing date, that is, 7 July 2006. In respect of section 58, however, use prior to the application date by either party will be relevant.

   Evidence provided

8. The declarations provided as evidence in this matter are as follows:

   Evidence in Support

   ·Greg Heanue, made 5 August 2009, with Exhibits GH-1 to GH-23 and Confidential Exhibits A and B

   Evidence in Answer

   ·Julian Delany, made 10 August 2010, with Exhibits JD-1 to JD-38 (Exhibits JD-3, JD-4, JD-14 and JD-36 are Confidential Exhibits)

   ·Richard Charles Finlayson, made 1 September 2010, with Exhibits RF-1 to RF-18

   Evidence in Reply

   ·Raymond J Ban, made 4 March 2011, with attachment

   The Opponent’s evidence

9. Greg Heanue is the Vice President of Consumer and Ad Sales Marketing for the Opponent.  He states that the Opponent is a member of a group of companies which provides a broad range of weather and weather related services in the United States of America and around the world.  These services include products for radio, newspapers, digital cable services, interactive television and broadband and wireless platforms. 

10. Mr Heanue says that the Opponent began its operations with the launch in 1982 of a national U.S. cable television network called ‘The Weather Channel’ which was devoted entirely to the weather.  The Opponent’s trade mark ‘The Weather Channel’ was used from 30 July 1981 in relation to the imminent launch of that television network.  The network quickly became popular and by 1983, one year after its launch, it already had 9.4 million US subscribers.  This number continued to grow until in 2008 the network was subscribed to by 98 million households.  By August 2009 (the date of Mr Heanue’s declaration) the network was able to be viewed in more than 97% of all homes across the US which subscribed to cable television.

11. In the late 1990s the Opponent operated weather television networks in Germany, the United Kingdom and in 17 Latin American countries, but Mr Heanue states that these networks have since been shut down.  He says the Opponent now provides television programming via standard and non-standard televisions, that is, by cable, direct broadcast satellite and other means, under the trade mark ‘The Weather Channel’ in 238 countries around the world, including in Australia.

12. In the US, the Opponent’s network produces continuous, 24-hour national, regional and local weather-related video programming as well as interactive television programming, video-on-demand (VOD) programming, educational features and other special programs.  In addition to television programming Mr Heanue says the Opponent also provides a range of services including the provision of weather related services to radio, both AM and FM; provision of information via the Internet and via wired and wireless electronic media as well as publishing books, DVDs, audio and/or visual recordings and multi-media products, videos, compact discs, digital music and audio-visual downloads, computer games and software and a broad range of other goods including clothing items.

13. In Australia, Mr Heanue says the Opponent first used the trade mark ‘The Weather Channel’ on 31 March 1995 when its www.weather.com website came online.  He states that the website has been accessible to Australian consumers since its launch.  The Opponent says it has provided specifically Australian content since 2001 via the website au.weather.yahoo.com, though no examples of information from that website at or prior to the Trade Mark’s filing date are in evidence.

14. Many of the examples noted within the Heanue declaration itself or provided as Exhibits are dated later than the priority date or appear to have relevance only to the U.S. market.  The Opponent has, however, provided evidence that it has licensed television programs to the Applicant for broadcast via the Applicant’s own network to its subscribers in Australia and prior to the priority date of the Trade Mark.  These programs are branded with the Opponent’s trade mark The Weather Channel. 

15. The declaration provided by the Opponent as its evidence in reply is that made by Raymond Ban and is generally a response to the Applicant’s Finlayson declaration to which I will refer later.  Mr Ban provides an article from the Sydney Morning Herald dated 13 May 2000 which includes a reference to the Opponent’s Weather Channel website and which he says points to recognition of the Opponent by the media in Australia. 

    The Applicant’s evidence

16. Richard Finlayson was the General Manager of the Applicant’s predecessor in business, The Weather Channel Australia Pty Ltd (‘WCA’)[2], the assets and business of which were acquired by the Applicant in 2002. 

