Time Warner Entertainment Company LP v Just Spectacles Pty Ltd

[2003] ATMO 43

TRADE MARKS ACT 1995

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

Re:Opposition by Time Warner Entertainment Company LP to registration of trade mark application 892108(9) - MATRIX EYEWEAR - filed in the name of Just Spectacles Pty Ltd.

Date of Decision:	29 July 2003
Delegate:	Jock McDonagh
Representation:	Opponent Ms Julia Baird, instructed by Chrysiliou Law Applicant Mr Richard Wilenski of Tottle Christensen Lawyers
Decision:	1. Section 52 Opposition: s55(b) registration allowed 2. Costs awarded against opponent

Background

1. The applicant, Just Spectacles Pty Ltd, filed trade mark application number 892108 on 15 October 2001, for the trade mark matrix eyewear, in respect of the following goods:

   Class 9: Optical: lenses: spectacles, sunglasses, lenses for spectacles and for sunglasses, frames for spectacles and for sunglasses, spectacles cases and sunglasses cases

2. Acceptance of the application was advertised in the Official Journal of Trade Marks on 14 February 2002.  On 14 May 2002 a notice of opposition was filed on behalf of the opponent, Time Warner Entertainment Company LP, by its solicitors, Chrysiliou Law of Sydney.

3. Evidence in support was duly filed with the Trade Marks Office and served on the applicant.  The applicant has not filed or served evidence in answer. The hearing was in Canberra on 16 April 2003 before me as a delegate of the Registrar of Trade Marks, with the parties appearing by telephone link. Ms Julia Baird of counsel, instructed by Chrysiliou Law represented the opponent. Mr Richard Wilenski, of Tottle Christensen Lawyers of Perth, represented the applicant.

4. Seven grounds of opposition were relied on at the hearing, the principle grounds being sections 42, 43 and 60 of the Trade Marks Act 1995 (“the Act”).

   The Evidence

5. The evidence consists of the following statutory declarations.

Date		Declarant	Description	Annexes
Evidence	in Support
19.08.2002		Andros CHRYSILIOU	Trade Marks Attorney & Solicitor	AC1 to AC3
15.11.2002		Nils Victor MONTAN	Assistant Secretary, Time Warner Entertainment Company LP	NM-1 to NM-8

1. No evidence has been furnished by the applicant.

2. The Chrysiliou declaration provides information regarding the opponent’s movie the matrix , which was filmed in Sydney and released in Australian cinemas in 1999. The picture is said to have been extensively exhibited in Australia by movie showings and by sales of video and DVD copies of the picture.

3. The Chrysiliou declaration also exhibits a poster for the picture, and states that a point of identification in the poster, the picture and publicity is the “sunglasses look”.

4. Mr Chrysiliou also gives opinion evidence based on his experience to the effect that the movie the matrix poster has a similar look to sunglasses advertising, and exhibits an example advertisement for killer loop eyewear. He states that in this case the trade mark killer loop is combined with the descriptive term eyewear. He opines that in this case and that of matrix eyewear, the word eyewear would be regarded as simply identifying the product of the brand matrix.

5. Mr Chrysiliou further states that he caused enquiries to be made at one of the applicant’s eyewear stores and did not locate any use of matrix in respect of eyewear. An unidentified shop attendant from one of the applicant’s stores is quoted as being unaware of any such stock and as having indicated that it was unlikely that such products would be stocked in the future.

6. Mr Montan, a senior executive of the opponent, provides specific details of the box office receipts and video and DVD sales of the movie the matrix. He also states that a deliberate strategic point of identification in the movie the matrix is the “sunglasses” look of the characters. He exhibits a number of publications made by the opponent that exemplify this aspect. He also exhibits a number of articles that refer to the sunglasses aspect of the movie the matrix.

7. Mr Montan also states that the “sunglasses” look of the characters featured in the promotional materials associated with the movie the matrix gave rise to an expectation by the public that the opponent would manufacture and sell matrix sunglasses.

