Trade mark application 637669(42) in the name of Trevor Clarke Holdings Pty Ltd and opposition by United Artists Corporation to the registration of this trade mark

[1998] ATMO 12

TRADE MARKS ACT 1955

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

Re:Trade mark application 637669(42) in the name of Trevor Clarke Holdings Pty Ltd and opposition by United Artists Corporation to the registration of this trade mark

Trade mark application number 637669 is a device mark consisting of a signboard showing the words Where we Really care for you with a cat-like figure dressed in a jacket and a bow tie, leaning on the sign.   A representation of the trade mark  is shown below.

The application was filed by Trevor Clarke Holdings Pty Ltd (Trevor Clarke Holdings) of 253-263 Hume Highway, Cabramatta, New South Wales,  on 12 August 1994.  The services claimed in this application are described as motor vehicle retail services.

This application duly passed through examination and the Registrar advertised the mark for acceptance in the Australian Official Journal of Trade Marks on 15 December 1994. 

As the application was accepted under the provisions of the Trade Marks Act 1955, in accordance with section 241 of the Trade Marks Act 1995,  this opposition is to be dealt with under the terms of the repealed Act - that is,  the Trade Marks Act 1955.  Accordingly, any further reference to the Act will be to the Trade Marks Act 1955.

The application is now opposed by United Artists Corporation, a Delaware company of 2500 Broadway Street, Santa Monica, California in the United States of America.  The grounds of opposition are wide and were the subject of some minor amendments.   The following are the grounds which, in the end, were pressed.  

a)The applicant is not the proprietor of the application trade mark.

b)The application trade mark is not distinctive of, and is not capable of becoming distinctive of, the applicant’s services.

c)The registration of the application trade mark would be contrary to section 33 of the Trade Marks Act 1955 because it is:

(1)deceptively similar to the trade mark the subject of trade mark registrations 392226(16), 392227(28), 392228(41), 632287(35) and 644844(9),

(2)the services in respect of which the applicant seeks registration are closely related to the goods covered by registration 392226(16),  392227(28) and 644844(9) and are the same description as the services covered by registrations 392228(41) and 632287(35).

d)the application trade mark should be denied registration  on the grounds that:

(1)the use of the trade mark would be likely to deceive or cause confusion,

(2)the trade mark would otherwise not be entitled to protection in a court of justice.

Evidence

Evidence was served and lodged by both parties.  There were a number of declarations, and it will be useful to list them.

Two declarations are in the supporting evidence, these being by:

William H. Lockard      29 February 1996     exhibits 1 - 27           ‘Lockard  1’
William H. Lockard              3 April 1996       exhibits 1 - 4           ‘Lockard  2’

One declaration makes up the evidence answering the opposition, this is by

Trevor Clarke  6 August 1996

Three declarations are in the evidence in reply, these being by:

Peter William Hansen     20 January 1997        annexure A
William H. Lockard    16 September 1997        exhibits 1 - 5            ‘Lockard 3’
Chris Kelleway    (undated) October 1997        exhibits CK1 - CK22                  

I shall refer to the Lockard declarations as indicated above - ‘Lockard 1’ ‘Lockard 2’ “Lockard 3’ .

Hearing

The matter came to a hearing in Sydney on 12 March 1998.  It was conducted before me.  The opponent was represented by Mr Peter Hansen of Freehill Hollingdale & Page, solicitors of Sydney.    The applicant was not represented.

Background

The opponent, United Artists Corporation, is a subsidiary of Metro-Goldwyn-Mayer Inc. Both are famous companies prominently involved in the motion picture business.  One of their ventures is a series of films and cartoons based on a character called the Pink Panther.  As per Lockard 1: the first Pink Panther  motion picture was released on April 11 1964 and was titled The Pink Panther.  This picture was released in Australia in 1964.  It realised over $10m_US  in North America, and almost $.5m_US  in Australia. There followed a number of sequels - seven in all - A Shot in the Dark, Return of the Pink Panther, The Pink Panther Strikes Again, Revenge of the Pink Panther, Trail of the Pink Panther, Curse of the Pink Panther  and finally  Son of the Pink Panther.   The first of the sequels was screened in Australia in 1965, the rest were released through the 1970s and 1980s except for Son of the Pink Panther which only came to Australia in video format in 1994.  The films produced in the mid-1970s have been the most popular, and are apparently still generating revenue.   Total Australian earnings to mid-1995 from Return of the Pink Panther, The Pink Panther Strikes Again  and Revenge of the Pink Panther average $1.4m_US.   These films, according to Mr Lockard, continue to be viewed, being syndicated as reruns for television, cable television and home video rental. 

A cartoon representation of the Pink Panther was featured in the titles of the first film.  This animated title sequence won a sought-after Oscar award. 

The overall success prompted interest in merchandising the Pink Panther character and in developing an animated cartoon series for television.  The cartoon series premiered in the United States in 1969 and has appeared on Australian television at various, if not regular, times since that date.  Exhibits 22-25 of Lockard 1 give an account of this use.

MGM/UA Licensing and Merchandising is a division of Metro-Goldwyn-Mayer Inc. It arranges and manages licences for merchandising activities associated with the Pink Panther character. A number of licence agreements exist with Australian businesses.  Mr Lockard (Lockard 3) exhibits agreements between MGM/UA Licensing and Merchandising and Pink Panther Printing Pty Ltd of New South Wales;  Bonds Australia Pty Ltd of Victoria; Bensons Trading Pty Ltd of Victoria; Red Robin Fitwear of Victoria; and Davenport Industries of Victoria. These licences  permit use of the Pink Panther character for a range of goods and services from printing services through to clothing and toys.  The licensees are variously allowed to use the character for advertising purposes.