    [2] Mr Finlayson says that WCA was known as Weather 21 Pty Ltd between 1998 and 2000 when it changed its name to The Weather Channel Australia Pty Ltd.

17. Mr Finlayson states that from 1999 to about April 2000 WCA produced and distributed to the AUSTAR satellite television network for broadcast in Australia a 24-hour weather reporting service under the name “Weather 21”[3].  In April 2000, AUSTAR advised that it could no longer guarantee broadcast of the program on its channel 21.  In addition, the Applicant was investigating extension of its broadcast to the FOXTEL network and the ability to secure broadcasting on channel 21 of that service could not be guaranteed.  It was necessary therefore for a new name for the channel to be devised and Mr Finlayson says that he had searches and enquiries conducted on behalf of the Applicant to determine whether any third parties had prior rights in Australia in any of the names being considered, including the name “The Weather Channel”. 

    [3] The number was a reference to the AUSTAR channel on which the program was broadcast.

18. Mr Finlayson says that he was aware of the existence of the Opponent, and had visited its Office in Atlanta, Georgia in the United States at some time during 1999 and had discussions with staff members, including Raymond Ban (who has provided a declaration for the Opponent in this matter).  He states that he was not aware at that time of the Opponent offering any goods or services within Australia.  He also states that following his visit to the Opponent, he was left with the impression that the Opponent did not wish to extend its activities to Australia.[4] 

    [4] Mr Ray Ban disputes this impression in his declaration provided as evidence in reply.

19. In about April 2000 Mr Finlayson says the Applicant rebranded its broadcast weather service as ‘The Weather Channel’.  Exhibit RCF-16 consists of a copy of an article published in B&T Weekly[5] which announces the re-branding of the broadcast service to its current name and comments “[t]he name pays tribute to the US Weather Channel which boasts 72 million subscribers and is the number two cable TV brand in the [United] States”.  It also mentions that the Opponent’s chief meteorologist Keith Westerlage was in Australia at the time and commented that the Applicant’s interactive television capacity was well ahead of the Opponent’s service, and that he considered it heralded a new era for weather broadcasting.

    [5] B&T Weekly is an Australian magazine which reports on the events and issues that are of possible interest to the advertising and marketing professional

20. Mr Finlayson then goes on to mention that in December 2001 the Applicant received a letter from the Opponent’s Senior Counsel requesting that it cease use of the “marks The Weather Channel and Weather Channel” on the basis of the Opponent’s claimed internationally famous connection with the words and the Applicant’s unauthorised use of identical and confusingly similar names.  Mr Finlayson says that his legal representatives responded to the letter advising the Opponent that the Applicant claimed extensive use of the disputed words in Australia and that all rights in Australia in the Trade Mark were vested in the Applicant.

21. Julian Delany is the General Manager of the Applicant’s weather channel.  He states that the Applicant provides a number of channels for subscribers to cable and satellite television services within Australia.  These channels include The Lifestyle Channel, LifeStyle FOOD, LifeStyle YOU, Channel [V], [V] Hits, Max, Country Music Channel, Arena and The Weather Channel.  Since April 2000, he says, the Applicant has produced and distributed the weather service under the Trade Mark to the AUSTAR satellite television network and, since December 2002 to FOXTEL and OPTUS TV cable television networks for broadcast in Australia.

22. Mr Delany says that since at least June 2001 the Applicant has also provided online interactive weather services under the Trade Mark from an Australian website located at The television service, as well as other products and services the Applicant offers under the Trade Mark, have been promoted at this website. 

23. As at June 2010, Mr Delany states that there were in excess of 2.2 million residential subscribers to the television networks through which the Applicant’s weather service under the Trade Mark is broadcast.  The sales revenue, comprising revenue from subscriptions, advertising sales revenue and total revenue for the weather service the Applicant provides is provided in Confidential Exhibit JD-5 and I am thus unable to provide exact figures.  I can say that the figures are substantial both prior to and after the priority date.

