Trust Company Limited v WW Australia Pty Limited and Village Themepark Management Pty Limited

[2010] ATMO 84

TRADE MARKS ACT 1995

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

Re:Opposition by Trust Company Limited to registration of trade mark applications 1131930(41) - WHITEWATER SURFRIDER, 1131931(41) and 1144070(35, 43) - WATER WORLD - filed in the name of WW Australia Pty Limited and Village Themepark Management Pty Limited.

Delegate:

Claudia Murray

Representation:

Opponent: Mr Ben Fitzpatrick of Counsel, instructed by Ms Shauna Ross from DLA Phillips Fox.

Applicants: Mr Eric Ziehlke, solicitor, from Chrysiliou Law.

Decision:

2010 ATMO 84

1131930 - Section 52 opposition - opposition successful under section 44 – application refused - costs awarded against applicants.

1131931 and 1144070 - Section 52 oppositions - sections 41 and 62A (1144070 only) – oppositions unsuccessful - applications to proceed to registration - costs awarded against opponent.

Background

1.     WW Australia Pty Limited and Village Themepark Management Pty Limited (‘the applicants’) filed trade mark application numbers 1131930 and 1131931 on 25 August 2006 and 1144070 on 31 October 2006. Application 1131930 is in respect of the plain word trade mark:

WHITEWATER SURFRIDER

2.     That application was filed in class 41 of the International (Nice) Classification of Goods and Services. It covers the following services:

Entertainment services; entertainment services relating to the conduct of amusement or theme parks inclusive of live action shows and other forms of public entertainment conducted in such parks; amusements; audio and/or visual programmes and/or shows being services of an educational and/or entertaining nature; club services in this class; arranging and conducting of conferences or seminars; instructional services

3.     Applications 1131931 and 1144070 are both in respect of the trade mark:

WATER WORLD

4.     Application 1131931 covers identical services in class 41 to those quoted for 1131930 above. Application 1144070 is in respect of the following services in classes 35 and 43:

Class 35: Retail store activities and services being the type conducted within an amusement or theme park; loyalty schemes

Class 43: Restaurant, cafe, snack bar and take-away food and drink services; hotel and accommodation services

5.     Applications 1131930 and 1131931 were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 4 January 2007 and application 1144070 on 5 April 2007.

6.     Trust Company Limited (‘the opponent’) filed notices of opposition to registration of the two earlier trade marks on 2 February 2007 and to the later application on 5 July 2007. Seven grounds of opposition were listed in the earlier notices and eight in the later notice. All three notices were later subject to amendment by consent.

7.     Evidence in support, answer and reply was duly served and filed, after which I heard the three matters, as a delegate of the Registrar of Trade Marks, on 14 May 2010 in Sydney. Mr Ben Fitzpatrick of Counsel, instructed by Ms Shauna Ross from DLA Phillips Fox represented the opponent. Mr Eric Ziehlke, solicitor, from Chrysiliou Law represented the applicants.

Evidence

8.     The evidence in relation to these oppositions comprises:

1131930

Evidence in Support

ØDeclaration of Stephen Gregg, Chief Executive Officer of Dreamworld Themepark and WhiteWater World water park, made 4 February 2008, with Annexures A to F inclusive and Exhibits SG-1 to SG-76 inclusive.

Evidence in Answer

ØDeclaration of Graham McHugh, Chief Financial Officer of Warner Village Themepark Group, made 11 December 2008, with Exhibits “GM-1” to “GM-10” inclusive.

Evidence in Reply

ØDeclaration of Noel Dempsey, Chief Executive Officer of Dreamworld Themepark and WhiteWater World water park, made 9 September 2009, with Annexures A and B inclusive

1131931 and 1144070

Evidence in Support

ØDeclaration of Stephen Gregg, Chief Executive Officer of Dreamworld Themepark and WhiteWater World water park, made 4 February 2008, with Annexures A to F inclusive and Exhibits SG-1 to SG-81 inclusive.

