Universal City Studios LLC v Philip Gorecki

[2017] ATMO 18

TRADE MARKS ACT 1995

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

Re:Opposition by Universal City Studios LLC to registration of trade mark applications 1617720 (41) and 1663461 (41) - ANIMAL HOUSE (fancy script) and Animal House (plain words) - in the name of Philip Gorecki.

Delegate:

Adrian Richards

Representation:

Opponent: Khajaque Kortian of Spruson & Ferguson

Applicant: Self represented

Decision:

2017 ATMO 18

Oppositions under section 52 of the Trade Marks Act 1995 (Cth) against two trade mark applications – grounds of opposition under sections 42(b), 60 and 62A pressed – no ground of opposition established – trade marks to proceed to registration

Background

1. This decision relates to two applications to register the trade marks shown below (together, ‘the Trade Marks’), both filed by Philip Gorecki (‘the Applicant’).

   Application Number:     1617720

   Filing Date:  16 April 2014

   Trade Mark:  

   (‘the Logo Trade Mark’)

   Specification of Services:            Class 41: Night club services (Entertainment); Music festival services; Musical performances; Organisation and conducting of dance, music and other entertainment festivals; Organisation of musical events

   ***

   Application Number:  1663461

   Filing Date:  10 December 2014

   Trade Mark:  Animal House (‘the Word Trade Mark’)

   Specification of Services:            Class 41: Musical entertainment services; Night club services (Entertainment); Organisation and conducting of dance, music and other entertainment festivals; Organising events for entertainment purposes

2. The Logo Trade Mark was examined and advertised as having been accepted for possible registration on 11 September 2014. Universal City Studios LLC (‘the Opponent’) filed a Notice of Intention to Oppose on 11 November 2014. The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 11 December 2014.

3. The Word Trade Mark was examined and advertised as having been accepted for possible registration on 30 April 2015. The Opponent filed a Notice of Intention to Oppose on 30 June 2015, followed by an SGP on 30 July 2015.

4. Prosecution of both oppositions proceeded in the usual way, with the parties’ evidence all filed within the statutory deadlines. Given the similarity of subject matter and evidence, the parties then jointly proposed that the oppositions be heard and decided together, to which this office consented. The hearing took place in Canberra on 18 November 2016 before me in my capacity as a delegate of the Registrar of Trade Marks.

5. The Applicant elected not to attend the hearing, instead filing written submissions beforehand. Khajaque Kortian, Principal at Spruson & Ferguson attended for the Opponent.

Evidence

1. The evidence filed in relation to the Logo Trade Mark is set out below:

   Evidence in support

   Declaration of Khajaque Kortian, Principal at Spruson & Ferguson, made 4 May 2015 with exhibit KK-1 (‘Kortian 1’).

   Evidence in answer

   Declaration of Philip Gorecki, the Applicant, made 9 September 2015 with exhibits PG1 to PG3 (‘Gorecki 1’).

   Evidence in reply

   Declaration of Khajaque Kortian, Principal at Spruson & Ferguson, made 8 December 2015 with exhibits KK-1 to KK-3 (‘Kortian 2’).

2. The evidence filed in relation to the Word Trade Mark is set out below:

   Evidence in support

   Declaration of Khajaque Kortian, Principal at Spruson & Ferguson, made 15 December 2015 with exhibits KK-1 and KK-2 (‘Kortian 3’).

   Evidence in answer

   Declaration of Philip Gorecki, the Applicant, made 22 September 2015 with exhibits PG1 to PG 5 (‘Gorecki 2’).

   Evidence in reply

   Declaration of Khajaque Kortian, Principal at Spruson & Ferguson, made 11 July 2016 with exhibit KK-1 (‘Kortian 4’).

3. The evidence in support for both oppositions is nearly identical. Chiefly relating to the 1978 motion picture National Lampoon’s Animal House (‘the Film’), Kortian 1 and 3 offer some detail of the Film’s production, worldwide gross takings and critical reception. The declarations also refer to plans to adapt the Film to a theatrical musical. The only difference between these two declarations is an extra sentence in Kortian 1 which states that the Opponent has been unable to find any evidence that the Logo Trade Mark has been used in relation to the Applicant’s claimed services.

4. The evidence in answer is also very similar for both oppositions. It deals with two subjects: the Applicant’s adoption and use of the Trade Marks, and why the Applicant believes the Trade Marks would not be considered by relevant consumers to be a reference to the Film. Gorecki 2 is marginally longer than Gorecki 1 because it briefly refers to and annexes ‘examples of more recent promotional material’ for the Applicant’s services.