24. Mr Delany also gives details of products offered and activities undertaken before and after the priority date of the application.  These include ‘Weather on your Website’ software available for personal computers and the ability to access local forecasts via television services (available 2004); an educational series relevant to the national geography curriculum for Australian secondary schools (Weather Ed series broadcast from October 2006 to December 2007); ‘Pollen on your desktop’ software (2006-2007); mobile phone applications (from 2005) and promotional contests and competitions provided at various times.   

25. In respect of advertising the weather information services the Applicant offers, Mr Delany refers to radio, television, and print advertising and appearances on various radio shows and television shows on free to air channels.  He also notes that since about 2001 the Applicant has used the Trade Mark on a number of promotional items including caps, beanies, beach towels and t-shirts, stationery items and umbrellas.  In 2004 the Applicant won an award[6] for the most outstanding documentary in respect of a program about the water crisis in Australia.  That program ran on The Weather Channel which uses the Trade Mark.  The Applicant won further awards of a similar nature in 2010.

    [6] An ASTRA award – the Australian Subscription Television and Radio Association industry award.

    Discussion and Reasons

26. The Opponent pursued the five grounds of opposition noted previously in paragraph 5. Section 41 was the first matter raised at the hearing, and that is where I will begin my discussions.

    Section 41 – Trade mark not distinguishing applicant’s goods or services

27. Because the application was filed prior to enactment of the Trade Marks Amendment Act 2006, the pre-amended wording of section 41 applies. The section provided the following:

    Trade mark not distinguishing applicant’s goods or services

    (1)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

    Note 1:       For applicant and predecessor in title see section 6.

    Note 2:       If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

    (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).

    (6)  If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

    (a)  if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

    (b)  in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

    Note 1:       Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

    (a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

    (b)  the time of production of goods or of the rendering of services.

    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).

1. The Opponent’s submissions in respect of the section 41 opposition ground go largely to the Opponent’s own claims as to its use of and reputation in the Trade Mark. The Opponent submitted that that this evidence was relevant because the Trade Mark did not uniquely distinguish goods and services of the Applicant in particular “and no other”.[7]  While I have considered the submissions, I do not consider that they are of particular relevance at this stage.

   [7] Colorado Group Ltd and Another v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 74 IPR 246 at [136]

2. Section 41 of the Act provides a scheme for the assessment of the inherent adaptation of a trade mark to distinguish the goods or services of one person from the similar goods or services of another. The scheme of section 41 and how it should operate was discussed at some length by Branson J in the Oregon decision[8]. Her words are often quoted and I will not copy them here. However, in essence what she has said the Registrar must do in making a decision under section 41 of the Act is to consider subsections (3) to (6) of section 41, which will result in one of the following conclusions:

   (a)  that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b)  that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

   (c)  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 there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

   [8] Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998)40 IPR 498

3. Branson J determined that if the Registrar reached conclusion (b) or (c) then she is, within the meaning of subsection 41(4) “unable to decide the question”.  A decision in respect of conclusion (b) brings into operation the provisions of subsection 41(6).  If the Registrar considers that the trade mark is devoid of adaptation to distinguish an applicant’s goods or services, then the onus falls on the applicant to substantiate that, because of the extent to which it has used its trade mark before the filing date, the trade mark does in fact distinguish the applicant’s goods or services, and did so at the application date.

4. If the Registrar reaches conclusion (c) then the paragraphs (a), (b) and (c) of subsection 41(5) are brought into operation. The Registrar must then consider the combined effect of the matters set out in those paragraphs in section 41(5) and decide whether or not the trade mark does already distinguish or is capable in the future of distinguishing the applicant’s goods or services.