Mr Kelleway is managing director of the Pink Panther Printing Pty Limited.  His company has held a licence to use the Pink Panther name and character since 1978.  This business has been heavily promoted on the basis of its licensed rights.  Its Internet web site features many graphic representations of the Pink Panther. Its vehicles carry the words ‘Pink Panther’ in large lettering on the sides.  Vehicles also carry a three dimensional model of the  Pink Panther on their roofs.  Their business premises are emblazoned with signs naming and depicting the Pink Panther and he is boldly depicted in their advertisements.  One such advertisement, exhibited by Mr Kelleway under CK8, is a picture of what I assume is the back of a Sydney metropolitan bus.  It is fully occupied by a vivid depiction of the Pink Panther.  Mr Kelleway also mentions displaying a large floating inflated version of the Pink Panther over the company’s central Sydney offices. The Pink Panther’s image is widely applied to its everyday stationery including letterheads and business cards.

Turning now  to the applicant’s history.  This is briefly documented in Mr Trevor Clarke’s declaration.   Mr Clarke’s initials are TC.  These initials are also known as the initials of a cartoon character called Top Cat who appeared in television cartoons, Mr Clarke says, in the early 1960s. Because of their shared common initials, Mr Clarke acquired the nickname ‘Top Cat’.  He took up this name and, used it to identify himself  as a racing driver at the Westmead Speedway in Sydney.  In 1981 Mr Clarke’s company commenced operation as a second-hand car dealership and it was his intention to continue under the name Top Cat.   However another dealership in the same locality operated under the name Top Hat Motors and this decided Mr Clarke to develop his business around the concept associated with the term ‘Care Car Company’.   At the same time, however, because of his attachment to his nickname, he sought to maintain a connection with the name Top Cat.  Some time after coming to this decision, Mr Clarke says:

..  my wife was ill in bed one day and when I returned home from work she showed me a cat device that she had drawn as a possible logo for my company.  It was her intention to create a completely new ‘character’ that differed from the ‘Top Cat’ character and, for that matter, from any other  cat character.  The drawing that she produced was original and a product of her own creativity.  It was not copied from anything else.  I suggested some changes to the drawing and we worked on this together and ultimately came up with the device that is the subject of the present trade mark application. 

Mr Clarke attests to use of this trade mark by his company since 1981.

This brings me to the grounds and to Mr Hansen’s submissions.

Section 40,  proprietorship.

Section 40 of the Trade Marks Act 1955 states that a person who claims to be the proprietor of a trade mark may make application to the Registrar for the registration of that trade mark.

Mr Hansen commenced his submissions by referring me to the criteria for determining proprietorship as laid down by the courts.  A long line of cases following on from Hicks’ Trade Mark[1]  have been recently confirmed in the Federal Court per Gummow J. in the Carnival Cruises case[2].  The principle is that, for a challenge of earlier use to supplant an applicant’s right to proprietorship, there must be use of essentially the same trade mark for essentially the same goods. 

[1] Re Hicks’ Trade Mark (1897) 22 VLR 636

[2] Carnival Cruise Line Inc v  Sitmar Cruises Ltd (1995) 31 IPR 375

Mr Hansen’s submission is that the application falls on this ground.  He refers me to Mr Clarke’s statement that the trade mark has been in continuous  use since 1981 and to his own evidence - the Hansen declaration - at annexure “A”.  This is an extract from the records of the Australian Securities Commission and shows that Trevor Clarke Holdings Pty Ltd, incorporated in New South Wales, is registered from 25 May 1983.  This, says Mr Hansen, establishes that the applicant, that is, Trevor Clarke Holdings, could not have used the mark since 1981.   Mr Clarke, he says,  must be wrong.  Trevor Clarke Holdings was not in existence till 1983 and could not have used the trade mark before that date. This, says Mr Hansen, leads to the conclusion that some other person must have used the mark from 1981 to 1983 and he asks me to find that this other person has a superior claim to proprietorship and that this upsets the subject application.

Mr Hansen has shown an inconsistency in the applicant’s evidence. However,  it is purely speculation to argue that Mr Clarke’s statement taken together with the Australian Security Commission’s records, establish proprietorship rights in some person other than the applicant or Mr Clarke. If use was at the hands of some other party, then it is up to the opponent to bring those facts in evidence. The alternative and, I find, the more acceptable inference to be drawn from Mr Clarke’s declaration, is that use between 1981 and 1983 was use he undertook while establishing his business.  If this was so, he may well have had a right to apply, prior to 1983, under the provisions of section 45(1)(a) to register this trade mark on behalf of a body corporate about to be constituted. 

I find that the argument put by Mr Hansen supporting the claim that Trevor Clarke Holdings is not the proprietor of this trade mark does not have a proper basis, and I dismiss the opposition so far as it relies on the existence of an objection under the terms of section 40 of the Act.

Sections 24 and 26.

