Thod Pty Ltd v Ms Noelle Jones & Mr Paul Boyatzis

[2010] ATMO 25

TRADE MARKS ACT 1995

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

Re:Opposition by MS NOELLE JONES and MR PAUL BOYATZIS to registration of trade mark application 1105397(9, 41) - dr. Y.E.S! - filed in the name of THOD PTY LTD.

Delegate:

Claudia Murray

Representation:

Opponents: written submissions only

Applicant: written submissions only

Decision:

2010 ATMO 25

Section 52 opposition – sections 43 and 60 – opposition unsuccessful on both grounds – registration proceeding– costs awarded against opponents.

Background

1.     THOD Pty Ltd (‘the applicant’) filed trade mark application number 1105397 on 24 March 2006, for the plain word trade mark:

dr. Y.E.S!

2.     The application was filed in classes 9 and 41 of the International (Nice) Classification of Goods and Services. The goods and services now appear as:

Class 9:

All forms of audiovisual media, including but not limited to CD's, tapes, vinyl records, DVD's, videos, DV's, VCD's and media files; all forms of downloadable or electronically transmittable or reproducible media or media capable of being downloaded or electronically transmitted or reproduced in any manner, including but not limited to ringtones and all other audio, visual or other images (both animated or still), text, data, media and software files; electronic and recorded publications; computer programs; apparatus for recording, transmission or reproduction of all types of sound, vision or other images; cards or other devices carrying magnetically, optically or electronically recorded or encoded information; recorded discs or other recordable devices; cases and containers for recorded media; software and programs (recorded -) for use with all forms of audiovisual media, including electronic games, of all kinds; all sold or usable separately or together as a unit and in any combination

Class 41:

Provision (including but not limited to production and distribution) of all forms of non-downloadable recordings of audio, visual, other images and all other media, live performances, recording studio services, and all forms of publishing services in this class; provision of entertainment, sporting and cultural activities and other events.

3. A ground for rejection under section 44 of the Trade Marks Act 1995 (‘the Act’) was raised against the application during examination. A prior registration was cited, trade mark number 975413, owned by the Australian Medical Association (WA). Other relevant details of that registration are as follows:

Trade Mark	Filing date	Class	Services
23 October 2003	41	Education; providing of training; preventative health education and training

4.     The applicant provided evidence of prior use of its trade mark which, together with an amendment to delete the services of ‘provision of education, including the provision of training’ from the application, facilitated its acceptance subject to the endorsement: ‘Provisions of paragraph 44(4) applied’. The trade mark was advertised accepted for possible registration in the Australian Official Journal of Trade Marks on 18 October 2007.

5.     On 18 January 2008, Ms Noelle Jones and Mr Paul Boyatzis (‘the opponents’) filed notice of opposition to registration of the trade mark. Grounds of opposition under sections 43 and 60 were nominated in the notice and an annexure to the notice.

6.     Evidence in support, answer and reply was duly served and filed. On 19 December 2008 the opponents requested to be heard in Canberra. The applicant also indicated its intention to be represented at the hearing. Then followed a series of delays and postponements of the hearing date, attributable to a variety of circumstances affecting in turn the Trade Marks Office and both the opposing parties. Eventually, it was agreed between the parties and me that neither party would be represented at the hearing nominally scheduled for the generally inconvenient date of 14 December 2009, but that I would consider two exchanges of written submissions from each side in making my decision after that date. This I have done.

Evidence

7.     The evidence in relation to this opposition comprises:

Evidence in Support

ØDeclaration of Paul Constantine Boyatzis, with Attachments, dated 9 May 2008.

Evidence in Answer

ØStatutory declaration of David Burmingham, with Exhibits DRI -1 to DRI-4, dated 15 August 2008.

Evidence in Reply

ØStatutory declaration of Paul Constantine Boyatzis, with Annexures 1-4, dated 11 November 2008.