Evidence in Answer

ØDeclaration of Graham McHugh, Chief Financial Officer of Warner Village Themepark Group, made 11 December 2008, with Exhibits “GM-1” to “GM-7” inclusive.

Evidence in Reply

ØDeclaration of Noel Dempsey, Chief Executive Officer of Dreamworld Themepark and WhiteWater World water park, made 9 September 2009, with Annexures A to O inclusive.

9.     The evidence shows that the opposing parties here are each proprietors of water based theme amusement parks located very near each other on the Gold Coast of Queensland. The applicants’ theme park has undergone changes of ownership and operators over the years, but has continuously operated from the same site since 1984. Its original trading name was CADES COUNTY WATER PARK. In 1986 it was renamed WET’N’WILD/WATER PARK. Finally, in 1997, its name was changed to its current one, WET’N’WILD/WATER WORLD[1]. Ownership and operation of the applicants’ water park is closely related to that of two further long-established theme parks situated on or near the Gold Coast named SEA WORLD and WARNER BROS. MOVIE WORLD.

10.   The opponent operates two theme parks located adjacent to each other at Dreamworld Parkway, Coomera, on the Gold Coast of Queensland. The first of these, named ‘Dreamworld’, features ‘13 themed worlds’ as well as various amusement and action rides and has continuously operated since 1981 under this name. The opponent’s second theme park is a ‘surf to beach themed amusement park’[2] that features water-based amusement and action rides along with water-based activities such as surfing classes. It has traded under the names WHITEWATER WORLD, DREAMWORLD’S WHITEWATER WORLD and WHITEWATER WORLD by DREAMWORLD since 5 December 2006, although significant advertising and promotional activity took place in the months leading up to the official opening of the theme park on that day and advance ticket sales commenced from 1 September that year.

Grounds of opposition: 1131930 WHITEWATER SURFRIDER

11.   For the purposes of discussing the grounds of opposition, and deciding the matters, it is convenient to now separate application number 1131930 for the opposed trade mark WHITEWATER SURFRIDER from the applicants’ second and third opposed trade marks for the words WATER WORLD. Mr Fitzpatrick indicated at the hearing that the grounds of opposition to be pressed in relation to trade mark number 1131930 would be those under sections 42(b), 44, 60 and 62A. I will deal with them here in the order in which he made his submissions. For completeness I add that none of the remaining grounds specified in the opponent’s notice of opposition has succeeded.

Section 44 - Identical etc. trade marks

[1] Usually rendered in a combined Logo format, although separate use of WET’N’WILD and WATER WORLD independently as names and trade marks is also claimed by the applicants.

[2]1131930 Gregg declaration, paragraph 16.

1. Subsection 44(2), applied to the present circumstances, provides that an application for registration must be rejected if it is substantially identical with, or deceptively similar to, another person’s trade mark application or registration that has an earlier priority date and covers services that are similar to the applicants’ services. The definition of ‘deceptively similar’ in section 10 is that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. Section 14 defines ‘similar services’ as services which are ‘the same’ or ‘of the same description’.

   13.   Mr Fitzpatrick drew my attention to the opponent’s registered trade mark 1113596 WHITEWATER WORLD as a relevant citation for the purposes of section 44. The priority date of that registration is 12 May 2006 and it covers the following services:

   Class 41: Theme and amusement parks; amusement rides; action rides; entertainment centres; amusement arcades; pin-ball parlours; services provided by theme and amusement parks; the provision of amusement grounds; cinemas and theatres; function venues; amusement and entertainment services, recreational, sporting, educational and cultural programs and activities; live performances; production of sports and entertainment spectacles including circuses; publication of arts and entertainment materials; production and publication of entertainment programs, television and radio programs, music and other audio, audio-visual, interactive and multimedia programs and material in any medium including on-line; production and publication of cinematographic films, videotapes, cassettes, compact discs, CD-ROMs, DVDs, recording discs, games and programs; publication of books and periodicals in printed or electronic form including "talking books" (other than publicity texts); conducting and arranging competitions; conducting and arranging seminars; conducting and arranging exhibitions; conducting and arranging functions; rental of entertainment products including videos; rental of sporting products and equipment; photography