This ground depends on the definition of distinctiveness laid down in section 26 (1) viz:

26(1)    For the purpose of this Act, a trade mark is not distinctive of the goods or services of a person unless it is adapted to distinguish goods or services with which that person is or may be connected in the course of trade from goods or services in respect of which no such connection subsists, either generally or, where the trade mark is sought to be registered, or is registered, subject to conditions or limitations, in relation to use subject to those conditions

Mr Hansen’s submissions here are that, because of the renown now residing in the character of the Pink Panther, that character is not capable of distinguishing the goods or services of any person other than the opponent, or persons connected with the opponent by way of a licensing arrangement. 

This submission, in my view, is based on a fundamental misunderstanding of the term adapted to distinguish.  I turn to the guiding directives of His Honour Justice Kitto in the Michigan case[3] referred to by Justice Lockhart in the Oxford case [4] :

[3] Clarke Equipment Co. v Registrar of Trade Marks  (1964) 111 CLR 511

[4] Oxford University Press v The Registrar of Trade Marks, (1989-1990) 17 IPR 509 at 512

'The central question is, in my view, whether the word "Oxford" is "adapted to distinguish" the goods of the appellant within the meaning of s26(1) of the Act, a question which 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 a word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it"  (my emphasis).

The subject here is not a word, but, as Mr Hansen argues, a device - a cartoon drawing of a cat - in particular, a panther. 

Applying this classic test set by Justice Kitto, and adapting it to device instead of word marks, the question is: will other traders wish to use a similar representation for the sake of the signification ordinarily carried by that drawing, in respect of motor vehicle retail services?  In terms of section 24, a drawing of a cat or panther has no direct reference to the service of retailing motor vehicles.  It thus has no ordinary signification which renders it unregistrable in terms of section 24,  25 or 26 of the Act. 

I agree with Mr Hansen that, because of the way that the opponent and its related companies have developed the Pink Panther character, and exploited its commercial prospects, the Pink Panther has become famous. However, that is quite different from showing that, with the acquired fame, the Pink Panther has developed a direct reference to a character or quality of motor vehicle retail services. I have not been shown that the Pink Panther conveys any information concerning the character or quality of these services. The evidence shows that the Pink Panther’s renown is derived from the popularity of the Pink Panther films, successful merchandising and, as a consequence, a build-up of goodwill. Grounds that go to goodwill developed by way of an opponent’s activities may get up under section 40 or 28 and to some extent may be relevant to a section 33 ground. Reputation and goodwill, however, will not uphold an opposition ground which relies on the provisions of section 24 or 26.

Section 33

Under this ground, the opponent claims the application trade mark is deceptively similar to the trade marks 392226(16), 392227(28), 392228(41), 632287(35) and 644844(9); that the services claimed by the applicant are closely related to the goods nominated by 392226(16),  392227(28) and 644844(9);  and are the same, or of the same description as, services covered by registrations 392228(41) and 632287(35). The details of these the marks are set out below. 

registration number	trade mark	good or services
392226	pink panther	all goods in class 16.
392227	pink panther	all goods in class 28;
392228	pink panther	entertainment services, namely production and distribution of motion pictures, and providing film and entertainment for viewing through the media of television, cinema and other media; in class 41
632287	advertising and promotional services; services related to business management and consulting; dissemination of advertising materials, demonstration of goods and services, distribution of samples, public relations, publicity, publications of publicity texts in class 35
644844	a wide range of video and audio recording equipment, and optical, electronic, and photographic equipment in class 9.

The application trade mark, it will be recalled, is 

637669 motor vehicle retail services in class 42

The tests for section 33 are thoroughly established. The cited trade marks must have an earlier registration date than the date that could be acquired by the application; the cited marks must be found to be at least deceptively similar to the application trade mark; and the cited goods must be closely related to the application services and the cited services must be the same, or of the same description, as the application services.

The class 9 registration, 644844, fails on the first criterion - it is registered as of 3 November 1994.  This is three months after 12 August 1994 - the date the subject application would be entitled to registration.

Mr Hansen conceded that the 392227 goods - all goods in class 28 - are not closely related to  motor vehicle retail services; and that the class 41 services comprehended by 392228 are not the same services or services of the same description as motor vehicle retail services.

The submission in respect of the section 33 ground therefore relies on the opponent’s trade mark registration 392226 for  all goods in class 16;  and 632287 where Mr Hansen argues only for advertising and promotional services; services related to business management and consulting; demonstration of goods and services, distribution of samples, public relations, publicity, publications of publicity texts.

I do not intend to go in detail into the question of whether the application mark is deceptively similar to the word trade mark pink panther or to the device of 632287.  I will simply say that, given the activities surrounding the opponent’s exploitation of the Pink Panther character, the high level of public recognition of the Pink Panther character which these activities have achieved, and the fact that registration of the subject mark would entitle Trevor Clarke Holdings to use its mark in all colours, including pink, I find the application mark deceptively similar to both 392226 and 632287.   In coming to this conclusion I am guided by directives from Dixon, Williams and Kitto JJ in the Rainmaster case[5] that:

[5] Cooper Engineering Company Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 at 538:

[t]he proper approach ...  was summed up by Lord Parker (then Parker J.) in In the Matter of an Application by the Pianotist Company Ltd. for the Registration of a Trade Mark [(1906) 23 RPC 774 at 777] ... you must consider all the surrounding circumstances.

However, I now come to the final necessary condition and the question of whether I agree with Mr Hansen that class 16 goods and class 35 services have enough in common to hold them to be either closely related goods, or services of the same description, as motor vehicle retail services.  

I refer first to the directives of Needham J. in the 1988 Rollbits case[6].  His words refer only to goods, although class 42 services were there in issue.   

