Treadwell Original Drifters LLC and Prism Music Group Ltd v WL Trout Promotions Pty Ltd

[2016] ATMO 80

TRADE MARKS ACT 1995

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

Re:Opposition by Treadwell Original Drifters LLC and Prism Music Group Ltd to application filed by W L Trout Promotions Pty Ltd for partial removal of trade mark registration 978047 (41) – THE DRIFTERS - in the name of Treadwell Original Drifters LLC

And

Opposition by Treadwell Original Drifters LLC and Prism Music Group Ltd to registration of trade mark application 1599983 (41) – BILLY WASHINGTON’S DRIFTER’S – in the name of W L Trout Promotions Pty Ltd

Delegate:

Nicole Worth

Representation:

Removal Opponent/Opponent: No submissions made.

Removal Applicant/Applicant: Warren Trout of W L Trout Promotions Pty Ltd.

Decision:

2016 ATMO 80

Section 92 of the Trade Marks Act 1995: application for partial removal under s 92(4)(b) – non-use established – Registrar’s discretion under s 101 exercised – application for partial removal refused.

Section 52 of the Trade Marks Act 1995: opposition to registration under ss 44, 58A, 58, 60, 42(b), 62A and 62 – reputation of Opponents’ trade mark established – confusion likely – opposition under s 60 established – registration of trade mark refused.

Background

1. This decision is pursuant to ss 92 and 52 of the Trade Marks Act 1995 (‘the Act’), wherein the parties have initiated actions against each other: one being an action to partially remove a registered trade mark and the other being an action to oppose registration of an applied for trade mark.

2. Pursuant to s 92, W L Trout Promotions Pty Ltd (‘the Applicant’) has applied to partially remove the registered trade mark detailed below. Treadwell Original Drifters LLC and Prism Music Group Ltd (referred to individually as ‘Treadwell’ and ‘Prism’ and collectively as ‘the Opponents’) have opposed the application to partially remove the registration below.

   Trade mark:  THE DRIFTERS (‘the Opponents’ trade mark’)

   Registration no.:             978047

   Owner:                Treadwell Original Drifters LLC

   Filing date:  11 November 2003

   Services:Musical performance services; live band performance; concert services; dance performance services; provision of live entertainment and recorded entertainment; performance and production of radio and television programmes; performance and production of films and video tapes; publication of books.

3. The services in respect of which removal is sought are ‘Musical performance services; live band performance; concert services; dance performance services; provision of live entertainment’.

4. Pursuant to s 52, the Opponents have opposed registration of the trade mark detailed below, filed in the Applicant’s name.

   Trade mark:   (‘the Applicant’s trade mark’)

   Application no.:               1599983

   Filing date:  13 January 2014 (also ‘the priority date’)

   Services:Advisory services relating to entertainment; Arranging of entertainment; Arranging of musical entertainment; Booking of entertainment; Club entertainment services; Entertainment; Entertainment information; Fan club services (entertainment); Live entertainment; Live entertainment production services; Management of entertainment services; Musical entertainment services; Organisation of entertainment events; Organisation of promotions (entertainment events); Organising events for entertainment purposes; Organising of entertainment; Production of audio entertainment; Production of live entertainment; Provision of entertainment services via an online forum; Provision of live entertainment; Radio entertainment; Television entertainment; Ticket agency services (entertainment).

   Endorsements:                Provisions of subsection 44(4) and/or Reg 4.15A applied.[1]

   [1] The endorsement reflects that the application was accepted on the basis of the Applicant having established continuous use of its trade mark which commenced prior to the priority date of an earlier registered or applied-for trade mark.

5. The parties filed evidence supporting their cases in due course (discussed in more detail later in this decision). Parts of the evidence filed in the two matters are the same in each, although there are significant parts of the evidence which are not the same between the two matters. Nonetheless, the Applicant made several requests in 2015 that the matters be considered together and the Opponents did not object to those requests. The Opponents subsequently requested oral hearings for both matters, which were scheduled to be heard together pursuant to the Applicant’s requests that they be considered together. The Applicant advised that it did not intend to appear at the hearing but would file written submissions. The hearing was allocated to me, as a delegate of the Registrar of Trade Marks.

