v Carlton and United Breweries Ltd
[2001] FCA 902
•13 JULY 2001
FEDERAL COURT OF AUSTRALIA
The South Australian Brewing Company Pty Ltd
v Carlton & United Breweries Ltd[2001] FCA 902
TRADE PRACTICES - misleading and deceptive conduct - representation of sponsorship of two football clubs by brewer in promotional material - promotional material contained photograph of two club captains in “head to head” pose in playing apparel and with club logos - brewer had contractual rights from conductor of football competition as owner of intellectual property in clubs’ playing apparel and in club logos to use playing apparel and logos and had contractual rights from two club captains to use their images - brewer had no sponsorship contracts direct with clubs - whether representation in circumstances misleading and deceptive or likely to mislead and deceive - relevance of contractual rights.
TRADE PRACTICES - misleading and deceptive conduct - brewer in promotion in relation to football matches used the word “Showdown” - word “Showdown” registered by another entity as a word mark in relation to class 41 including sporting events and entertainment activities associated with sporting events - other entity conducted promotional activities associated with same football matches using its word mark - sporting events also known generically as Showdown matches - whether use of word “Showdown” misleading or deceptive or likely to mislead or deceive - whether use of word “Showdown” passed off brewer’s goods or services as those of another.
TRADE MARKS - registration of word mark “Showdown” in class 41 as use in relation to sporting events and entertainment activities associated with sporting events - sporting events not conducted by registered owner of mark - registered owner of word mark conducted promotional activities using word mark associated with those sporting events - application to cancel registration of word mark - whether word mark capable of distinguishing services of registered owner - whether word mark likely to deceive or cause confusion - whether registered owner intended to use word mark.
TRADE MARKS - word mark “Showdown” registered in class 41 in respect of sporting events and entertainment activities associated with sporting events - registered owner used word mark in promotional activities associated with football matches between two clubs - football matches not presented by registered owner - football matches known generically as “Showdown” matches - competitor of registered owner conducted competition for tickets to “Showdown” matches - whether use as a trade mark.
Trade Practices Act 1974 (Cth) ss 52, 53(c), 53(d)
Trade Marks Act 1995 (Cth) ss 24, 41, 43, 57, 59, 88
Designs Act 1906 (Cth)
Evidence Act 1995 (Cth) s 135Australian Woollen Mills v F S Walton & Co Ltd (1937) 58 CLR 641 referred to
Apand Pty Ltd v Kettle Chip Co Pty Ltd (1994) 52 FCR 474 applied
Mark Foys Pty Ltd v TVSN (Pacific) Ltd (2000) 49 IPR 303 referred to
Telmak Teleproducts (Australia) Pty Ltd v Coles Myer Ltd (1989) 15 IPR 362 referred to
Campomar Sociedad, Limitada and Anor v Nike International Ltd (2000) 169 ALR 677 applied
Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 considered
Britt Allcroft (Thomas) LLC v Miller (t/as The Thomas Shop) (2000) 49 IPR 7; [2000] FCA 1724 considered
Queensland Wire Industries Pty Ltd v Broken Hill Proprietary Co Ltd (1988-1989) 167 CLR 177 appliedNew Zealand Olympic and Commonwealth Games Association Inc v Telecom New Zealand Ltd (1996) 35 IPR 55 applied
Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 applied
Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 applied
Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1 applied
Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 considered
Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 applied
Radio Corp Pty Ltd v Disney (1937) 57 CLR 448 referred to
Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 considered
Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192 applied
Eveready Australia Pty Ltd v Gillette Australia Pty Ltd (1999) 47 IPR 327 applied
Arnotts Ltd v Trade Practices Commission (1990) 24 FCR 313 considered
Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 considered
S & I Publishing Pty Ltd v Australian Surf Lifesaver Pty Ltd (1998) 88 FCR 354 applied
Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 applied
Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 applied
Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731 considered
Burg Design Pty Ltd v Wolki (1999) 45 IPR 201 referred to
IOOF Australia Trustees (NSW) LTD v Tantipech (1998) 156 ALR 470 applied
Henjo Investments Pty Ltd v Collins Marrickville Pty Ltd (1987) 79 ALR 83 appliedTHE SOUTH AUSTRALIAN BREWING COMPANY PTY LIMITED
v CARLTON & UNITED BREWERIES LIMITED
S 41 OF 2001MANSFIELD J
ADELAIDE
13 JULY 2001
IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY
S 41 OF 2001
BETWEEN:
AND:
THE SOUTH AUSTRALIAN BREWING COMPANY PTY LIMITED (ACN 007 065 267)
APPLICANTCARLTON & UNITED BREWERIES LIMITED
(ACN 004 056 106)
RESPONDENTAND:
AND:
CARLTON & UNITED BREWERIES LIMITED
(ACN 004 056 106)
CROSS CLAIMANTTHE SOUTH AUSTRALIAN BREWING COMPANY PTY LIMITED (ACN 007 065 267)
CROSS RESPONDENTJUDGE:
MANSFIELD J
DATE OF ORDER:
13 JULY 2001
WHERE MADE:
ADELAIDE
THE COURT ORDERS THAT:
1.Carlton & United Breweries Limited be restrained, and an injunction is hereby granted restraining it, by itself its employees servants agents or otherwise, in trade or commerce in connection with the supply or the promotion of the sale of beer, from
(a)procuring or authorising the broadcasting of a television commercial, a video copy of which is Exhibit A1 at the hearing of this application.
(b)publishing, authorising the publication of or otherwise using the photograph depicting the photograph of Mark Ricciuto, the captain of the Adelaide Football Club Pty Ltd, and of Matthew Primus, the captain of the Port Adelaide Football Club Ltd, each wearing club playing apparel and in a “head to head” pose, and with representations of the logos of the Adelaide Football Club Pty Ltd and of the Port Adelaide Football Club Ltd.
(c)authorising in relation to the competition conducted by it using material referred to in (b) hereof the playing to members of the public the messages recorded by the said Mark Ricciuto and by the said Matthew Primus the recorded telephone message which is heard when members of the public dial 1300 132 186, the transcript of which is Annexure “O” to the affidavit of Katrina Angela Rathie filed herein on 7 June 2001.
2.The cross claim be dismissed.
Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY
S 41 OF 2001
BETWEEN:
AND:
THE SOUTH AUSTRALIAN BREWING COMPANY PTY LIMITED (ACN 007 065 267)
APPLICANTCARLTON & UNITED BREWERIES LIMITED
(ACN 004 056 106)
RESPONDENTAND:
AND:
CARLTON & UNITED BREWERIES LIMITED
(ACN 004 056 106)
CROSS CLAIMANTTHE SOUTH AUSTRALIAN BREWING COMPANY PTY LIMITED (ACN 007 065 267)
CROSS RESPONDENTJUDGE:
MANSFIELD J
DATE:
13 JULY 2001
PLACE:
ADELAIDE
REASONS FOR JUDGMENT
BACKGROUND
Both the applicant The South Australian Brewing Company Pty Ltd (“SAB”) and the respondent Carlton & United Breweries Ltd (“CUB”) are brewers, wholesalers and retailers of beer. The applicant is a subsidiary of Lion Nathan Australia Ltd (“LNA”), and its products include West End beer. One of the beer products of the respondent is Victoria Bitter.
For about thirty years SAB claims to have been the sole brewing sponsor of The South Australian National Football League (“SANFL”). When the Adelaide Football Club Pty Ltd (“AFC”) was established to participate in the Australian Football League “(AFL”) about ten years ago, SAB claims to have become “the sole brewing sponsor” of the AFC. Then, when Port Adelaide Football Club Ltd (“PAFC”) was admitted to the AFL in 1996, SAB claims to have become the “sole brewing sponsor” of PAFC.
It is accepted by the parties that certain terms of the various agreements between SAB and the SANFL, AFC and PAFC are commercially confidential, as are certain terms of the agreements between CUB and the AFL, and between the AFL and the SANFL and AFC and PAFC. In referring to the various agreements about which evidence has been given, I have sought to respect that confidentiality. That has led to the references to certain agreements in these reasons being somewhat less detailed than might otherwise have been the case. It has not compelled me to avoid referring to what, in my view, are the more significant terms of such agreements to explain my reasons for the conclusions I have reached.