8.     The evidence provides some background into the business activities of both applicant and opponents. In his first declaration, Mr Boyatzis explains that he is the Executive Director of the Australian Medical Association (WA) (‘AMA(WA)’). That Association is the owner of trade mark number 975413, pictured above, which was originally cited against the applicant’s trade mark. The ‘Dr YES’ program is described in information annexed to Mr Boyatzis’ declaration as ‘a peer-led educational program aimed at empowering young people to make informed and healthy choices. It is led by trained medical students who incorporate drama, role play and small group discussions in secondary school settings.’ ‘Dr YES’ stands for ‘Dr Youth Education Sessions’, although the letters do not have full stops between them. Mr Boyatzis declares that the ‘Dr YES’ program has ‘a reputation as a quality and well established program’. It has been operating for twelve years in Western Australia, with funding support from both Federal and State Governments and small and large corporations in the private sector. Further, Mr Boyatzis explains that the AMA has invested very heavily in the marketing of the ‘Dr YES’ name and program, and that ‘all jurisdictions in Australia are at variable stages in adopting the program.’ There is a considerable amount of promotional material and other documentation relating to the program annexed to both of the Boyatzis declarations, and this includes Certificates of Business Name Registrations showing that the AMA(WA) has registered DR YES as a business name in Western Australia, Tasmania, South Australia, New South Wales, Queensland and Victoria.

9.     Mr Burmingham’s declaration explains that he is the applicant’s sole director, and that he is a writer of songs with popular sporting themes, such as those used as football club anthems. He declares that he ‘first used the trade mark ‘dr Y.E.S.’ with respect to publishing services in Australia and overseas in late 1995 / early 1996’, and has used the trade mark continuously since that time. Mr Burmingham explains that the letters Y.E.S. in his trade mark stand for ‘Yoobeaut Entertainment Services’, and the ‘dr’ part is related to slogans he has also conceived such as ‘When your music is sounding a bit sick, call the doctor…Y.E.S!...dr Y.E.S!^TM music’. Mr Burmingham attests that he first used his trade mark on ‘recordable, printed and downloadable music and various publishing services’, and that ‘this has been extended to other audio and visual type products and publishing thereof’. Although Mr Burmingham claims that ‘there are in excess of 1000 audio titles within the dr Y.E.S! music catalogues and over 2000 visual images in the visual catalogues’, it must be said that the exhibits attached to his declaration do not support an impression that his trade mark has been, or is presently, used in connection with the full range of goods and services currently covered by his application.

Grounds of opposition

10.   There were only two grounds of opposition covered in the notice of opposition, and the opponents’ written submissions sought to press them both.

Section 43 - trade mark likely to deceive or cause confusion

11.   Section 43 provides that 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. Examples of the kinds of circumstances most clearly intended to be addressed by the section occurred in the VITAMIN[1] and ORLWOOLA[2] cases. In those cases, there was a danger the public might make a reasonable, but incorrect, assumption about a product based upon the trade mark, which could not easily be confirmed or discounted by even close inspection of the product.

[1] J. Kitchen & Sons Pty LTD v Inman (1939) 9 AOJP 1383 (Reg).

[2] Re Trade Mark "Orlwoola" (1909) 26 RPC 850 (C.A.).

12.   In Big Country Developments Pty Ltdv TGI Friday's Inc, [2000] FCA 720, 48 IPR 513, at 521, Wilcox, Kiefel and Emmett JJ commented in this manner upon the scope of section 43:

The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in [section 43]. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by s 43.

13.   Giles J, in Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006); (2006) 70 IPR 599, which is cited in both the applicant’s and the opponents’ submissions, has also discussed the operation of section 43 in a similar manner, at paragraph 53:

‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks (TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc [2000] FCA 720; (2000) 100 FCR 358 at [43]; McCorquodale v Masterson at [25]–[26]). Section 43 might well prevent the registration of HERBAGRA for classes of goods with no connection with herbal ingredients.