   Class 43: Provision of food and beverages; restaurants; take-away outlets, cafes; catering services; temporary accommodation, accommodation reservation

   14.   Mr Ziehlke did not dispute that the respective services of the two trade marks were, as Mr Fitzpatrick put it ‘conterminous’ (that is, in this context, ‘similar’). The opponent’s priority date is clearly earlier than that of the opposed trade mark. Mr Fitzpatrick did not argue that the opponent’s trade mark was substantially identical to the applied-for trade mark. The only remaining issue to be determined therefore is whether the trade marks WHITEWATER WORLD and WHITEWATER SURFRIDER are ‘deceptively similar’, in terms of section 10, and in the context of similar services. Mr Fitzpatrick cited various precedents in support of his case. He submitted that, in assessing whether trade marks are deceptively similar, the first portion of a word is by far the most important in assessing the likelihood of confusion[3]. Further, he argued:

   [3] London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264; Conde Nast Publications Pty Ltd v. Virginia Taylor (1998) 41 IPR 505.

   The prominent and distinct feature of the respective marks is WHITEWATER. It is the first portion of the respective marks. The term is conjoined in both marks. The 'world' portion of the prior mark has a relatively low level of inherent adaptation to distinguish which reinforces the prominence of WHITEWATER in the prior mark.

   Taking into account the doctrine of imperfect recollection, and the tendency to abbreviate, it is apparent that there is a real risk that relevant consumers would be caused to wonder whether the respective services were related.

2. In rebuttal, Mr Ziehlke argued:

   In comparing the marks WHITEWATER WORLD and WHITEWATER SURFRIDER, it is important to note that the suffixes are different. The prefixes are identical but in this regard, it is difficult to argue that the word WHITEWATER is distinctive in relation to water theme park rides. In the Macquarie Dictionary, WHITEWATER is defined as “denotes a race, exhibition, etc. ….over rapids”.

   In this regard, reference is made to the notional user test in Smith Hayden & Co. Ltd’s Application (1946) 63 RPC 97 at 101, that if the shared element has a very low inherent distinctiveness, it is much less likely to be seen by the public as denoting a common trade source of the similar goods.

   With regard to the suffixes of the respective marks, WHITEWATER SURFRIDER and WHITEWATER WORLD, the suffix of the Mark is SURFRIDER while the suffix of the Opponent’s Mark is WORLD. It is submitted that in the context of theme park activities, the word SURFRIDER is a distinctive word as it is more likely to be associated with beach activities than theme park rides.

   16.   I have considered Mr Ziehlke’s arguments, but I am inclined to find those of the opponent more persuasive in this case. I do not disagree with the applicants’ point that WHITEWATER has some connection with water-based theme parks, but I cannot agree that this connection reduces it to the level of low inherent distinctiveness. It is a word which is striking both to the eye and also to the mind, conjuring images of wild, fast-moving water. Given the nature of the word, together with its prominence in each trade mark, it cannot help but make a more forceful first impression than either the (particularly unremarkable) word WORLD or even SURFRIDER which also appear respectively in those marks. WHITEWATER is the most memorable feature of both trade marks and that which would be most likely to be carried away and retained, in the terms described by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd[4].

   [4] (1937) 58 CLR 641 at (658).

3. In an earlier similar case, involving a comparison of the trade marks POLO and POLO CLUB, Burchett J noted the following:

   On the mundane level which is appropriate here, someone who knew of a “Polo” product, upon seeing a similar product selling under the name “Polo Club”, would be quite likely to think it was a particular version of the product which could be described as the Club version.[5]

   [5] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 26 IPR 246 (per Burchett J at 230).