6. Prior to the hearing I sent a schedule of due dates for the parties to file their written submissions. The Opponents did not file submissions on their due date. Following an inquiry from the Applicant about whether the oral hearing would then proceed, I directed that the Opponents’ submissions be filed on or by COB the following day, and that if they did not do so the oral hearing would be cancelled and the matters would then be decided on the basis of evidence filed and the written submissions of the Applicant. The Opponents did not file any submissions, nor any response at all, and so the scheduled oral hearing did not proceed.

7. Accordingly I have made my determinations based on the evidence filed in each matter and the Applicant’s submissions. The question of whether the evidence in one matter should be considered in the other has not been commented upon by the Opponents. Nonetheless, the Opponents have had reasonable opportunities to object, both during the evidence stages and upon the matters being scheduled for hearing together, but they have not done so. I consider it reasonable that the evidence be considered in its entirety to inform both matters, and so confirm here that I have done so in making my determinations.

Evidence

1. As a preliminary matter both parties make references to parts of evidence that was filed by the Applicant during the examination stage of its application to register the trade mark BILLY WASHINGTON’S DRIFTER’S as depicted in paragraph 4. It appears at least some of that evidence was released to the Opponents, likely by virtue of a request under the Freedom of Information Act 1982 although this is not stated. In any event that evidence is not before me, not having been filed as part of the opposition proceedings, and the exhibits to that evidence are no longer within the Trade Marks Office, having been returned to the Applicant at its request. I clarify and confirm, therefore, that I have not taken into account the evidence filed by the Applicant during the examination stage of its application to register its trade mark, except where that evidence has been adduced as part of evidence in opposition proceedings.

2. The evidence filed in respect of the proceedings under s 92 is as follows:

Evidence in support

Statutory declaration of Kathleen Mashadi, CEO and Managing Director of Prism, with exhibits KM-1 to KM-6 (exhibits KM-1 and KM-6 being claimed as confidential), dated 10 April 2015.

Evidence in answer

Letter from Warren Trout on behalf of W L Trout Promotions Pty Ltd, with attachments WLT8 to WLT10 and Mautlich-1, undated but filed on 14 August 2015.

Declaration of Warren Trout with exhibits WLT11 and WLT 12, which references also attachments WLT8 to WLT10 in the letter referred to above, dated 25 August 2015.

Evidence in reply

Statutory declaration of Kathleen Mashadi, with confidential exhibit KM-1, dated 9 November 2015.

1. The evidence filed in respect of the proceedings under s 52 is as follows:

Evidence in support

Statutory declaration of Kathleen Mashadi with exhibits KM1 to KM19, dated 29 January 2015.

Evidence in answer

Declaration of Warren Trout, with attachments WT1 to WT6, dated 22 May 2015, to which is also attached a cover letter and a document entitled ‘submissions’.

Evidence in reply

Statutory declaration of Kathleen Mashadi, with exhibitsKM1 to KM3, dated 17 August 2015.

Applicant’s response to Opponents’ amended Statement of Grounds and Particulars*

Declaration of Warren Trout, with attachments WLT20 to WLT23, dated 23 October 2015.

*The Statement of Grounds and Particulars being a document required to be filed by an opponent at the beginning of proceedings to particularise the grounds upon which the opposition is based; discussed later in this decision.

1. The relevant facts and events are summarised as follows.

The Opponents’ background

1. Prism, a UK based entity, manages a musical group known as THE DRIFTERS. It was granted a worldwide exclusive license to use the trade mark THE DRIFTERS from the registered owner in Australia, Treadwell, in 2005. A partially redacted copy of the agreement is exhibited. Treadwell has also registered THE DRIFTERS as a trade mark in the European Community and the UK, but has not as yet achieved registration in the USA (there apparently being a number of competing claims as to ownership of the name).

2. THE DRIFTERS is a long running and well known group of American soul and/or pop singers. The group was formed in 1953 by Clyde McPhatter, who left in 1954 on account of being conscripted to the US Army. It is declared that Clyde McPhatter sold his interest in the group and the name THE DRIFTERS to George Treadwell in 1954, and he subsequently pursued a solo career with no further connection to the drifters.