5. Kortian 2 and 4 are identical. Both annex a selection of pages from the Applicant’s ‘Facebook’ webpage, images from the Film depicting toga parties, and print outs from a variety of websites promoting toga parties at several locations in North America, all of which make reference to the Film.

Grounds and Onus

1. The SGP for the Logo Trade Mark nominates grounds of opposition under ss 42, 60 and 62A. In its written submissions filed prior to the hearing, the Opponent clarified that in relation to s 42, it would specifically press s 42(b). The SGP for the Word Trade Mark nominates those same three grounds and adds ss 58 and 59. Despite these two extra grounds remaining available in respect of the Word Trade Mark, at the hearing the Opponent chose to press only the same three grounds in respect of both of the Trade Marks, namely ss 42(b), 60 and 62A.

2. The Opponent bears the onus of establishing a ground of opposition on the balance of probabilities.[1] The rights of the parties in respect of the Logo Trade Mark are to be determined as at 16 April 2014, and 10 December 2014 for the Word Trade Mark, being their respective filing dates.[2] I note that, in this case, the filing dates of the Trade Marks respectively coincide with their priority dates. To succeed, the Opponent need only establish one of the nominated grounds of opposition – nothing in this decision turns on the differences between the Trade Marks.

Discussion

[1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133]; Pfizer Products Inc. v Karam (2006) 219 FCR 585, 594 [26].

[2] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 595.

Section 60

1. Section 60 of the Act is reproduced below:

   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.

2. To establish this ground of opposition, the Opponent must show that, at the relevant dates, another trade mark had a reputation in Australia, and due to that reputation use of the Trade Marks would be likely to deceive or cause confusion. The Opponent must establish the reputation of the trade mark(s) relied upon as a matter of fact.[3] The reputation of the trade marks(s) can, for example, be demonstrated through direct evidence of consumer appreciation of the goods or services bearing the trade marks(s) or it can be inferred from a high volume of sales together with substantial advertising figures and other promotions of the relevant goods or services.[4] Any use relied upon to establish the requisite reputation must be use as a trade mark.[5] The reputation must be amongst a significant section of the relevant market.[6]

   [3] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193, 234.

   [4] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 127.

   [5] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551, 574-5 [121]-[131].

   [6] Re Smith Hayden & Co Ltd's Application (1946) 63 RPC 97 (Ch D).

3. The Opponent refers to the Film as having the requisite reputation of an earlier trade mark. Mr Kortian submits the Film is known by its shorter title ‘Animal House’, the words ‘National Lampoons’ being a subordinate reference to the publication or organisation from which the Film originates.

4. The Opponent faces two distinct hurdles under this ground of opposition: the nature and the extent of the reputation relating to the Film. Briefly, on the nature of the reputation, it is not a given that the title of a film will always serve as a badge of origin of a particular trader. On this point the Applicant referred me to a Federal Court decision which indicated that the use of the title (in plain words) of a particular film was held (on admittedly quite different facts to the present case) to be descriptive use, rather than use as a trade mark.[7] It has ultimately not been necessary to decide this issue in the present case because the Opponent’s evidence as to the extent of the claimed reputation is lacking in a number of respects, which I discuss below.

   [7] Christodoulou v Disney Enterprises Inc [2005] FCA 1401.

5. Kortian 1 and 3 refer to the Film as being ‘iconic’, having been ‘largely responsible for defining and launching the “gross-out” genre of films, which became one of Hollywood’s staples.’ As for direct evidence of critical reception, Kortian 1 and 3 refer to the Film having been put on a number of notoriety lists: number 36 on the American Film Institute’s ‘100 years… 100 laughs’ list of the 100 best American comedies, a mention in Empire magazine’s 2008 listing of the 500 greatest movies of all time, and the number 1 place in Bravo television network’s ‘100 funniest movies’. According to Mr Kortian, in 2001 it was also preserved in the United States Library of Congress National Film Registry. No supporting documentation has been provided for any of these claims and all relate to a reputation in the United States of America, not Australia.

6. Turning to the Opponent’s evidence of reputation in Australia, Mr Kortian declares that the Film ‘had its cinematic release in Australia soon after its premier in 1978’ and that it has ‘extensively and repeatedly been broadcast’ on Australian television. Both of these statements are unsupported. Gross takings for the Film from theatre box offices and from home movie sales have been offered, but only on a worldwide basis, leaving it unclear as to how much of this relates to sales in Australia. There is no corroborating information about television broadcasts in Australia in the evidence. Given the premier of the Film in Australia was almost 40 years before the priority dates of the Trade Marks, these bare statements are insufficient to establish the reputation necessary to invoke s 60(a).