[6] Rowntree Plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 545

Section 33(1) raises two substantial questions. The first is whether the marks are substantially identical or deceptively similar; the second is whether the goods in respect of which the challenged application is made are the same goods or goods of the same description as the goods of the opponent. If the second of these questions is answered in the negative, sub-s33(1) does not invalidate the trade mark...

When, then, are goods ‘of the same description?’  It is a question of fact, but certain criteria have been accepted as guidelines.  For example, in J Lyon & Co Ltd’s Application [1959] RPC 120 at 133 Romer LJ said that matters which would have to be taken into account would be the nature of the two kinds of goods, their uses and the channels of trade. Also, it would be a relevant consideration that one or other could be used as an alternative to the other. ...

Further, at p546 - quoting from Lord Evershed MR in J Lyons, supra,

The matter falls to be judged, as Lindley LJ observed in Australian Wine Importers’ case (1899) 6 RPC 311, in a business sense.

More recently, in the Canon case[7], Tamberlin J addressed the same issue. He says:

[7] Canon Kabushiki Kaisha v Brook and Another, (1996) 36 IPR 88 at 97

In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 and 373, it was said:

In arriving at a decision on this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristic of the goods,  their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold  in the same shops over the same counters during the same seasons and to the  same class or classes of customers, and whether by those engaged in their manufacture and distribution they are  regarded as belonging to the same trade.  In the case of Re Jellinek’s Application  .... Romer J classified those various factors under three heads, viz the  nature of the goods, the uses thereof and the trade channels through which they are bought and sold.  No single consideration is conclusive in itself ..

Mr Hansen first pointed to the services advertising and promotional services, services related to business management and consulting, demonstration of goods and services  distribution of samples, public relations, publicity, and  publications of publicity texts nominated in the 632287.  He said these services are likely to be undertaken by retailers of motor vehicles and that Trevor Clarke Holdings  may well offer such services as an adjunct to its retail services. If it did, then, in the face of cited trade mark 632287, deception or confusion would be likely arise. He then pointed to the goods magazines, brochures, newspapers, newsletters, catalogues and manuals comprehended by cited trade mark 392226.  These, he said, could be aimed at the motor vehicle industry and, in particular, could deal specifically with the second-hand car market. A car retail service, he said, could be expected to produce publications of this kind.  If Trevor Clarke Holdings published such material, then (in parallel with the deception and confusion that would ensue if it offered demonstration services, and publicity services for used cars under its trade mark) production of newsletters or manuals under the application mark would deceive and confuse in the face of cited trade mark 392226.

Mr Hansen then drew my attention to a decision by the Registrar’s delegate in American Express Co v NV AMEV [8]. Here, the delegate, Mr Hancock, quoted from an address by the Registrar[9] in which he stated:

[8] (1985) 5 IPR 267

[9] Victorian Industrial Property Society (1979) 53 ALJ 118 at 119120

Where services are performed on or in relation to or even by means of certain goods this is a factor which may make deception or confusion between the marks used in respect of those services and goods , more likely

Mr Hansen would have me hold, on the basis of his submissions and the Registrar’s statement, that the enquiry into whether goods and services are closely related requires weight be put on the question of whether concurrent use of the marks on the respective cited goods and services, is likely to cause confusion.  I reject this proposition.  The tests are as enumerated by Romer J. in the Jellinek’s Application[10] and concern the nature of the goods/services, their purpose and the trade channels.  This test has been repeatedly confirmed by the Australian courts - as per Southern Cross[11], Rollbits[12] and Canon[13]; it is set out in many of the decisions of the Registrar’s delegates; is recorded with approval in Shanahan[14] and is written up in some detail in the Examiners Manual. The issue that a trade mark may give rise to deception or confusion if the applicant provides the same services as the opponent, comes within the scope of an enquiry assessing deceptive similarity. It is not, however, matter that is relevant to deciding whether goods or services are closely related.

[10] Jellinek’s Application (1946) 63 RPC 59

[11] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1955) 91 CLR 592

[12] Rowntree Plc v Rollbits Pty Ltd (1988) 10 IPR 539

[13] Canon Kabushiki Kaisha v Brook and Another, (1996) 36 IPR 88

[14] Shanahan D, Australian Law of Trade Marks and Passing Off , The Law Book Company Limited, Sydney 1990

Turning back to the application services motor vehicles retail services and comparing them with the opponent’s class 35 services. Advertising and promotional services; services related to business management and consulting, demonstration of goods and services, distribution of samples, public relations, publicity, publications of publicity texts are, so far as I can see, quite different in nature from retail services. The business services are provided not by merchants, but by advertising and management consultants.  These services do not result in the provision of goods for sale, but in the generation of publicity and in the generation of management advice. Retail service, on the other hand,  is the putting up of goods for sale - in this case those goods are motor vehicles. The use or purpose of publicity and management services is for the improvement of business.  The use and purpose of retail services is to provide a market for goods. The channels of supply are different. Publicity and management services are provided by consultants and organisations with the expertise and infrastructure necessary to supply advertising and management advice commensurate with modern commercial demands.  A business that provides motor vehicle retail services will not provide services of this kind - and certainly, any persons wishing to avail themselves of advertising and management services would not be expected to seek them in a car sales yard.