3. The group THE DRIFTERS has never had a continuous line up of singers, but rather a succession of more than 65 artists have at various times been members. Some of the more well-known artists include Bill Pinkney and Ben E. King, and some of the more well-known songs released by THE DRIFTERS include ‘Money Honey’, ‘Save the Last Dance for Me’ (which was number 1 in the Australian charts for a period of 18 weeks in 1960), ‘Kissin’ in the Back Row of the Movies’ and ‘Under the Boardwalk’. Twenty of their songs ranked in the top 100 of the Australian charts during the 1960’s and 1970’s. The group was inducted into the Rock and Roll Hall of Fame in 1988, and it is declared that the current line up received a Gold Disk in 2011 for the first new recording in 35 years.

4. It is declared that the group continues to provide musical performances around the world, and evidence shows that there was a ‘The Drifters Optimum Tour 2014’ in the UK in 2014, which appears to have been managed by Prism. The evidence also shows that songs by THE DRIFTERS continue to be played on Australian radio stations (including between 2011 and 2014), and modest sales are declared to have been made of THE DRIFTERS recorded media in Australia (including between 2012 and 2014). Extracts of web pages show that THE DRIFTERS albums and songs are currently available in Australia through JB Hifi, iTunes and Amazon.

The Applicant’s background

1. It is claimed that BILLY WASHINGTON’S DRIFTER’S came to Australia in 1976 for a tour. In what is claimed to be a quote from the then-director of the Australian management company, it is stated that the group applied for and were granted residency in Australia, and an Australian management company took over the group’s management from the now-deceased Chuck Cabot. BILLY WASHINGTON’S DRIFTER’S are claimed to have performed in Australia and throughout the world since that time, under the names BILLY WASHINGTON’S DRIFTERS, THE DRIFTERS and THE DRIFTER’S, although they returned to the USA only once. An ASIC record shows the registration of a now-cancelled business name, BILLY WASHINGTON’S DRIFTERS. The registration date appears to be an error (‘01/01/1753’), although I note that the renewal date is listed as ‘25/09/1986’.

2. As further evidence of the right to use the name BILLY WASHINGTON’S DRIFTER’S, the Applicant files a photograph and two newspaper articles. The photograph appears as though it could be a publicity shot or album cover, although it is not claimed that this is the case nor is there any explanation given as to what the photograph was used for. It depicts four men walking side by side in 1960’s or 1970’s clothing, at the bottom-left of which appears the words ‘The DRIFTERS’ in prominent lettering and at the bottom-right of which appears a logo containing the letters ‘HIT’ and the address details of ‘Hollywood International Talents’, as seen below. It is claimed that the photograph was taken in the USA in the 1960’s; that Chuck Cabot was a founding principal of Hollywood International Talents; and that Billy Washington is one of the four individuals depicted, as is Jimmy Hazley (another member of the group performing in Australia).

1. The two newspaper articles appear to be from Australian publications, which are dated 23 October 1977 and (possibly) 18 January 1984 (the date being relatively illegible). The first discusses how ‘The Drifters’ had chosen to make Australia their home because Billy Washington (stated to be ‘one of the original Drifters’) had married an Australian. It also discusses the origin of ‘The Drifters’ including references to their hit songs such as ‘Save the Last Dance for Me’ and ‘Under the Boardwalk’, and states that:

   At last count, there were three bands calling themselves The Drifters. One is based in London, centred around an original member, Johnny Moore.

   The only other surviving original, Bill Pinkney, has his own Drifters in Florida.

The other newspaper article similarly references the creation of ‘The Drifters’ in 1953 and their hit songs including ‘Under the Boardwalk’. It names the same three members as the previously-referred to article, and discusses how they have performed several times in Kuala Lumpur as well as briefly mentioning having performed in Europe, Asia and America. Both articles include photographs of the three members together.

1. An image of what is stated to be a ‘vinyl LP’ is provided, depicting a label upon a vinyl record with a date of 1983 of what appears to be an album entitled ‘Primitive Love’ by BILLY WASHINGTON’S DRIFTERS.

2. Lastly, the Applicant files a letter dated 9 December 2013 and signed by Charlie Washington and Warren Trout, in which Charlie Washington (stated to be the person Billy Washington) agrees ‘to allow Warren Trout of W L Trout Promotions Pty Ltd to register and manage the business name and trade mark Billy Washington’s Drifters’. Mr Washington also states ‘I also swear I worked with Clyde McPhatter around 1955 to 1963 under the name ‘The Drifters’’ and ‘As I had worked with Clyde as part of an earlier group, I have always considered I had had the right to call my group ‘The Drifters’…’.