The AFL is the promoter and organiser of the annual Australian Rules football competition (“the competition”). The competition consists of home and away matches between the participant clubs of the AFL throughout Australia, and a final series culminating in a grand final. Since PAFC commenced participating in the AFL, the two Adelaide-based clubs have been scheduled to play two football matches against each other in the course of the home and away series at Football Park in Adelaide, of which one is a home game for the AFC and the other a home game for the PAFC.
It is now part of the vernacular, at least within South Australia, that the two matches between AFC and PAFC at Football Park each season are “Showdown” matches. The SAB claims to have conceived the name “Showdown” for those football matches. The Showdown matches have taken place on 20 April and 16 August 1997, 19 April and 9 August 1998, 2 May and 22 August 1999, 23 April and 6 August 2000, and 15 April 2001. They have been called successively the first to the ninth Showdowns or Showdown matches or Showdown 1 to 9. The match known as Showdown 10 is scheduled to take place on 5 August 2001.
This proceeding concerns promotional activities undertaken by CUB in relation to the Showdown 7 and Showdown 9 matches, and partly undertaken and planned in relation to the Showdown 10 match.
SAB, through its Regional Marketing Director for South Australia, Stuart Yorston (“Mr Yorston”), claims that the Showdown title for those football matches was developed and then promoted as a vehicle for the promotion of West End beer. The name “Showdown” was to be used in relation to the bi-annual matches referred to, and the promotional and entertainment events associated with those matches. The concept developed included the awarding of a trophy to the winner of each match, and the use of the name “The West End Showdown”, in relation to each match and its associated promotional and entertainment activities. Both the AFC and the PAFC, in December 1996, had been consulted about and supported the proposal. The concept was, it appears, partly developed by 15 October 1996 when a detailed promotion brief had been prepared by the then Brand Manager for West End beer for the SAB. The concept involved taking advantage of the opportunity presented by the first football match between the AFC and the PAFC in the AFL competition. The implementation of the concept was to “leverage” the substantial financial investment of SAB in the AFC and in the PAFC as a sponsor of each club including developing the understanding of beer consumers about the relationship of SAB and its West End beer with those two football clubs. That promotion brief was then submitted to certain advertising agencies to prepare advertising and related campaigns to fulfil the purpose of the brief. It was in response to that brief that the idea emerged of calling that first match the Showdown, as a theme or name which would be “synonymous with the match; SA football supporters and the West End brand.”
In fulfilment of that purpose, SAB became the registered owner of trademark 750487 from 8 December 1997 in the word mark “SHOWDOWN” in respect of “sports events, live entertainment services being entertainment services provided in conjunction with sporting events being services in class 41” (“the word mark”). It is also the registered owner of trade mark 750485 from 8 December 1997 or the device mark which presents the stylised word “SHOWDOWN” and the words “West End” in the West End beer logo with representations of two footballers, one each from the AFC and the PAFC, reaching overhead apparently to mark a football which is at the apex of a roughly triangular presentation (“the device mark”). The device mark has no direct significance to these proceedings. Since 1997 SAB has promoted each of those football matches as “West End Showdown” matches. It has conducted a “launch” and other media publicity before each of those matches, and has provided a trophy for the winning team known as the “West End Showdown Trophy” and a cash or kind prize for that team, as well as more recently providing an award for the best player in each match known as the “West End Medal”. In conjunction with Showdown matches, it has promoted the sale of cans and five litre barrels of West End beer packaged with the device mark applied.
THE CONDUCT COMPLAINED OF
The nature of the conduct of CUB which is complained of is not really in issue.
In March and April 2000, in relation to the Showdown 7 match, CUB conducted a competition in association with a licensed liquor retailer Saturno’s Admin Pty Limited trading as Booze Brothers (“Booze Brothers) which operates a number of hotels and retail liquor outlets in Adelaide. That competition involved the promotion of CUB’s product by offering the chance to attend the Showdown 7 match “in a VB box with 7 mates” for those who purchased a carton of Victoria Bitter beer from one of the twenty-one or so participating outlets of Booze Brothers. An eligible participant had to complete an entry form for the “Experience Showdown 7” competition, and would then be put in the draw to select the winner. I shall call that promotion “the Showdown 7 promotion”.