Similar disparities exist between the opponent class 16 goods and motor vehicle retail services. The nature of  class 16 goods is such that they have very little connection with car retailing.  This service is not performed by means of or in relation to any of the paper products which make up class 16. Motor vehicle retail services are essentially performed by means of goods in class 12 - vehicles.  Certainly, manuals may be made available, but they are likely to be produced by the car manufacturers, not the retailer.  The use or purpose  of class 16 goods is quite different from the use that will be made of the motor vehicle retail services.  And again, the trade channels seem to me to be entirely separate. In my experience it is not regular for car retailers, in the normal course of their business,  to produce or to manufacture a line of  printed publications or other stationery items. Nor do paper manufacturers and publishers generally extend their activities into car retailing.  There is nothing in evidence to show otherwise.  On the contrary, all of Mr Hansen’s submissions on this point took the form of an invitation that I speculate on what might happen should Trevor Clarke Holdings produce a newsletter or publish manuals.  That will not do.  If I am asked to find that certain services and goods share common trade channels, and that proposition goes contrary to ordinary understanding of how the trades and services interact, then facts to that effect should be in evidence.  

In all then, of the opponent’s two trade marks relied on to support the section 33 ground, I find that the goods of trade mark 392226(16) are not goods which are closely related to the subject services motor vehicle retail services; and I find that the services of trade mark 632287(35) are not the same services or services of the same description as motor vehicle retail services. This section 33 ground therefore fails on the necessary test of the comparison of the application services with the cited goods and services.

Section 28

I come now to the question of section 28(a) and (d) and the grounds that the use of the trade mark would be likely to deceive or cause confusion, and that the trade mark would otherwise not be entitled to protection in a court of justice.

For the purposes of paragraph 28(a) I am to look at the reputation which, per the opponent’s evidence, is shown to have been developed in the character known as the Pink Panther, and decide whether, in the light of that reputation, the application trade mark is likely to deceive or cause confusion.

For the purposes of paragraph 28(d) I am to consider whether the application trade mark is a mark which is not entitled to protection in a court of justice.

The operation of section 28 has been the subject of considerable discussion since the High Court handed down its decision in New South Wales Dairy Corp v Murray-Goulburn Co-operative Co Ltd[15].   The subsequent practice adopted by the Registrar in dealing with opposition cases has now come to be considered by the Federal Court in the Canon case[16].   Tamberlin J says:

[15] (1990) 18 IPR 385

[16] Canon Kabushiki Kaisha v Brook and Another, (1996) 36 IPR 88 at 100

In my view, the factual position in the New South Wales Dairy Corp case[17] [that is the case before the High Court] is distinguishable and not controlling in the present matter which relates to opposition proceedings. That case was concerned with expungement of a registered mark. There is an important and relevant distinction between applications for registration of a mark and expungement of a mark already on the register indicated in the reasoning of the majority in that case. In my view, the reasons for judgment delivered by the members of the High Court leave the matter open as to whether there is a need to find blameworthy conduct in opposition proceedings based on s28(a) as opposed to expungement proceedings.

[17] New South Wales Dairy Corp v Murray Goulburn Co-operative Co Ltd  (1990) 18 IPR 385

...

Notwithstanding the diverse opinions expressed by members of the High Court in the  New South Wales Dairy Corp case, I consider that I should follow the views expressed by the full Federal Court in that case, with the result that in the case presently before me the opponent to the application for registration is required to demonstrate ‘blameworthy conduct’.

Mr Hansen made tentative submissions that the Registrar was wrong to hold that paragraph 28(a) is read conjunctively with paragraph (d) and 28(a) operates adversely only where the trade mark is held not entitled to protection in a court of law through blameworthy conduct. Tamberlin J’s directive, however confirms that blameworthy conduct is required. To find for the opponent on the section 28(a) ground, the application trade mark must first be found to be likely to deceive or cause confusion, and second must be found not entitled to protection in a court of justice by reason of demonstrated blameworthy conduct.

First, then, the question of deception and confusion. I have already found that the application mark is deceptively similar to the opponent’s registered word and device marks. At this point, however,  I need to say a little more about the cat figure in the application mark.  It is shown in profile, and, on comparing it with the most common representation of the Pink Panther character, there could be some doubt as to whether the application cat reads as the Pink Panther.  The most familiar stance of the Pink Panther is, as Mr Hansen pointed out, as he is depicted in the opponent’s trade mark registrations (shown above - 632287 and 644844): that is, full faced, hands on hips, thin, and bemused.   The application cat has one, and almost both, hands on his hips, he is thin and he looks bemused. In the evidence are many drawings of the Pink Panther and some in profile.  These profile views resolve that doubt. They show that the application cat is very similar to the opponent’s Pink Panther character. Below is one such representation shown in Lockard 1 under exhibit 12.

As well as the visual similarity between the trade mark cat and the Pink Panther, there is, in addition,  the reputation built into the Pink Panther to consider. Quite clearly, the fame of the character arose through the 1970s and 1980s with the Pink Panther movies and cartoons.  In later years this character has continued before the public through ongoing television screening and home videos, through general merchandising, and by way of licensees’ activities and their sometimes impressive promotional campaigns.  There is evidence that floating a giant inflated replica of the Pink Panther above the Sydney central business district produced a wide response. Mr Hansen submits that the current situation is that the renown stemming from the films and cartoons, and the reputation and goodwill developed by various licensees have made the Pink Panther a household name. I agree with him.