4. Later in the course of his decision His Honour stated:

   It is plain that the word “Polo” must be an essential feature of the applicants’ mark, since it is the whole of the mark … “Polo” is also quite a distinctive word, and the taking of it is bound to cause confusion which the mere addition of the word “Club” will not dissolve. Bearing in mind that the test requires consideration of the customer with an imperfect recollection of the mark, it is important that the distinctive impact of the word “Polo” is likely to affect the mind although the presence or absence of the blander word “Club” may escape notice. At the same time, some persons may be quite aware that one mark contains the added word, and the other does not, but may yet think of “Polo Club” bed linen as a particular style of “Polo” bed linen.[6]

   [6] Polo Textiles (ibid at 232).

5. The analogous consideration here is whether amusement-seeking members of the public, who knew of the opponent’s trade mark WHITEWATER WORLD used in connection with theme park services, upon seeing the applicants’ services advertised under the WHITEWATER SURFRIDER trade mark, would be likely to think they were being provided by the same theme park owners. I believe that ordinary people would indeed be caused to wonder whether this was the case.[7] I find the applied-for trade mark to be deceptively similar to the opponent’s trade mark.

   [7] Southern. Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR. 592 (at 594, 595).

6. Mr Ziehlke submitted that, should I make such a finding under subsection 44(2), the exceptions of honest concurrent use, other circumstances or prior use available under subsections 44(3) and (4) should in any event be available to the applicants, as their evidence had established a ‘substantial reputation’ in the trade marks WHITEWATER FLUMES and WHITEWATER MOUNTAIN. Mr Fitzpatrick argued strongly that this was not the case. I have considered the applicants’ evidence, but I find it to be ambiguous and unconvincing in this regard. I find the ground of opposition in terms of section 44 to be established.

   Other grounds of opposition

7. Mr Fitzpatrick also pressed grounds of opposition under sections 42(b), 60 and 62A at the hearing. I have considered his submissions and the opponent’s evidence in relation to these grounds to a limited degree. However, there is no need to explore them further here. The opponent has succeeded in its ground of opposition under section 44 in relation to all the services covered by the subject application. The additional grounds would, of course, be again available to the opponent in the event of an appeal from this decision.

   Decision and costs: 1131930

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

   (1)      Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a)      to refuse to register the trade mark; or

   (b)      to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:    For limitations see section 6.

9. The onus is upon an opponent to establish one or more of its grounds of opposition. Gyles J has referred to the appropriate standard of proof required in terms of a ‘balance of probabilities’.[8] His findings upon that issue, arrived at after an exhaustive consideration of the relevant authorities, have recently been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks.[9]

   [8] Pfizer Products Inc v Karam (2006) 70 IPR 599

   [9] (2009) 82 IPR 13 (at [22] to [26]).

10. I find here that the opponent has met the onus upon it, in terms of the ground of opposition argued under section 44. I therefore refuse to register trade mark application number 1131930.

11. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicants, WW Australia Pty Limited and Village Themepark Management Pty Limited.

    Grounds of opposition: 1131931 and 1144070 WATER WORLD

    26.   The grounds of opposition in relation to the opposed trade marks numbered 1131931 and 1144070 must now be addressed. Mr Fitzpatrick indicated at the hearing that the only ground of opposition to be pressed in relation to 1131931 would be under section 41, and for 1144070, sections 41 and 62A would be pursued. I will deal firstly with the section 41 ground in relation to both trade mark applications, as they were dealt with firstly in the opponent’s submissions. As above, I find that none of the remaining grounds listed in the notices of opposition has been successful.

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

    27.   Section 41 of the Act deals with a trade mark’s capacity to distinguish an applicant’s goods or services. If a trade mark is determined to be inherently adapted to distinguish an applicant’s goods or services, then it may be registered under subsection 41(3), without reference to the later subsections of section 41. As Mr Fitzpatrick drew to my attention in his submissions, the manner in which section 41 operates to facilitate a decision of a delegate of the Registrar upon the registrability of a trade mark was examined closely by Branson J in the Oregon case.[10] However, in considering that analysis, the Trade Marks Office Manual of Practice and Procedure comments:

    If the Registrar is able to decide, on the basis of its inherent qualities, that the trade mark is capable of distinguishing the goods or services of the applicant from those of other persons, the matter is resolved in favour of the applicant. This does not mean the Registrar must be in no doubt about the trade mark's capacity to distinguish. The Registrar may have some reservations in the matter but still decide that the trade mark is capable of distinguishing.[11]