5. The Opponent’s claim to a reputation in the Trade Mark is not relevant at this stage because the Trade Mark is being considered on the basis of its inherent qualities. It is necessary that the trade mark be considered against the provisions of section 41, with a view to reaching one of the conclusions noted above, and the initial step in the process is forming a view as to the extent of inherent adaptation to distinguish the Applicant’s goods and services which resides in the Trade Mark.

6. The test of the inherent adaptation of a trade mark to distinguish its goods was set out by Justice Kitto in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 (at 555):

   The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

7. I note that Kitto J had already said in 1964 in Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 (MICHIGAN) at 514:

   [T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

   and that he was in effect there paraphrasing the words of Lord Parker of Waddington in Re W & G du Cros Ltd’s Application (1913) 30 RPC 660 that Kitto J had earlier in MICHIGAN (at 514) quoted with approval.

8. Inherent adaptation is a concept that refers to a quality of the trade mark itself and it is not one that can be acquired through use in the market place. As Gibbs J said in relation to paragraph 26(2)(a) of the repealed Trade Marks Act 1955 in discussing the concept:

   Inherent adaptability is something which depends on the nature of the trade mark itself - see Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 515 - the Michigan case - and therefore is not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise.[9]

   [9] Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 at 424 (the Whopper case)

9. In the Michigan case at page 515 Kitto J had observed

   the more apt a word is to describe the goods, the less inherently apt it is to distinguish them as the goods of a particular manufacturer.

10. The Trade Mark consists of the words “The Weather Channel”.  The word ‘weather’ does not need defining as it is extremely well understood.  In respect of a broad range of largely communication services, the word ‘channel’ is relevantly defined in the Macquarie Dictionary[10] as follows:

    ·    a frequency band wide enough for one-way communication, the exact width of a channel depending upon the type of transmission involved (as telephone, radio, television, etc.)

    ·    a television station

    ·    an internet website hosting news, music, entertainment, movies, online games, etc..

    [10] The Macquarie Dictionary Online, Macquarie Dictionary Publishers Pty Ltd.

11. Given these definitions of the word ‘channel’, the Trade Mark as a whole is descriptive of any services related to the weather (in its broadest sense) which are broadcast or otherwise made available via television and/or the internet, including items such as weather reports or programs about weather events.  It is, as Mr Finlayson stated in paragraph 15 of his declaration “the obvious choice of name for a channel about the weather”.  The Trade Mark is thus one which other traders are likely to think of and want to use in respect of their similar services.  It is lacking in any inherent adaptation to distinguish for the range of services previously described.  Subsection 41(6) therefore applies, and the onus shifts to the Applicant to demonstrate that at the filing date the Trade Mark did distinguish the Applicant’s services.[11]

    [11] There is no indication on the original examination work file to explain the examiner’s decision that the provisions of subsection 41(5) rather than 41(6) applied in this case. 

12. The Applicant states that it changed the name of its television broadcast weather service from ‘Weather 21’ to ‘The Weather Channel’ in about April 2000,[12] some 6 years before to the priority date of the Trade Mark.  It was originally transmitted via the AUSTAR satellite television network, and since 1 December 2002 on the FOXTEL and OPTUS TV cable and satellite networks as well.  The channel ran 24 hours per day for 365 days of the year throughout Australia during that time and, the Applicant declares, continues to do. 

    [12] Finlayson [18]; Delany [7].

13. Mr Delany states that as at 30 June 2010 there were in excess of 2.2 million residential subscribers to the three networks noted in the previous paragraph, resulting in an estimated potential audience within Australia amounting to almost 30 percent of the population.  However, it has not provided even an estimate of the situation as it was prior to the filing date of the Trade Mark.  I have no indication of the number of subscribers who signed up for the channel prior to the filing date and no indication of the rate of growth of the subscribers to the network at any stage prior to the filing date.  The information provided as to general knowledge within the market of the channel and of the Applicant’s claimed trade mark in the period prior to the filing date is limited indeed. 