The Showdown 7 promotion included point of sale promotional corflutes in two forms. One was on a green background with an apparently moving football as part of the background. It had at the top the Booze Brothers name and logo. It then read: “EXPERIENCE SHOWDOWN 7 IN A VB BOX WITH 7 MATES” in its upper half, and towards the bottom it had the logos of the AFL, AFC and PAFC and below them the further text: “Purchase a carton of VB & you and 7 mates could be there to watch the Adelaide Crows and Port Power do battle in style at Football Park on Easter Sunday, April 23rd”. At the bottom were a Victoria Bitter logo or label in one corner and a bottle of Victoria Bitter beer in the other, with the words “For a hard earned thirst” between them. The other corflute had similar wording and logos, but was presented on a background of action pictures of players from each club in club playing apparel. The Showdown 7 promotion also included large Booze Brothers advertisements in The Advertiser on 16 and 23 March and 6 April 2000 which advertised a range of liquor products for sale and of which the top section included reference to the Showdown 7 promotion respectively as follows :
The advertisement features a bottle of Victoria Bitter, a football and the heading “EXPERIENCE SHOWDOWN 7”; it also refers to “2nd Chance Draw - Crows or Power Guernsey”.
The advertisement features a bottle of Victoria Bitter beer, a football and the headline “You could WIN a fully catered box for you and 7 mates at SHOWDOWN 7!”; it also refers to a “2nd Chance Draw - Crows or Power Guernsey”.
The advertisement features a thirty can party pack of Victoria Bitter beer, a football and the headlines “Victoria Bitter 30 Pack Cans” and “You could WIN a fully catered box for you and 7 mates at Showdown 7”; it also refers to a “2nd Chance Draw - Crows or Power Guernsey”.
The entry form for the Showdown 7 promotion competition comprised a front page like the corflute with the football background, noting that entries were to close on 16 April 2000, and a back page with the conditions of entry and space for the participant’s details. It identified CUB as the promoter of that competition. The prize winner of that competition was drawn on 18 April 2000 and was advertised in The Advertiser. The winner and guests attended the Showdown 7 match in the corporate box then occupied by CUB at Football Park, and were able to consume CUB products including Victoria Bitter beer in that corporate box.
A similar competition was conducted in conjunction with Booze Brothers in March and April 2001 in relation to the Showdown 9 match. I shall call it “the Showdown 9 promotion”. In this instance, the offer was to “experience Showdown 9 in a VB Box with 3 mates”, with 2 “packages” to be won. The corflutes at the Booze Brothers outlets were on a green background with a representation of a moving football. Below the Booze Brothers name and logo were the words “EXPERIENCE SHOWDOWN 9 IN A VB BOX WITH 3 MATES” and “2 packages to be Won”. Again the AFC and PAFC logos appeared in the lower part of the corflute (but not the AFL logo). Below those logos were the words “Easter Sunday, April 15th. Purchase a carton of VB to enter! Entries close 8/4/01”. Again the lower corners had the Victoria Bitter logo in one and a representation of a bottle of Victoria Bitter beer in the other, separated by the words “For a hard earned thirst”. Advertisements for Booze Brothers in support of the Showdown 9 promotion appeared in The Advertiser on 29 March and 5 April 2001, again with a range of products for sale, and with the upper part of the advertisement including the headline “EXPERIENCE SHOWDOWN 9 IN A VB BOX WITH 3 MATES”, a representation of a moving football, the AFC and PAFC logos, the Victoria Bitter label or logo, the expression “for a hard earned thirst” and the labels of Victoria Bitter and other beer products of CUB. There was also a large colour promotional brochure of Booze Brothers in presentation and terms relevantly to the same effect as the advertisements. Entrants in the competition were required to purchase a carton of Victoria Bitter beer to be eligible to enter.