    28.   As Mr Ziehlke argued in his submissions, no ground of rejection in terms of section 41 was raised against this application during examination. Shanahan[12] discusses the interesting interplay between the presumption of registrability and the onus upon an opponent in cases such as this:

    It is difficult to establish any ground for opposition without evidence and where the ground for opposition is a ground for rejection, which was not sufficient to prevent acceptance of the application, the difficulty is compounded. The opponent must by evidence or other means displace the presumption of registrability. The absence of evidence may of itself tell against an opponent.

    [10] Blount v Registrar of Trade Marks (1998) 83 FCR 50, 40 IPR 498.

    [11] Trade Marks Office Manual of Practice and Procedure, Part 22, paragraph 3.2.

    [12] Shanahan’s Australian Law of Trade Marks and Passing Off 4^th ed, 2008 at [50.2005].

1. Here, Mr Fitzpatrick has pointed to what he has suggested to be insufficiencies in the applicants’ evidence regarding whether they have used their trade mark WATER WORLD in any other manner than in close proximity to the words WET’N’WILD. However, he has not pointed to any evidence served by the opponent which demonstrates that the expression WATER WORLD on its own is not capable of distinguishing the applicants’ services. Instead, he has drawn my attention to the fact that the Trade Marks Office Manual of Practice and Procedure (‘the Manual’) has made ‘World’ trade marks the subject of special consideration. Indeed, this is true. I note that the reference cited by Mr Fitzpatrick reads in part:

   13.5 World and Land trade marks

   Trade marks consisting of WORLD, WORLD OF, LAND, LAND OF in combination with the name of, a direct reference to, or an attribute of, the designated goods or services will generally be considered prima facie capable of distinguishing.[13]

   [13] Trade Marks Office Manual of Practice and Procedure, Part 22, paragraph 13.5.

   30.   The Manual then goes on to list some examples illustrating where a ground of rejection under section 41 may or may not be raised. The closest example to the current situation is that of the trade mark CHEESEWORLD for ‘Dairy products including cheese’ in class 29 and ‘Retailing of cheeses and dairy products in class 35’. No ground of rejection is indicated for that example.

   31.   Mr Fitzpatrick also drew my attention to a recent opposition decision by Hearing Officer Michael Kirov.[14] That decision involved the same parties but in reversed roles. The applicants’ (there the opponent) WATER WORLD trade mark was discussed, in terms of whether it was deceptively similar to the opponent’s (there the applicant) trade mark WHITEWATER WORLD. Mr Fitzpatrick’s point was that, at paragraph 35, the hearing officer remarked that he held the view that ‘the words “Water World” do not in fact contain a great deal of inherent distinctiveness in relation to a water-based theme park’. However, I also note these comments, which appear a little later in the decision, at paragraph 42, and which shed more light upon the circumstances relating to ‘World’ trade marks in general:

   I have already indicated my view that the words “Water World” do not contain a great deal of inherent distinctiveness in relation to a water-based theme park, notwithstanding they may qualify for registration on a prima facie basis under IP Australia’s current practice regarding such marks.  Indeed, a check of the Register suggests the desire of traders to combine the element WORLD with other, apparently descriptive, words is extremely common, with there being more than 500 current registrations for such marks in Class 41 alone.  Registration 736174 UNDERWATER WORLD owned by Oceaenis Australia Pty Ltd, which covers, inter alia, “Education and entertainment services in relation to marine and freshwater environments such as services in relation to marine parks, exhibits, displays, theme parks and exhibitions” is a pertinent example.  While the state of the Register can provide no more than an indication of what trade marks may actually be in use for particular goods or services, I am satisfied from the sheer number of registrations that the practice of combining apparently descriptive words with the word “world” is common to the trade in Class 41 services.

   [14] WWAustralia Pty Ltd & Village Themepark Management Pty Ltd v Trust Company Limited (2009) 85 IPR 452.