Mr Hansen argues the question of deception and confusion a little further.  He says that the public are very aware that authors of popular entertainment series control use of their fictional characters by merchandising and licensing. With this awareness will be an assumption that any licensee’s goods or services are promoted with the approval or endorsement of those authors.

On the issue of deception and confusion associated with fictional celebrities, Mr Hansen refers me to Radio Corporation Pty Ltd v Disney[18]. The High Court there found that use of the trade mark mickey mouse was likely to suggest an association with Walt Disney.   Justice Dixon explains the licences for using the Mickey Mouse concept[19]. The licensing, he says, resulted in

[18] Radio Corporation Pty Ltd v Disney (1937) 57 CLR 448

[19] ibid at 455

… a valuable source of revenue.  An elaborate and extensive system of licensing has been set up.  Under it manufacturers or traders pay for permission to use the names of the figures in connection with their goods.  In Australia alone licences have been granted for all sorts and descriptions of goods produced by numbers of unconnected manufacturers. The articles bearing representation of or called by the names of Disney’s conceptions have no characteristic in common.  They go from canned soups to cotton undershirts and from bridge scorers to boys’ braces.  ..

Justice Dixon finds this position not very likely to cause misunderstanding as to permitted use.  He says[20] if a trader is to apply the name of a well known character such as Mickey Mouse to his or her goods, 

[20] ibid  at 457

it may be that in some vague way the buyer supposes that Disney must have sanctioned it. 

This was in 1937.  In 1998, with character merchandising now a prominent and common feature of the commercial world, I would put this prospect rather higher. 

I find that the cat device in the application mark is sufficiently similar to the well-known portrayal of the Pink Panther character to be taken for it.  Further, in view of the public recognition that the Pink Panther commands, and the opponent’s merchandising and licensing activities, I conclude that a significant number of people will wonder whether that trade mark indicates some - even if tangential - connection with the opponent.  As per the directives of the Southern Cross case[21] I find the application mark is likely to deceive or confuse.

[21] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1955) 91 CLR 592

Second - I turn to the governing requirement of paragraph 28 (d) - and the question of whether the application mark is, by reason of blameworthy conduct by the applicant, not entitled to the protection of a court of justice.  Mr Hansen argues for this on a number of levels. I shall deal with these arguments in turn.

To begin with is Mr Clarke’s disclosure that his first choice for the name of his business was Top Cat.  This name, says Mr Hansen, is intellectual property and it is not Mr Clarke’s. When he found he needed a new mark, he then turned, according to Mr Hansen, to another famous character - the Pink Panther.  This, he says, shows Mr Clarke has a proclivity to copy famous cartoon characters.  However, Mr Hansen has no evidence of how Mr Clarke used the Top Cat name,  or that his use contravened any intellectual property right.  Moreover, the claim that he then adopted the Pink Panther is at odds with Mr Clarke’s declaration. I find this limb of the submission speculative and unsupported; it does not show that the application mark is disentitled to protection, or that the applicant is blameworthy.

Next, Mr Hansen turns to Mr Clarke’s declaratory account of how his wife presented him with a proposed new trade mark. This happened on a day when his wife had been at home ill.  He says:

The drawing that she produced was original and a product of her own creativity.  It was not copied from anything else.

Mr Hansen criticises this evidence as hearsay.  He says that Mr Clarke is not in a position to say whether his wife produced it as an original or as a copy.  Mr Clarke may not know whether for example, his wife had been watching and inspired by a Pink Panther film. Accordingly I should give the Clarke declaration very little weight. Further Mr Clarke’s statement  that it was not ‘copied’ may simply mean that his wife’s drawing was not a tracing. Mr Hansen says this declaration is not evidence that the cat in the application mark is anything more than a version of the Pink Panther character. 

Hearsay evidence does carry less weight and Mr Clarke’s description of what his wife drew is not as persuasive as it would have been firsthand.  However, if Mr Hansen wishes me to believe facts contrary to those set down in evidentiary declaration, he cannot simply ask me to theorise.  He needs supporting evidence, and there is none.

From that point, Mr Hansen submits that it is a reasonable inference that Mr Clarke had knowledge of the Pink Panther character and of the benefits of associating his business with the image of that popular and amusing fictional luminary.  In accordance with findings in the Radio Corporation [22] case and Nike International Ltd and Another v United Pharmaceutical Industries (Aust) Pty Ltd and Others[23] he said that this inference is enough to find that the application mark is not entitled to protection and the applicant’s behaviour is blameworthy.

[22] Radio Corporation Pty Ltd v Disney (1937) 57 CLR 448

[23] (1996) 35 IPR 385

According to the High Court’s findings in the Radio Corporation[24] case, an unauthorised intention to benefit from the fame of the Mickey Mouse character does indeed disentitle a trade mark to protection. His Honour Justice Dixon refers to an:[25]

[24] Radio Corp, supra

[25] Radio Corp, supra, p458

… intangible advantage arising from public celebrity, widespread fame and interest, that the applicant seeks.  It is not a diversion of trade, custom or profit.  Except for the refusal to pay any licence fees, the continued use of the trade mark by the applicants will not affect any of the commercial operations of the opponent.  It is clear, I think, that the opponents could on their part obtain no injunction for the protection of such an interest as that rising from the mere celebrity or reputation of Disney productions.  …. If the circumstances are such that its adoption will give the applicants no right to protection by injunction or other remedy under the general law, then it should be kept off the register.