   Grounds Considered

   Ground 1 - s42: the use of the applicant’s mark would be contrary to law

8. The opponent submitted that use of the applicant’s mark would be contrary to s52 Trade Practices Act 1974 and the common law tort of passing off. Counsel cited Equity Access Pty Limited v Westpac Banking Corporation (1989) 16 IPR 431 (“Equity Access”), per Hill J at 440-442 to show various propositions relevant to determining a contravention of s.52 in a name/getup type of case.

9. Counsel for the opponent highlighted the use of sunglasses as a signature element of the movie the matrix. It was submitted that character merchandising and the merchandising of character elements of movies are well established concepts in Australia, and in particular attention was drawn to 20th Century Fox Film Corporation & Anor v South Australian Brewing Co. Ltd (1996) 34 IPR 225 (“Duff Beer”) at 238-239 and Hogan v Pacific Dunlop Ltd (1987-1988) 12 IPR 225 (“Crocodile Dundee”) at 234-235.

10. It was submitted for the opponent that by the making of the movie the matrix, its exhibition at cinemas and at home by DVD and video, there was an invariable conjunction between the movie’s characters and actors with sunglasses in the movie and in all references to the movie in its publicity. Thus use of the word matrix in relation to eyewear would give rise to the false and misleading suggestion of a connection, sponsorship, licence or approval or common origin with the movie the matrix.

11. Having regard to the evidence and the authorities cited, I am not satisfied that use of the applicant’s trade mark would be a contravention of s52 Trade Practices Act 1974 or passing off. As formulated by Hill J in Equity Access, conduct causing mere confusion or uncertainty in the minds of the public, in the sense that there may be cause to wonder whether two products or services have come from the same source, is not necessarily co-extensive with misleading or deceptive conduct.

12. While the evidence does show that sunglasses feature in the movie the matrix, I do not consider that it goes so far as to create a soi disant signature element that points to that movie. Indeed, as stated in the first article included at exhibit NM-2, because of the many films affecting use of sunglasses since The Big Sleep in the 1940s, “By the time Get Shorty came around in 1995, films were looking like sunglass catalogues and Men in Black looked like it was sponsored by Ray Ban.” In contrast, the Duff beer in The Simpsons in the Duff Beer case, and “this is a knife” scene in Crocodile Dundee, are unique signature elements that are very much suggestive of their particular entertainment medium.

13. The evidence does show that sunglasses are part of a larger overall “look”, which is created by the combination of the sunglasses, black leather, and firearms affected by the protagonists, and the sunglasses, suits and firearms of the villains.  The evidence also seems to suggest that sunglasses are not always worn, especially indoors (see exhibits NM-1 and NM-7).  I do not consider that the sunglasses alone are necessarily evocative of the movie the matrix.

14. The applicant’s solicitor submitted that there was no evidence of misleading or deception of the public. In response, counsel for the opponent cited Gummow J in Crocodile Dundee at 234 as authority for the proposition that there is no need for evidence of persons being deceived and a tribunal can use its own common sense. My reading of that passage is that His Honour said that as well as considering any evidence of members of the public, the tribunal must additionally use its own common sense. I take this to mean that the tribunal is not bound to take the evidence at face value and is entitled to conduct its own common sense “reality check” of the evidence.

15. In this case there is no evidence from members of the public upon which to conduct such a common sense check.  Apart from the opinions of persons with an interest in these proceedings, there is no evidence of whether a reasonably significant number of potential purchasers would be likely to be misled or deceived.  I am not satisfied that use of the mark would be contrary to law.

16. I dismiss this ground of opposition.

    Ground 2 - Section 43: a connotation within the trade mark

17. Section 43 provides:

    Trade mark likely to deceive or cause confusion

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

18. The opponent correctly submits that this section does not depend on the existence of a conflicting trade mark. It was submitted that connotation refers to that which is implied within the mark itself, as a secondary implied or associated meaning, citing Down to Earth (Victoria) Co-operative Society Ltd v Schmidt (1998) 41 IPR 632 at 644.

19. Attention was drawn to the Trade Mark Office decisions in Amalgamated Television Services Pty Ltd v Pickard & Ors (2000) 48 IPR 133 (the Summer Bay case), Amalgamated Television Services Pty Ltd v Clissold 52 IPR 207 (the Home and Away case) and Seven Network (Operations) Ltd v All Saints Holding Company Limited (2003) ATMO 4 (the All Saints Case).