The parties’ evidence responding to each other

1. The Opponents refute the claim that Charlie Washington worked with Clyde McPhatter as part of THE DRIFTERS. They assert firstly that Clyde McPhatter left the group in 1954, prior to the period claimed by Charlie Washington, and he sold his interests in the group to George Treadwell; secondly that during the 1955 to 1963 period claimed, Charlie Washington would have worked with other members of the group but no such claim is made; thirdly that it is not stated precisely when and in what capacity Charlie Washington ‘worked with’ Clyde McPhatter; and fourthly that all members of THE DRIFTERS have been and are required to sign employment contracts which stipulate that the rights to the name THE DRIFTERS belongs exclusively to Treadwell or its predecessors. They also provide a list of current and former members which does not include Charlie (Billy) Washington (the source of the list is not stated), as well as a list of the changes to THE DRIFTERS line up from 1953 to 1993 published in the book ‘Save the Last Dance for Me: The Musical Legacy of the Drifters’[2] which likewise does not list Charlie (Billy) Washington.

   [2] The excerpt from the book is contained within an exhibit the entirety of which is claimed to be confidential (the exhibit also contains redacted employment contracts with individual members of ‘The Drifters’). Given the book has been published this material is clearly not confidential – copies of it are available through a number of sources including the online retailer Amazon. To that end I consider it reasonable to state that the book was published in 1993 by Popular Culture Ink and authored by Tony Allen and Faye Treadwell.

2. The Opponents also adduce exhibits that were provided as part of the Applicant’s evidence filed during examination of its application. They include a vinyl record cover, which appears to be the cover of the vinyl record referred to by the Applicant entitled ‘Primitive Love’, and a CD recorded in 2003 by BILLY WASHINGTON’S DRIFTERS. The CD includes a number of songs made famous by THE DRIFTERS, such as the aforementioned ‘Save the Last Dance for Me’ and ‘Under the Boardwalk’, however it is argued that there is no evidence of appropriate authorities, licenses or consents required for cover versions of songs.

3. Promotional material apparently produced by or on behalf of the Applicant is adduced by the Opponents, including web pages, promotional posters and pamphlets. Those materials refer to the group promoted by the Applicant as THE DRIFTERS rather than BILLY WASHINGTON’S DRIFTERS, and it is asserted that they make representations to the effect that Billy Washington was in THE DRIFTERS; that he or BILLY WASHINGTON’S DRIFTERS were involved in the performing or recording of songs made famous by THE DRIFTERS; and that BILLY WASHINGTON’S DRIFTERS and THE DRIFTERS are the same. To this end, the Opponents provide evidence of two instances of confusion, wherein members of the Australian public believed or were confused as to whether the Applicant’s promotional material related to the group managed by Prism.

4. Lastly the Opponents refer to decisions of the USA and UK registry offices and courts which demonstrate that, at times, it has successfully defended the trade mark THE DRIFTERS from various third parties.

5. For its part, the Applicant asserts that BILLY WASHINGTON’S DRIFTERS performed in Australia long before the registration of the Opponent’s Trade Mark in 2003, and that the vinyl record and CD referred to above demonstrate the BILLY WASHINGTON’S DRIFTERS was a known identity in Australia in the 1980s, prior to the registration of the Opponent’s Trade Mark. On that basis, and on the basis of the previously reproduced photograph (which is claimed to prove Charlie (Billy) Washington was a member of ‘a group’ called THE DRIFTERS), the Applicant asserts its rights to use the name BILLY WASHINGTON’S DRIFTER’S.

6. In relation to whether or not Charlie (Billy) Washington was actually a member of THE DRIFTERS (being the group that originated in the USA in 1953 under Clyde McPhatter), the Applicant asserts it cannot be proven beyond doubt that Charlie (Billy) Washington was not in the group – the relevant persons now being deceased (including Clyde McPhatter, George and Faye Treadwell, and Chuck Cabot), and Charlie (Billy) Washington’s age being such that he could well have worked with Clyde McPhatter during the period claimed.