14. The Applicant says that since June 2001 it has provided an online interactive weather service from the Australian URL The website is available more widely than is the television broadcast service, which is restricted to subscribers of the three television networks mentioned previously.  The Applicant has provided figures for ‘hits’ on its website from persons with an Australian IP address for the years 2004 up until mid 2010.  It appears from these figures that the number of ‘hits’ on the website have increased markedly since 2004.  However, prior to the filing date of the Trade Mark the picture is not really clear.  The 2004 figures show 5.5 million ‘hits’ on the website, which increases to over 13 million in 2005.  However, I have no way of assessing whether these figures point to a website contacted by a large number of people, or whether they refer to repeat hits from a relatively small contact base.  The figures, therefore, do not carry a great deal of weight or meaning.

    [13] Delany [10]

15. The Applicant has also claimed retail, wholesale and distribution services in class 35 in relation to ‘merchandise products’.  However, while some information has been provided about the distribution of promotional goods such as t-shirts and caps, as well as a variety of other small promotional items, I can find nothing specific within the evidence which refers to retailing or wholesaling services of any kind. 

16. The Applicant’s evidence falls far short of what is required to satisfy me that the Trade Mark meets the requirements of subsection 41(6).  If the provisions of 41(5) applied, as the examiner seems to have assumed, the evidence provided may have satisfied me of the Trade Mark’s capacity to distinguish.  However, much of the evidence provided is of use after the filing date and cannot be taken into account for the purposes of subsection 41(6).  I am therefore not satisfied that, at its filing date, the Trade Mark was already distinctive of any of the Applicant’s weather-based services, which covers, as far as I can see, all the services claimed.  As a result, the ground of opposition has been established in respect of subsection 41(6) for the nominated services in classes 35, 38 and 41.  

17. While I am satisfied that the ground for opposition is established in respect of the services claimed it has not been established for the goods the Applicant has claimed in classes 9, 16, 18 and 25.  I am satisfied that the Trade Mark is adapted to distinguish the Applicant’s goods in those classes.  However, while it is not necessary for me to consider the other grounds for opposition in respect of the services, I must consider them in respect of the goods classes.

    Section 60 – trade mark similar to one that has acquired a reputation n Australia

18. Because of its filing date, the Application is subject to the provisions of section 60 as it was prior to the TradeMarks Amendment Act 2006.  The section provided:

    Trade mark similar to trade mark that has acquired a reputation in Australia

    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.

19. Both Applicant and Opponent are effectively claiming the identical trade mark.  The remaining questions to be decided are whether the Opponent has established, within Australia and before the priority date, the reputation it claims and whether, as a result of that reputation, the Applicant’s use of the Trade Mark on goods in classes 9, 16, 18 and 25 would cause deception or confusion. 

20. The information the Opponent has provided does not satisfy me that it has a reputation in Australia as envisaged by section 60.  Mr Heanue states that the Opponent’s website has been accessible to Australian consumers since its launch and that it has provided specifically Australian content since 2001 via the website au.weather.yahoo.com.  However, it has not provided any examples from either website showing Australian content or information aimed at Australian consumers either before or after the priority date.  Indeed, most of the examples noted within the Heanue declaration itself or provided as Exhibits are dated later than the priority date and appear to have relevance only to the U.S. market. 

21. The Opponent has, however, provided evidence that it has licensed television programs to the Applicant for broadcast via the Applicant’s own network to its subscribers in Australia and before the priority date of the Trade Mark.  These programs are branded with the Opponent’s trade mark ‘The Weather Channel’.  It is not at all certain, however, that when these programs were broadcast in Australia, it was clear to the viewers that the words “The Weather Channel” were seen and recognised as belonging to the Opponent rather than to the Applicant.  The evidence before me suggests that the average viewer would not distinguish between the Opponent’s “The Weather Channel” trade mark and that of the Applicant even if both appeared on the television screen at the same time.