Justice McTiernan comments on this issue with a reference to Lord Macnaghten’s judgment in Eno v Dunn[26]:

[26] Dunn’s Trade Mark (1890) 7 RPC 311

“ .. it is not lawful to register as part of or in combination with a trade mark any words, the exclusive use of which would, by reason of their being calculated to deceive, be deemed disentitled to protection in a court of justice.  It seems to me that in registering trade marks the principle to which the enactment so plainly refers ought to be applied without any qualification whatever, and that the comptroller … ought to reject words which involve a misleading allusion or a suggestion of that which is not strictly true, as well as words which contain a gross and palpable falsehood”.  His Lordship proceeded to say that to prevent the registration of words as a trade mark it was enough that they would lead the ordinary run of persons to suppose that the applicant’s goods were “in some way connected with” the opponent’s preparation.  He added: “The object I think was … to induce people to buy under an impression ‘not founded in truth,’ and not perhaps the less misleading because it is vague and indefinite, and incapable, it may be of bearing the very slightest examination.   

The opponent’s evidence has established that its Pink Panther character is a public celebrity of widespread fame and I accept that association of this character with Trevor Clarke Holdings is likely to enhance that business. It seems quite clear that the applicant has no authorised right to such an association and that if the applicant were to use its mark, the public would wrongly infer a connection with the opponent.  On the basis of the Radio Corporation case, that would be enough to find that the trade mark is not entitled to protection in a court of justice.

However, the Radio Corporation case was decided many years before the relevant Federal and High Court rulings in New South Wales Dairy Corp v Murray-Goulburn Co-operative Co Ltd[27]and was concerned with the operation of section 114 of the Trade Marks Act 1905. I am dealing with the operation of section 28 of the Trade Marks Act 1955. In this case, as confirmed by Justice Tamberlin,[28] there is an additional mandatory requirement that the opponent establish blameworthy conduct.

[27] (1990) 18 IPR 385

[28] Canon Kabushiki Kaisha v Brook and Another, (1996) 36 IPR 88

Mr Hansen also refers me to the Nike case (supra)[29]. This is an expungement case, but it is one in which the ground of blameworthy conduct was established.  Judgment was handed down in the Federal Court  in December 1995.

[29] (1996)35 IPR 385

The Nike case concerned a series of Spanish associates engaged in manufacturing perfume.  They had trade marks containing the word nike registered in Spain, and as of 1940, in various other countries. In 1986 and 1992 one of the group, Campomar SL, lodged two trade mark applications in Australia, and both were duly registered. Campomar moved to expand its world wide market for its Nike products and, in 1985, approached Nike Inc -  the US owner of the famous nike sports trade marks. Campomar suggested a joint venture into perfumes. Nike Inc declined and warned Campomar not to adopt marketing practices which implied a connection with them. 

Campomar began marketing perfume in Australia in 1993. By then it had adopted a modified label, the word nike now shown in bold block letters, bearing a noticeable similarity to the print style used in Nike Inc’s marks. Campomar called its perfume sport fragrance.  It was sold through chemist shops and displayed with other sport fragrances, including adidas products - adidas being another very well known sports goods trade mark.  When stocks ran low, Nike International sometimes received requests from pharmacies for further supplies.  Considering the modification of the mark and the promotion of the goods as “sport fragrance” His Honour Justice Sheppard says, at 406

It seems difficult to avoid the conclusion the Mr Ruiz [managing director of Campomar] was engaging in this conduct in order to take advantage of the goodwill and reputation of Nike International.

He continues, at 407:

On 7 June 1993, Mr Mosch [international manager of cosmetics].. wrote … that “our” main aim has been to position a high quality product in the selective perfume market “with the image of a brand renowned the world over in the field of sports”.  This was obviously a reference to Nike Inc.

Justice Sheppard concluded that there was reason on the evidence to hold that the owner of these trade marks had engaged in blameworthy conduct.  He says, at 408:

The documents to which I have referred and other documents in the case, .. reinforce me in my conclusion that Mr Ruiz had for a number of years perceived the advantage his organisation could expect to gain by the world wide marketing of its products under the Nike name in conjunction with, or with the approval of Nike International or one or more of it associated companies.

And at 409

[Campomar] knew precisely what was occurring. The evidence establishes that its market activities were intended to enable it to take advantage of the Nike International reputation.

Justice Sheppard finds, at p408:

Campomar engaged in a course of conduct which led to its products, described as “Nike Sport Fragrance”, being marketed in circumstances where it is likely that they would be confused by customers and others by reason of the reputation which Nike International had in athletic footwear and other sporting products.  On any view of the appropriate principle I think that this amounts to blameworthy conduct with the meaning ascribed to that expression by the judges in Murray Goulburn[30].