7. The Applicant argues that the decisions from overseas jurisdictions are not relevant because they relate to places where THE DRIFTERS have actually performed, whereas there is no evidence of them ever having performed or planning to perform in Australia. (I take this reference to THE DRIFTERS to be a reference to the group(s) originating or performing in the USA, and/or performing in the UK under Prism’s management).

8. Additionally, the Applicant argues that the Opponents knew of the Applicant’s activities well before the present oppositions, based upon a letter of demand sent in 2010 by Prism to a business named ‘Rock the Boat’, wherein it appears that a cruise ship tour entitled ‘Rock the Boat’ was promoting the performance of a group named THE DRIFTERS and Prism demanded they cease doing so. Further information about that dispute is not stated, however given the Applicant has adduced a copy of that letter of demand I have presumed the letter was forwarded to the Applicant as manager of the group being promoted.

1. The Applicant further asserts that the Opponents have not shown any objections relating to the entity ‘HIT International’ (being that named on the previously reproduced photograph) representing a group called THE DRIFTERS. (For its part, the Opponents declare they had not heard of Chuck Cabot or HIT International prior to reviewing the Applicant’s evidence).

2. The Applicant also contends that a number of the Opponents’ objections relate to copyright issues rather than trade mark issues. I do not fully comprehend the Applicant’s argument in this respect, and so quote it rather than paraphrase it:

   Majority of documentation given by the opposition (Treadwell Prism) refers to record sales, and base the majority of their opposition grounds on graphs of record sales and internet hits. With our limited knowledge and resources we suggest that such evidence is a copyright issue not a trademark issue. (Let it be noted that providing Appra fees are being paid anyone can record anybody’s song. Furthermore our understanding is Treadwell has never written a song for The Drifters nor in fact to the best of our knowledge has the trademark itself been used on a recording and even if it was, we reiterate we believe this is a copyright issue not a trade mark one as far as recorded media goes. We do not dispute records have been sold throughout the world including Australia but to the best of our knowledge none have been recorded in Australia, and again we believe this is a copyright issue.

   (I refer to the IP page)

   Copyright protection is free and automatic in Australia and protects the original expression of ideas, not the ideas themselves.

   [Emphasis original].

A list of examples of common works protected by copyright is then given. Whilst it may be the case that copyright issues between the parties exist, here there are also trade mark issues in question by virtue of both parties providing services with reference to the names of their respective groups which contain words in common: THE DRIFTERS and BILLY WASHINGTON’S DRIFTER’S. As such, I consider the Applicant’s submissions are misplaced and confirm I have not disregarded evidence on account of it being in relation to a copyright issue rather than a trade mark issue.

1. Lastly, both parties adduce evidence of correspondence between their respective legal representatives: the Opponents’ correspondence asserting (amongst other things) infringement of the Opponent’s Trade Mark; and that of the Applicant’s denying infringement, undertaking that the Applicant will no longer promote its group as simply THE DRIFTERS and asserting that the Opponents’ group has not, and will not in the near future, perform in Australia.

Onus and standard of proof

1. In respect of the proceedings under s 52, it is the Opponent that bears of the onus of establishing a ground of opposition on the ordinary civil standard of the balance of probabilities.[3] In respect of the proceedings under s 92, s 100 of the Act places the burden of rebutting the allegation of non-use upon the Opponent. I proceed on the basis that the relevant standard here is also the balance of probabilities.

   [3] See for example Pfizer Products Inc v Karam [2006] FCA 1663, [6] to [26] and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132] to [133].

2. It is convenient to begin with the proceedings under s 92.

Section 92

1. The application for partial removal of the Opponent’s Trade Mark was filed on 20 August 2014. The basis of the application, and the ground which the Opponents must rebut, is that under s 92(4)(b) of the Act, reproduced below:

   92  Application for removal of trade mark from Register etc.

   (4)      An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

   […]

   (b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)           used the trade mark in Australia; or

   (ii)          used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   Note 1: For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

2. Thus, the allegation is that the Opponents’ Trade Mark has not been used in relation to ‘Musical performance services; live band performance; concert services; dance performance services; provision of live entertainment’ at any time in Australia in the three year period ending on 20 July 2014 (‘the relevant period’).