7. The evidence in support also refers to plans to adapt the Film to a theatrical musical, ‘which is expected to have its premier in Broadway, New York soon.’ It is not possible for me to infer reputation from of this when no evidence of, for example, any media coverage in relation to these plans has been filed.

8. The Opponent has failed to establish that the title of the Film had a reputation in Australia, as a trade mark, among a significant section of the relevant market as at the priority dates of the Trade Marks. Since the Opponent has not provided sufficient evidence in relation to s 60(a), it is not necessary to explore the remaining elements of this ground of opposition. The s 60 ground of opposition has not been established.

Section 42(b)

1. Section 42(b) of the Act is reproduced below:

   42 Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   …

   (b)its use would be contrary to law.

2. To establish this ground the Opponent must show that use of the Trade Mark would be (i.e. not merely could be) contrary to law.[8]

   [8] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

3. The laws nominated by the Opponent are ss 18 and 29 of the Australian Consumer Law,[9] and the common law tort of passing off. Once again the Opponent points to the short title of the Film would form the basis for success in such actions. To satisfy me that any of these actions would succeed, however, the Opponent would once more need to demonstrate a significant reputation in the Film’s title as at the relevant dates. Just as I have already found under the s 60 ground above, the Opponent has not led sufficient evidence on this point. At any rate, even if such a reputation had been shown, the Opponent’s evidence is insufficient to show that use of either of the Trade Marks would be (as opposed to merely could be) contrary to law. Further, there is no evidence that the Applicant has used or intends to use the Trade Marks in a manner contrary to law.[10] The s 42(b) ground of opposition has not been established.

   [9] Competition and Consumer Act 2010 (Cth) sch 2.

   [10] Virgin Enterprises Ltd v Virgin International Pty Ltd (2006) 68 IPR 304.

Section 62A

1. Section 62A of the Act is reproduced below:

   62A Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. The test applied under this ground of opposition combines subjective and objective elements. That is, taking into account the Applicant’s knowledge at the relevant date, in the circumstances, would the decision to make this application ‘be regarded as in bad faith by persons adopting proper standards’? [11]

   [11] Fry Consulting Pty Ltd v Sports Warehouse (No 2) (2012) 201 FCR 565, 598 [167].

3. The Applicant’s evidence outlines the circumstances of his adoption of the Trade Marks in relation to a series of dance parties beginning in 2012. The first of those parties adopted a Noah’s Ark theme, which was a dress-up party that encouraged patrons to dress as animals. Mr Gorecki declares that it was due to this theme ‘along with the house party atmosphere providing customers the chance to act youthful and fun’ which led to his adoption of the Trade Marks.

4. The Opponent’s evidence and submissions refer to the content of the Film concerning, among other things, people having parties in university fraternity houses. Due to this theme the Opponent contends that the Applicant must have adopted the Trade Marks in order to suggest a connection with the Film. Mr Kortian also calls into question whether the original Noah’s Ark event took place, given no images of the event taking place are in the Applicant’s evidence. To support this assertion, the Opponent has included in its evidence in reply a selection of pages from the Applicant’s ‘Facebook’ webpage. These pages unhelpfully show only posts from 2011 and 2015, leaving collapsed all posts from 2012-2014, and the question is thus left open as to whether there might be posts of the Noah’s Ark event under the heading ‘2012’.

5. To establish this ground of opposition, cogent evidence must be put forward as to why the filing these applications should be considered to be in bad faith. I am not satisfied that the Opponent’s evidence discharges its onus in this regard. At any rate, the Applicant’s account of why he chose to adopt the Trade Marks also appears reasonable on its face and has not been refuted by the Opponent. The s 62A ground of opposition has not been established.

Decision and costs

1. Section 55 of the Act relevantly provides:

   55 Decision

   (1)    Unless subsection (3) applies to the proceedings, 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.

2. The Opponent has failed to make out a ground of opposition, so I have decided to register the Trade Marks. Both trade mark applications may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that the registrations shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of these applications should be in accordance with the Court’s orders or directions.

3. Both parties have requested an award of costs. The ordinary rule is that costs follow the event, and I see no reason to deviate from this. In relation to the Logo Trade Mark I award costs against the Opponent, and in relation to the Word Trade Mark I award reduced costs against the Opponent at 20% of the official scale[12] against the applicable amounts set out in Schedule 8 of the Trade Marks Regulations 1995.

   [12] Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd [2001] ATMO 78.

Adrian Richards

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs Group

27 February 2017