The entry form for the Showdown 9 promotion competition, also under the Booze Brothers logo, featured the headline “EXPERIENCE SHOWDOWN 9 IN A VB BOX WITH 3 MATES” in large font with the AFC and PAFC logos, the Victoria Bitter label or logo and the expression “for a hard earned thirst”. On this occasion, the promoter was said to be Booze Brothers. The two prize winners were drawn on 10 April 2001 and were advertised in The Advertiser on 12 April 2001. They and their guests attended the Showdown 9 match at a corporate box occupied by CUB at Football Park, and were able to consume CUB’s beer products including Victoria Bitter beer in that corporate box.
The Showdown 7 promotion and the Showdown 9 promotion, conducted with Booze Brothers, were each engaged in by CUB. Paul Kennedy, CUB’s Vice-President - Marketing, acknowledged that in his evidence, and it is reflected in both CUB’s internal documents and in the presentation of the promotional and advertising material associated with those two promotions.
The third promotion concerns the Showdown 10 match, to take place on 5 August 2001. The nature and extent of the promotion is different from that of the Showdown 7 promotion and the Showdown 9 promotion. It was launched on 21 May 2001. It involves the promotion of Victoria Bitter beer products generally through licensed retail outlets through South Australia. Before an interlocutory injunction was granted restraining that promotion, it had been presented to the public through specially packaged thirty can cartons of Victoria Bitter beer. The carton features a photograph of the two club captains in playing apparel in “head to head” pose, the AFC and PAFC logos, the Victoria Bitter label or logo, and the expression “WIN THE VB SUPERBOX AT THE POWER VS CROWS GAME SUNDAY AUGUST 5, 2001”.
Similar promotional material was planned for twenty-four can and twenty-four bottle cartons of Victoria Bitter beer.
In the case of each carton, the bottom of the cartons contained further text promoting the competition, the “head to head” photograph of the two club captains, and details of how to enter the competition. Entry was by telephone to a designated number with the message “Welcome to the VB Superbox Power vs Crows Competition” and referring to “the steps that could win [the consumer] the VB Superbox at the Power vs Crows game”. It featured the voices of the two club captains Matthew Primus (“Mr Primus”) of the PAFC and Mark Ricciuto (“Mr Ricciuto”) of the AFC, until 12 June 2001 when their voices were removed in accordance with the interlocutory injunction.
The third promotion also includes point of sale corflutes and price boards (displayed at the election of the particular retailer) which feature the photographs of the two club captains in “head to head” pose, the AFC and PAFC logos, and Victoria Bitter label or logo, the expression “for a hard earned thirst” and the headline “WIN THE VB SUPERBOX AT THE POWER VS CROWS GAME SUNDAY AUGUST 5, 2001”. That point of sale material was further supported by mobile or dangling point of sale material with the same text, and featuring either the same photograph of the two captains in “head to head” pose with the logos of the two clubs, or the Victoria Bitter label or logo.
The competition was also promoted by a half page advertisement in The Advertiser on 8 June 2001 and on the back page of the AFL Football Record for 1 - 3 June 2001 in the same style as the corflute and price board promotion. Further, such advertising was intended (and in fact appeared on the back page of the AFL Football Record for 15 - 24 June 2001, despite the efforts of CUB to comply with the interlocutory injunctive order). There are also two promotional posters featuring separately a signed photograph of the captains of each of the AFC and of the PAFC, in club playing apparel, holding a football and with the logo of that player’s club and the Victoria Bitter label or logo. Those individual captain’s photographs make no reference to any competition.
The proposed competition was also supported by trade presentation material, and by proposed television commercials to be shown throughout South Australia. The television commercials have not yet been shown. They feature the captains of the two football clubs in club playing apparel facing each other in front of the goal posts on a football ground. Between them is the Victoria Bitter thirty pack carton for the competition. Victoria Bitter signs appear around the perimeter fence of the football ground in the background. There is then a close-up of the captain of the PAFC who says “The Power vs the Crows is the biggest game in South Australian footy”, and then of the captain of the AFC who says “And this is every footy fan’s dream”. The advertisement then features a close-up of the Victoria Bitter thirty pack featuring the photograph of the two captains in “head to head” pose with the commentary “Buy a carton of VB and you and three mates could see the game from the VB Superbox at Football Park. See carton for details”, and it concludes with a close-up of the Victoria Bitter beer label or logo, followed by short extracts of footage of other AFC and PAFC players during football matches.