3. The onus upon the Opponents is articulated in s 100 of the Act which stipulates that it is for an opponent to rebut any allegation made under s 92(4)(b), and that an opponent is taken to have rebutted the allegation if it establishes use of the trade mark (or the trade mark with additions or alterations not affecting its identity) or if it establishes that there was an obstacle to use of the trade mark during the relevant period.

4. There is also a discretion conferred by s 101 of the Act, under which the Registrar may decide to remove a trade mark for all or only some of the goods identified in an application for removal, or if satisfied that it is reasonable to do so, to decide not to remove a trade mark even if the grounds under which the removal application was made are established. The discretion is a broad one, there being no express limits upon it,[4] and it need not be applied only in exceptional circumstances but rather where it is reasonable to do so.[5] A relevant consideration is whether removal of a trade mark might lead to confusion[6] (because it might open the way for concurrent use of the same or similar mark by others), and the Act specifically indicates that one of the matters the Registrar may take into account is use of a trade mark by the registered owner upon similar or closely related goods and services.[7]

   [4] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135.

   [5] Kowa Company Ltd v N V Organon (2005) 223 ALR 27 per Lander J, [98], cited in Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No. 4) [2016] FCA 138, [222].

   [6] Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8.

   [7] Section 101(4) of the Act.

5. I am satisfied that the Opponents have established use of THE DRIFTERS in connection with the provision of recorded entertainment in Australia during the relevant period, both in terms of sales of recorded media and airplay on various radio stations throughout Australia. I am also satisfied that Australian consumers have engaged with Prism’s social media pages and website, upon which various performances and group members are promoted, although I note that there does not appear to have been any promotion of any performances in Australia (either past or future).

6. However, I am not satisfied that there has been any use in Australia during the relevant period in respect of the live entertainment services identified by the Applicant, being ‘Musical performance services; live band performance; concert services; dance performance services; provision of live entertainment’. (I note that ‘musical performance services’ is a relatively broad claim and could include services relating to recorded musical performances, however as will become clear it is not necessary for me to decide whether this is the case.)

7. To that end the ground upon which the application for partial removal was made has been established. It is for me, then, to decide whether or not the Registrar’s discretion ought to be exercised to maintain registration of the Opponents’ Trade Mark in respect of the identified services, despite the ground having been established. The courts have identified a number of factors which are of assistance in considering the exercise of the discretion, including:

   •         there had been no abandonment of the trade mark;

   •the registered proprietors of the mark still had a residual reputation in the mark;

   •there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;

   •the applicants for removal had entered the market without having taken steps to ascertain from the register whether anyone had a right to exclude their use of the mark;

   •the registered proprietors were not aware of the applicant’s sales under the mark.[8]

   [8] Flick J in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [202]-[203], referring to Falconer J in Hermes Trade Mark [1982] RPC 425.

8. I consider it relatively clear on its face that the Opponents have not abandoned their trade mark. Recorded media is still offered for sale and songs by THE DRIFTERS are still played on Australian radio stations. I consider it also the case that one or other or both of the Opponents still have a reputation in the Opponents’ Trade Mark. Although in other jurisdictions such as the USA reputation might be said to reside with another entity or entities (based upon various splinter groups which have been established by past members of THE DRIFTERS, such as ‘Bill Pinkneys Drifters’), I am not satisfied that this is the case in Australia. I do not consider that there is sufficient evidence before me to disturb the Opponents’ claim to ownership of THE DRIFTERS trade mark. I also do not consider that there is sufficient evidence before me to conclude, on the balance of probabilities, that Charlie (Billy) Washington was a member of the group THE DRIFTERS that was established in the USA in 1953 under Clyde McPhatter and which released such songs as ‘Save the Last Dance for Me’ and ‘Under the Boardwalk’, as opposed to him being a member of a group identifying themselves as THE DRIFTERS and promoting themselves in Australia as being the same group that released those songs (or an affiliated group).