14.   As the applicant pointed out, the opponents’ submissions regarding deception and confusion of the public in terms of section 43 did not go to any connotation inherent within the applicant's trade mark application for the words ‘dr Y.E.S!’, but rather relied upon its similarity to the AMA(WA)’s registered trade mark for the same words plus a device, and its common law use of the plain words ‘Dr YES’. These are issues that are properly dealt with under section 60, also relied upon by the opponents. Accordingly, I will discuss those arguments further in the context of that section. Here, applying the precedent quoted above, I find the ground of opposition under section 43 has not been established.

Section 60 - trade mark with a reputation in Australia

15.   To satisfy section 60, an opponent must demonstrate that, at the time of filing of the opposed application (24 March 2006), there existed a significant reputation in another trade mark, such that use of the applicant's trade mark for the goods and services covered by the opposed application would likely cause a substantial or significant number of the public to be deceived or confused. The trade mark relied upon need not be subject of an application or registration, in order to be relevant in terms of this section.

16.   The applicant has argued that the registered trade mark owned by the AMA(WA) may be easily differentiated from its own, by virtue of the device also present in it. It also argues that, by virtue of the differences between the goods and services covered by the respective trade marks, section 60 does not apply. However, the opponents have also relied on the common law trade mark for the plain words ‘Dr YES’, and have documented use of that trade mark prior to the relevant date.

17.   Further, the applicant is not correct in arguing that the relevant comparison for the purposes of section 60 is between the actual services of the opponents, and the goods and services specified in the opposed application. Section 60 makes no mention of an opponent’s goods and services at all. It deals in far more general terms with the likelihood of confusion resulting from the applicant’s use of its trade mark on the goods and services specified in its application, in the face of the reputation of another party’s trade mark, irrespective of how that trade mark has actually been used.

18.   The courts have recognised that, for the purposes of section 60, the relevant reputation in an earlier trade mark can have accrued from a variety of sources. Kenny J in McCormick & Co v Mary McCormick (2001) 51 IPR 102, at page 129, quoted with approval the following discussion, by Hearing Officer Iain Thompson, of how reputation can be developed:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the `esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals' and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[3]

[3] See Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 at 436.

19.   I have carefully considered the opponents’ evidence and their submissions relating to the likelihood of deception and confusion amongst the public through a concurrent use of both parties’ trade marks, in terms of section 60. The opponents have provided me with a range of information, which paints a persuasive picture of the not-insignificant reputation the AMA(WA) has clearly established for its secondary school health program in its home state of Western Australia. However, while they have indicated an intention that the program will eventually operate throughout Australia, the evidence before me has led me to conclude that, at the relevant date of 24 March 2006, the ‘Dr YES’ trade mark had only accrued a quite localised reputation in what is, after all, a quite specialised field of activity, inherently quite different from that pursued by the applicant. No actual instances of customer confusion over the identity of the parties in the provision of their respective goods and services have been described. The opponents have not proved the existence of a reputation in the ‘Dr YES’ trade mark, at the relevant date, sufficient to create in the public mind the critical leap of actual, as opposed to notional, association likely to lead the applicant’s customers to believe its music publishing services originated from the same source as that which provided health education for teenagers.

20.   Taking into account all of the above, I find the opponents’ ground of opposition under section 60 to be also unsuccessful.

Decision

21. Subsection 55(1) of the Act provides:

(1)      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.

22.   The onus is upon an opponent to establish one or more of its grounds of opposition. Gyles J has referred to the appropriate standard of proof required in terms of a ‘balance of probabilities’.[4] His findings upon that issue, arrived at after an exhaustive consideration of the relevant authorities, have recently been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks.[5]

[4] Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006); (2006) 70 IPR 599.

[5] [2009] FCA 891 (18 August 2009), paragraphs 22-27.

23.   I find here that the opponents have not met the onus upon them, in terms of either of the grounds of opposition under sections 43 and 60 argued in their submissions. I therefore direct that Trade Mark No. 1105397 may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

24. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark opponents.

Claudia Murray

Hearing Officer

Trade Marks Hearings

31 March 2010