20. The opponent states that the evidence shows that the primary signification of the name matrix is as the name of the movie and is associated with its principal characters. The word matrix in relation to eyewear is said to have acquired a secondary implied or associated meaning as eyewear worn by or associated with the characters in the movie the matrix.

21. In addition to the Australian television cases, I have considered the cases of Twentieth Century Fox v Durkan (2000) 47 IPR 651 (the Braveheart case) and Twentieth Century Fox v Die Hard (2001) 52 IPR 455 (the Die Hard case).

22. I also note that the word matrix is defined in the Macquarie Dictionary (3^rd Edition)< as follows:

    1. that which gives origin or form to a thing, or which serves to enclose it.
    2. Anatomy a formative part, as the corium beneath a fingernail.
    3. Biology the intercellular substance of a tissue.
    4. the rock in which a crystallised mineral is embedded.
    5. Mining => gangue
    6. Printing

    
    
    
    
    
    

    a.   a mould for casting typefaces.

    b.   => mat¹ (def. 6).

    7. a positive or negative copy of an original disc recording, used in reproducing other copies.
    8. in a punching machine, a perforated block upon which the object to be punched is rested.
    9. Mathematics Computers a rectangular array of numbers.
    10. Computers a rectangular array of logical elements acting as a selection system.
    11. Geology the smaller grainsize material in a sedimentary rock containing material of two distinct grainsizes.
    12. Also, mother-of-opal. Mining partially porous grey or brown low-grade rocky material with thin streaks of opal through it.

    
    
    
    
    
    

23. Unlike the Home and Away and Braveheart cases, for example, the term matrix has a more commonplace signification that does not necessarily connote connection with the movie the matrix. Because of this commonplace signification, and the lack of any evidence showing that the expression matrix in its movie guise as the matrix is any more widely known or recognised than any other signification, I am not satisfied that the opponent has established that consumers, when presented with the expression matrix eyewear when used as a trade mark, will necessarily link it to the movie. 

24. Secondly, there is no evidence before me that the opponent has engaged in merchandising in the same way as in cases where connotation has been found.  In the present case, paragraph 10 of the Montan declaration discusses the importance of character merchandising, states that “A merchandising program has now been implemented”; however, no details are provided. Exhibit NM-5 shows four competitions where prizes of caps, bags, posters and sheets bearing the title the matrix have been offered.  Nor is there any indication of how many have been manufactured and distributed.  In the absence of such information, I am not satisfied that the opponent has shown that an expectation might arise in the minds of the public that goods bearing the words matrix eyewear are in fact merchandising of the movie of the name the matrix.  Even if I were to accept that consumers today generally recognise the concept of character merchandising, I am not satisfied that this is sufficient where there are strong, alternative significations of the expression, as there are in the present case.  Again, evidence of consumers' perceptions or impressions is important.

25. I am not satisfied that the s.43 ground has been made out.

    Ground 3 - s60 Prior reputation

26. Section 60 of the Act provides

    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.

27. The relevant tests for determining substantial identity, deceptive similarity and the likelihood of deception or confusion are the well known ones laid down in cases such as Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd(1963) 109 CLR 407, 415, Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 at 658, Pianotist Co's Appn(1906) 23 RPC 774, and Woolworths v Registrar of Trade Marks 45 IPR 411 (the Woolworths case).

28. The opponent says that prior to the relevant date, the opponent had established a considerable reputation in Australia in its movie the matrix.  The opponent further contends that the applicant’s mark is substantially identical or deceptively similar to the matrix.

29. Pivotal to this line of argument is the question of whether the words the matrix are being used as a trade mark by the opponent in respect of some of its motion pictures. I will consider this question first. If the words the matrix are a trade mark in respect of motion pictures, I am then to consider, in terms of section 60:

    ¨    whether the trade marks in question are substantially identical or deceptively similar,

    ¨   the reputation of the opponent’s the matrix trade mark, and

    ¨   if, because of that reputation, the use of the applicant’s trade mark would be likely to deceive or cause confusion.

30. It is true that a film title can function as a trade mark, as decided by this office in the Die Hard case, which decision involved a series of Die Hard movies.  This office has also found that the movie title Braveheart was not a trade mark in the Braveheart case.  Both decisions are, however, consistent with the authority provided in Musidor BV v Tansing (t/a Apple Music House) (1994) 29 IPR 203 (“Musidor”).