[30] New South Wales Dairy Corp v Murray Goulburn Co-operative Co Ltd  (989-1990) 18 IPR 385

There is clearly a very significant difference between the evidence that satisfied Justice Sheppard and the evidence put to me to show that Trevor Clarke Holdings has conducted itself in a blameworthy manner.   First there is no direct evidence that Mr Clarke is aware of the Pink Panther character.  Mr Hansen argues that because of the Pink Panther’s fame Mr Clarke could hardly be unfamiliar with him.  This I think is a reasonable assumption - but it is very different from the Nike situation where Campomar sought involvement from Nike Inc, was rejected and was warned to take care that its business ventures did not falsely imply a connection with Nike Inc. Second there is no direct evidence that Mr Clarke intended the cat device in his company’s trade mark to be the Pink Panther.  Certainly there are similarities, but he attests to the fact that his wife produced an original drawing - a product of her own creativity. As Mr Hansen points out, this is hearsay evidence; further, there are strong similarities between the application cat and some depictions of the Pink Panther character in the evidence.  However, these weaknesses in the applicant’s evidence are well short of the evidence in the Nike case - where there was uncontroverted evidence that Campomar intended to trade on the goodwill and reputation it knew to exist in the Nike Inc’s product image.  Lastly, there is in the Nike case, a very close association between Nike Inc’s goods and the Campomar goods.  This was exacerbated by Campomar promoting its goods as a ‘sport fragrance’ and modifying their label to lettering more closely approximating the Nike Inc format. Adidas had already extended its trade into sport fragrances. The end point of this was that persons, including the retailers, were confused and thought the Campomar sport fragrance was a Nike Inc product.  There is a considerable gulf between Trevor Clarke Holdings’ motor retail services and activities of the opponent and Metro-Goldwyn-Mayer.  Although there is the general fame of the Pink Panther, there is nothing to show that Trevor Clarke Holdings intentionally took any steps to deceptively divert the goodwill associated with that fame to its own benefit.  And again, there is no evidence to show that the application trade mark led any people into thinking that Trevor Clarke Holdings car sales yards are run by or even under the auspices of the opponent of Metro-Goldwyn-Mayer.

In contrast to the Nike case, I am asked to find Trevor Clarke Holdings to be blameworthy on what amounts to little more than unsupported supposition.  The Clarke declaration must carry some reduced weight.  But this is well short of showing blameworthy conduct. Mr Clarke may indeed have been aware of the Pink Panther - I have said that I am content to assume that he probably was. Again, however, in the face of Mr Clarke’s statement that the application cat is not a copy of any other cat, that finding does not show that the applicant deliberately intended to benefit at the expense of the opponent’s goodwill and product image. On the whole the facts of this case add up to a situation which is very different from that disclosed in the Nike case. I do not have evidence on which to find that, in adopting this trade mark, Trevor Clarke Holdings’ conduct should be held blameworthy.

The end point of all this is that I find the paragraph 28(d) ground fails, and so then must the section 28(a) ground.

The Registrar’s discretion

Mr Hansen’s closing submission was that in the event that none of the opposition grounds were established I nevertheless had an option to refuse to register the mark. Mr Hansen supported this submission with reference to the public interest and the prospect of deception which he maintained was likely, given the renown of the Pink Panther character.  As above, I have agreed that the cat character in the application trade mark is likely to give rise to deception on this very count.  

Section 50 of the Act states that the Registrar may take into account grounds of objection whether relied upon by the opponent or not. It appears that this is the discretion that Mr Hansen wishes me to exercise in favour of the opponent. 

As outlined by Shanahan[31], however, this discretion is not to be exercised lightly.  It may be applied where there is serious concern for the public interest, as per Edward’s Application - the Jardex case[32].  In that case, while the word jardex was found to be deceptively similar to the word jardox, confusion was held to be unlikely because of the difference between the respective goods, meat extracts and hospital disinfectants. Any confusion, however, would have serious results, and in consequence of that risk to the public, the Registrar exercised discretion, and the trade mark was not allowed

[31] Shanahan D,  Australian law of Trade Marks and Passing Off , supra - p80

[32] Edwards Application (1946) 63 RPC 19

No danger of that kind exists in respect of the application mark.  At most, it seems to me that the public might wonder whether the cat in the application mark is the Pink Panther - and whether there is some connection between Trevor Clarke Holdings and Metro-Goldwyn-Mayer. I do not see that as a situation that warrants the exercise of any discretion. In particularly, when paragraph 28(a) fails through want of the blameworthy conduct required under the governing paragraph 28(d), I am not prepared to hold that the opponent can nevertheless turn to the failed paragraph 28(a) ground for an exercise of discretion. This would amount to a circumvention of the statutory provision as interpreted by the Federal and the High Courts.

Decision

I have dismissed the opposition on all grounds.

• I have dismissed the section 40 ground because I was not shown that there was another person who had title to this trade mark before Trevor Clarke Holdings.

• I have dismissed the sections 24 and 26 grounds because the arguments regarding want of distinctiveness were arguments based on reputation, not on the intrinsic nature of the trade mark itself.

• I have dismissed the section 33 ground because, although I hold the application mark deceptively similar to various of the opponent’s registered trade marks, none of those registrations are for the same services, or services of the same description, or goods which are closely related to the services claimed in the application.

• I have dismissed the section 28 ground because, although I found that the application mark is likely to give rise to some deception and confusion, the now overriding requirement of blameworthy conduct was not established.

• I have declined, in the circumstance, to find that there is ground for exercising discretion and refusing the trade mark application.

I find then, that the opposition does not succeed.  Unless, within the time allowed under the Federal Court Rules, this matter is taken on appeal to the Court, this trade mark application may proceed to registration.

Costs

Under the circumstances, costs may appropriately be awarded to the trade mark applicant.  There was, as I have mentioned, no representation at the hearing.  But so far as any scheduled costs have been incurred, Trevor Clarke Holdings is entitled to an award, and I so award these costs. The costs shall be taxed, allowed and certified by an officer of the Trade Marks Office appointed by the Registrar for that purpose.

Helen R. Hardie
Deputy Registrar
17 April, 1998