9. Nor am I satisfied that the Opponents were aware of the Applicant’s sales under the trade marks BILLY WASHINGTON’S DRIFTER’S, THE DRIFTER’S or THE DRIFTERS. Although a letter of demand was sent in 2010, that letter was sent to the business ‘Rock the Boat’ and it is not apparent that Prism knew of the Applicant. Nor are there any figures stating the number of sales made of the vinyl record or CD released in Australia by BILLY WASHINGTON’S DRIFTERS: had high sales occurred it might be inferred that news of such album success would reach the owners of the registered trade mark and they might therefore be aware of the Applicant.

10. I note also that the Full Court in Austin, Nichols & Co Inc v Lodestar Anstalt[9] confirmed that the question of whether removal of the relevant trade mark would lead to deception or confusion was relevant in considering the exercise of discretion. Here, I consider that removal of the Opponents’ Trade Mark would lead to deception or confusion, in that Australian consumers may be confused or deceived as to whether the performances by Applicant’s group were affiliated with the group who has released the various recorded media in Australia and whose songs are regularly played on Australian radio. Such an association by consumers between recorded media, radio airplay and live performances is not surprising, it being common that performing artists deliver live performances, release songs and albums for sale and have their music played on radio. Moreover it appears that confusion has occurred on at least two occasions, wherein Australian consumers have sought advice from Prism as to whether performances promoted by the Applicant were indeed those of THE DRIFTERS group managed by Prism.

    [9] [2012] FCAFC 8, [35].

11. To that end, whilst the Opponents have not shown that the Opponents’ Trade Mark was used in respect of ‘Musical performance services; live band performance; concert services; dance performance services; provision of live entertainment’ during the relevant period, I consider it reasonable to exercise the Registrar’s discretion to maintain the registration in respect of those services.

12. Accordingly, the application to partially remove trade mark registration 978047 is refused.

Section 52

1. In their Statement of Grounds and Particulars (‘SGP’) the Opponents nominate grounds of opposition under ss 44, 58A, 58, 60, 42(b), 62A and 62. As stated previously, the onus is upon the Opponent to establish at least one of those grounds. Should it do so, it is not necessary that I address the other grounds of opposition, although they may be relied upon in the event of an appeal (as may any other ground available under the Act).

2. As will become clear I have found it necessary to address only the ground of opposition under s 60.

3. Section 60 of the Act provides:

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

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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:    For priority date see section 12.

4. To establish the ground of opposition under section 60 the Opponents must demonstrate their trade mark had acquired a reputation in Australia such that by the priority date, 13 January 2014, the use of the Applicant’s Trade Mark would be likely to deceive or cause confusion.[10]

   [10] I note here that the notion of “deceive” does not necessarily imply intent to do so, per Lord Denning in Parker-Knoll Limited v Knoll International Limited [1962] RPC 265 at p174.

5. Reputation in this context refers to the recognition of the Opponents’ Trade Mark by the public generally,[11] although the size and nature of the relevant market must be taken into account.[12] I note further that confusion or deception may be likely where very little nexus exists between the goods and/or services in question depending on the strength of reputation and degree of similarity between the parties’ trade marks,[13] and that confusion cannot arise solely from reputation but must always involve some degree of similarity between trade marks, whether it be called deceptive similarity or something less.[14]

   [11] McCormick & Company Inc v McCormick (‘McCormick’) [2000] FCA 1335.

   [12] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587.

   [13] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124.

   [14] Rogers Seller & Myhill v Reece Pty Ltd [2010] ATMO 5.

6. Reputation in a jurisdiction may be proved by a variety of means including advertisements, television, radio, magazines or newspapers, and/or inferred from volumes of sales or advertising expenditure.[15] I am satisfied that by the priority date the Opponents’ Trade Mark THE DRIFTERS had acquired a reputation in respect of a musical group and the services that are generally associated with musical groups (such as production of recordings, live performances, and various entertainment services). Whilst that reputation may have waned somewhat from the heyday of THE DRIFTERS’ fame, it nonetheless remains significant. The Opponents have established that songs by THE DRIFTERS still enjoy significant radio coverage in Australia, that THE DRIFTERS have had a multitude of songs in the top 100 in the Australian charts (albeit largely during the 1960s and 1970s) and that in recent years Australian consumers have engaged with Prism’s social media and web pages to a significant degree, and have purchased recordings by THE DRIFTERS, albeit only in modest volumes.

   [15] McCormick, above n 10, [83]-[86].