   32.   I have carefully considered the opponent’s submissions in support of its section 41 ground of opposition. However, as I have already commented, these are unsupported by evidence. Under these circumstances, I decline to displace the examiner’s original finding that the trade mark is capable of distinguishing the applicants’ services. My decision reflects earlier decisions of delegates of the Registrar such as Southcorp Limited v Barwick Wines Pty Ltd[15] (Crush for wine) and Fortuity Pty Limited v Ereneos (Renos) Savvides[16] (Trim For Life for food supplements and books). In the latter decision, Hearing Officer Iain Thompson remarked:

   I do not see any problem with the trade mark in terms of subsection 41(3) of the Act. It is certainly strongly suggestive, but, to my mind, there is an indefiniteness of meaning when an analysis of the trade mark is attempted. Such indefiniteness, and the lack of any real evidence from Fortuity, leave me satisfied that other traders have no real need to use the words in the normal course of trade. I am very conscious of the reasoning adopted by the Registrar's delegate in Ciba-Geigy Australia Ltd v Eli Lilly and Co (1983) 2 IPR 353 [YIELD for fungicides, herbicides and insecticides]: the desirability of some trade marks arises after they have been coined on the realisation, by others, that the trade mark is very effective. One must exercise caution not to reason one's way back from this perception to the conclusion that, because of this effectiveness, other traders have a need to use the words in the normal course of trade.

   [15] [2006] ATMO 68 (28 July 2006).

   [16] [2000] ATMO 89 (16 August 2000).

   33.   I believe that the opponent has applied a similar exercise of ‘reasoning its way back’ in this instance. As discussed above, there are many examples of trade marks containing the word ‘World’ (including the opponent’s own) co-existing on the Register. They are all evocative of the services to which they are applied, and the opponent has not convinced me that the applicants’ trade mark is fatally different in this regard. The opponent has not succeeded in its ground of opposition under section 41.

   Section 62A – Application made in bad faith

2. Section 62A provides simply that ‘The registration of a trade mark may be opposed on the ground that the application was made in bad faith’. It was established at the hearing that the opponent would only be able to press that ground in relation to trade mark application number 1144070, as it had not been included in the grounds of opposition for application number 1131931. Mr Fitzpatrick’s submissions in relation to the ground were very brief. He submitted:

   An inference of bad faith arises from the timing of the application of the opposed trade marks, namely:

   (a) with respect to trade mark number 1131931, being just two days after the following trade marks in the name of the opponent:

   (i) 1133755 for WHITEWATER WORLD with a device of crossed surfboards device mark ("the Device mark") covering services in classes 9, 14, 16, 21, 24, 28, 30 and 35; and

   (ii) 1113596 for WHITEWATER WORLD word mark ("the Word mark") covering services in classes 41 and 43, were accepted for registration by IP Australia;

   (b) after first use of the Device mark and the Word mark; and

   (c) almost immediately after the opponent announced the opening of its WhiteWater World.

   The inference is buttressed by the fact that the applicants have adduced no evidence that the applicants have used or promoted this term as a separate mark.

3. Section 62A is a relatively new ground of opposition, so there is relatively little precedent to be followed in relation to the extent of evidence which may be relied upon by an opponent in order to meet the onus upon it. However, in this case, the opponent has no evidence whatsoever on which it may rely. This is different indeed from the level of evidence adduced by the successful opponents in Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26 (1 April 2009) and Bombala Council v Peter Wilkshire [2009] ATMO 33 (26 May 2009). I find that the opponent has not made out its ground of opposition under section 62A.

   Decision and costs – trade mark numbers 1131931 and 1144070

4. The opponent’s grounds of opposition against trade mark numbers 1131931 and 1144070 have been unsuccessful. The trade mark applications may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been discontinued or, in the event of a decision of the court, that the applications be subject to that order. I award costs in relation to these oppositions against the unsuccessful opponent, Trust Company Limited

   Claudia Murray

   Hearing Officer

   Trade Marks Hearings

   1 September 2010