22. The Opponent has not provided any sales or advertising figures relevant to the Australian market, and that failure, taken along with the lack of evidence showing specific activity within this market, does not allow me to infer any kind of reputation within Australia.  I am not satisfied that the Opponent has a reputation within the Australian marketplace in respect of any goods or services.  Thus there is very little likelihood that the Applicant’s use of the Trade Mark would result in any deception or confusion.  This ground for opposition is not established.

    Paragraph 42(b) – use contrary to law

23. Since the Opponent has failed to establish that it has acquired a reputation within Australia, it follows that the ground for opposition under paragraph 42(b) would also not be established. The opponent submitted that use of the Trade Mark would be contrary to law because it would constitute a breach of section 52 of the Trade Practices Act 1974 (‘TPA’ - now section 18 of the Australian Consumer Law, Volume 3, Schedule 2 of the Competition and Consumer Act 2010).

24. Section 52 of the TPA refers to misleading or deceptive conduct. I have already found that the use of the Trade Mark is unlikely to cause deception or confusion in terms of section 60 of the Act because I am not satisfied that the Opponent has established a sufficient reputation in its trade mark in Australia. There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct than is the case with trade marks likely to deceive or cause confusion under sections 44 or 60. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd[14], by way of example, Gibbs, CJ noted (at 688):

    In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

    [14] (1982) 149 CLR 191

25. Since I have found that the use of the Trade Mark is not, at a minimum, likely to “deceive or confuse”, it follows that use is not, on the stricter test posited by the TPA, likely to mislead or deceive. The section 42 ground is thus not established.

    Section 58 – Applicant not owner of trade mark

26. Section 58 states:

    58  Applicant not owner of trade mark

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

27. On the basis of the evidence before me and as discussed earlier in this decision, the Opponent has not established use of the Trade Mark before either the Applicant’s first use or the priority date. The Opponent therefore cannot establish ownership of the trade mark in Australia, and the ground under section 58 is not made out.

    Section 62A – application made in bad faith.

28. In respect of this ground, the Opponent is relying on its claim to a reputation in the Trade Mark, and a reputation of such stature that the Applicant should have known that applying for the Trade Mark was not a reasonable act.  The evidence, however, does not support this claim for renown, and particularly in respect of the goods in the four classes under consideration.  The Opponent is unable to establish this ground.

    Summary

29. In summary, this opposition has been partially successful because the Applicant did not provide evidence sufficient for the purposes of 41(6), an error which is perhaps understandable given that the initial examination did not make any reference to that subsection.  The Opponent has likewise not provided evidence sufficient to support all the grounds upon which it chose to rely.  However, if the shortfalls in the evidence were to be made up, as they could have been in the present opposition proceedings (or may be in a hearing in another forum), the end result might be different.

    Decision

30. Section 55 provides the following:

    Decision

    55. Unless the proceedings are discontinued or dismissed, 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.

    Note:  For limitations see section 6.

31. I have decided that the opposition has been established in respect of the ground under section 41 in relation to the services in classes 35, 38 and 41. I refuse to register the Trade Mark in respect of the services in those classes.

32. However, the application may proceed to registration in respect of the goods in classes 9, 16, 18 and 25.  I will allow the Applicant four weeks from the date of this decision to request amendment to the application to delete all the services covered under classes 35, 38 and 41.  If the request to amend is not received within that time, I will refuse to register the trade mark in its entirety.  

    Appeal

33. This decision may be appealed to the Federal Court.  If the Registrar has been served with a notice of appeal before the end of the time period noted above, I direct that the application shall not proceed further until the appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s order or direction.

    Costs

34. Costs usually follow the event and I see no reason to depart from that practice in this case.  I award costs against the Applicant according to the official scale.

    Alison Windsor
    Hearing Officer
    Trade Marks and Designs Hearings
    22 November 2011