7. The first limb of s 60 being satisfied, the next question is whether on account of that reputation the use of the Applicant’s Trade Mark in respect of the services for which registration is sought would be likely to deceive of cause confusion.

8. The Applicant contends that BILLY WASHINGTON’S DRIFTER’S are themselves a well-known group in Australia, in particular because the examiner of the application stated as much when she raised a ground for rejection under s 43 during the examination phase of the application. However the strength of BILLY WASHINGTON’S DRIFTER’S reputation hinges largely on the claimed connection with THE DRIFTERS. This is reflected in the examiner’s internet research wherein web pages promoting BILLY WASHINGTON’S DRIFTER’S make such statements as:

   Billy Washington’s Drifters provided the soundtrack for a generation with more than a decade of successful record releases with classics like ‘On Broadway’, ‘Save the Last Dance for Me’ and ‘Saturday Night at the Movies’;

   The Drifters are on ongoing musical institution since 1952…McPhatter and Ben E King are just some of the great singers who have passed through the group. Today at the age of 72, Billy Washington leads the group that has continually toured Australia, New Zealand, Malaysia, Japan, China etc – and the list goes on’;

and in an ‘Austage’ web page devoted to BILLY WASHINGTON’S DRIFTERS:

Inducted into the Rock and Roll Hall of Fame, this is the group credited with the first rock and roll record (Money Honey). Whilst the hits have been constant, the members of the Drifters have always drifted in and out. But Billy Washington has been with the group since he was a young man and he maintains the original sound we remember.

1. I am accordingly not satisfied that BILLY WASHINGTON’S DRIFTERS has, in its own right, acquired a reputation in Australia independent of the reputation of THE DRIFTERS. In any event, as reflected in McCormick,[16] under s 60 the inquiry centers on the reputation of the earlier mark, not the reputation that the Applicant’s Trade Mark may have garnered subsequent to THE DRIFTERS achieving significant fame (being the very reason for which an entity would associate itself with THE DRIFTERS).

   [16] At [94].

2. The presence of the name BILLY WASHINGTON does not prevent the likelihood of confusion or deception. ‘DRIFTERS’ is a highly distinctive word to use in respect of the various entertainment services claimed in the application for registration: its impact in the parties’ trade marks is not lessened on account of (eg) it being descriptive or common to the trade. It is also a word in which has acquired a significant reputation as the name of a musical group. It is therefore likely that when it is used in respect of services commonly associated with those of a musical group, even in combination with an individual’s name such as BILLY WASHINGTON, consumers will mistakenly assume a connection between BILLY WASHINGTON’S DRIFTER’S and THE DRIFTERS or be caused to wonder whether such a connection exists.

3. Additionally, I mention that the stylization of the fonts used in the Applicant’s Trade Mark also do not prevent the likelihood of confusion. Common embellishments have little impact upon the identity of a trade mark,[17] and therefore do not significantly aid in differentiating between marks.

   [17] See for example Morny Ltd’s Trade Mark (1951) 68 RPC 55.

4. I note further that, per McCormick, s 60 precludes the operation of the honest concurrent and prior use provisions of s 44.

5. As such, I am satisfied that the Opponent’s Trade Mark had acquired a reputation before the priority date of the Applicant’s Trade Mark, and that on account of that reputation the use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. The ground of opposition under s 60 therefore succeeds.

Decisions and costs

1. In respect of the application to partially remove trade mark registration 978047, I have found that the ground upon which the application was made is established, but that the Registrar’s discretion ought to be exercised to maintain the registration. I therefore refuse to partially remove registration 978047.

1. In respect of the application to register the trade mark application no. 1599983, I have found that the ground of opposition under s 60 is established. I therefore refuse to register trade mark application 1599983.

2. Costs normally follow the event. Here, however, I consider that the parties should bear their own costs. The Opponents have not articulated their case, electing not to provide written submissions nor appear at the oral hearing they requested. The Applicant therefore has been put in the position of attempting to respond to the Opponents’ case without the benefit of submissions, and I bear in mind that the Applicant is a relatively uninformed party (it being self-represented) which is unlikely to be aware of matters that ought to be addressed. Accordingly, I decline to award costs in either matter against either party.

Nicole Worth

Hearings Officer

Trade Marks Hearings

5 October 2016