31. The various Australian television series cases are of less assistance to me, because of the different factual situation involved, especially involving the marketing and provision of programs to television networks.

32. The Musidor case applied established principle that a trade mark indicates the source or origin of particular goods or services.  In this case, the title of a compact disc did not indicate the trade origin of the goods in any trade mark sense, whereas the “record label” (such as His Masters Voice, Decca, or Banana Label) did.  The principle would be the same in respect of film titles, both for cinema screenings of movies and the distribution of video and DVD. Thus the trade marks that appear in the opponent’s evidence would seem to be the opponent’s warner bros mark and the roadshow entertainment mark.

    38.       I am not satisfied that the movie title the matrix functions as a trade mark in this case.  Therefore, this ground of opposition fails.

    Ground 4 - s41: Applicant’s mark not capable of distinguishing

33. The opponent cited Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 for definition of whether a mark is adapted to distinguish. Counsel for the opponent further submitted that where the registrar is unable to decide that a mark is inherently capable, Blount v Registrar of Trade Marks (1998) 40 IPR 498 explains that the burden fall on the applicant to satisfy the Registrar that the mark is capable of distinguishing the designated goods or services.

34. Based on the Clark Equipment and Woolworths definitions, I am satisfied that the mark is inherently adapted to distinguish. Therefore, ss41(3) to 41(6) do not need to be considered for this issue, and the exception to the presumption of registrability does not arise.

35. I dismiss this ground of opposition.

    Ground 5 - s59: Applicant not intending to use trade mark

36. The opponent submitted that the statement of the unidentified shop assistant in one of the applicant’s stores, as cited in paragraph 4 of the Chrysiliou declaration, evidenced that the applicant did not intend to use the mark.

37. While I do not doubt the veracity of the details declared, I am not satisfied that enough information has been adduced for me to draw the conclusions that the opponent wishes me to. The actual question posed is not particularized, nor are the identities of the store or the shop assistant. There are no details of the assistant’s experience within the store, or knowledge of management policies and practices.

38. I give this aspect of the evidence very little weight and do not consider that it is sufficient to support this ground of opposition.

39. Counsel for the opponent submitted that the applicant was on notice of this ground of opposition and chose not to put on evidence in answer. Counsel cited Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 34 IPR 198 (“Kraft Foods”) as authority for the proposition that mere filing of an application for registration does not establish intention to use the mark for the purposes of s59 of the Act.

40. The Kraft Foods case was in relation to an application for removal from the Register on the grounds of non-use.  The trade mark applicant, whose application was held not to establish use of the applied for mark, was the applicant for removal of the opponent’s trade mark.  The issue regarding the intention to use the applied for mark was in the context of a party with the evidential burden of establishing its status as a “person aggrieved” in a non-use action.

41. In this case, the applicant has no such burden, indeed it is for the opponent to establish its grounds of opposition. Given the lack of particularity of the evidence relating to the shop assistant, I cannot draw the inference that the applicant’s lack of response to it supports the contention that there is no evidence to support the applicant.

42. Although the evidence might be that the applicant’s mark has not been used, it might merely suggest an unwillingness on the part of the applicant to use the mark until it is registered. An applicant is entitled to wait until registration before using an applied-for mark without penalty.

43. I am not satisfied that the opponent has established this ground.

    Remaining Grounds - sections 44 and 58

    50.       The grounds of opposition that were argued pursuant to ss44 and 58 also require the existence of competing trade marks.  In Ground 3, I found that the movie title the matrix is not a trade mark. Therefore, these grounds also fail.

    Conclusion

44. Section 55 of the Act provides:

    55  Decision

    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.

1. The opponent has not established any of the grounds of opposition on which it relied.

2. The trade mark application may then 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 the appeal has been decided or discontinued.

   Costs

3. Both parties sought their costs.  I see no reason why I should not take the usual course of awarding costs to follow the event.  I order that the opponent pay the applicant's costs in accordance with the official scale.

   Jock McDonagh
   Hearing Officer
   Trade Marks Hearings
   29 July 2003