I shall call that promotion “the Showdown 10 promotion”.
THE ISSUES
SAB has been, and is currently, a sponsor of the SANFL for many years. Upon the establishment of the AFC it became a sponsor of the AFC. Its current sponsorship agreement with the AFC is dated 6 November 2000. Upon the establishment of the PAFC as a club licensed to play in the AFL competition, it also became a sponsor of the PAFC under a sponsorship agreement dated 29 August 1996. That sponsorship agreement is to expire on 31 October 2001.
SAB alleges that the conduct of CUB in relation to the Showdown 7 promotion and in relation to the Showdown 9 promotion has :
(1) infringed the word mark; and
(2)contravened s 52 of the Trade Practices Act 1974 (Cth) (“the TP Act”) by falsely representing to consumers that:
(i)there is an association between the Showdown matches and CUB that CUB is “a/the” brewing company that sponsors :
(a)the AFC and the PAFC; and/or
(b)the SANFL; and/or
(c)the Showdown matches.
(ii)the AFC and the PAFC have an association with CUB;
(iii)Victoria Bitter beer and CUB’s other beer products have a commercial association with the Showdown matches and/or the AFC and/or the PAFC;
(iv)Victoria Bitter beer and CUB’s other beer products are available for sale and consumption by the general public at Football Park during the Showdown matches; and
(v)since CUB became “the Premier Partner” of the AFL pursuant to a certain Memorandum of Understanding between the AFL and CUB (“the MOU”) on 19 February 2001, it has become a/the sponsor in respect of beer products for the Showdown matches; and/or the SANFL; and/or the AFC; and/or the PAFC.
(3)passed off its goods and services as the goods and services of SAB.
In relation to the Showdown 10 promotion, SAB alleges that CUB has :
(4)contravened s 52 and s 53(c) and (d) of the TP Act by falsely representing to consumers that :
(a)CUB and its Victoria Bitter beer is a sponsor of the AFC, and/or the PAFC; alternatively
(b)the AFC or the PAFC have consented to or authorised that promotion, including the various presentations of the two club captains referred to above; and
(c)there is a corporate box branded the “VB Superbox” at Football Park;
(5)passed off its goods and services as the goods and services of SAB.
CUB claims that the word mark was wrongly entered on the Trade Mark Register because it is not capable of distinguishing SAB’s services in respect of which the word mark was registered from the services of other persons: see s 41(2) of the Trade Marks Act 1995 (Cth) (“the TM Act”), because the word mark has an ordinary meaning so that its use or connection with the services for which it is registered would be likely to deceive and cause confusion: see s 43 of the TM Act, and thirdly because SAB did not intend to use the word mark in relation to the services specified in the application. It seeks an order under s 88 of the TM Act cancelling the registration of the word mark.
In addition, CUB claims that the word “Showdown” has a generic meaning to describe the bi-annual football matches between the AFC and the PAFC conducted by the AFL, and that its use of that word is in that generic sense. It denies using the word as a trade mark.
CUB thus disputes that, in relation to the Showdown 7 promotion and the Showdown 9 promotion, it has infringed the word mark. In response to the alleged contraventions of s 52 of the TP Act in relation to those promotions, it contends in general terms that it has not made the representations, and alternatively that to the extent that it has made any such representations, they are not misleading or deceptive and are not likely to mislead or deceive. It also disputes that those promotions involve any passing off of its products or services as the services or products of SAB.
In relation to the Showdown 10 promotion, CUB in general terms acknowledges that it has made the representations alleged (except concerning the “VB Superbox”). By reference to its contractual rights with the AFL, and with the two club captains, it disputes that those representations are misleading or deceptive or are likely to mislead or deceive. It contends in relation to the “VB Superbox” that the expression “superbox” is commonly and not misleadingly used in relation to the corporate boxes which the SANFL calls the Park Pavilions and that the name “VB Superbox” rather than “CUB Superbox” does not mislead or deceive and is not likely to mislead or deceive any relevant class of persons.
CUB also contends that SAB itself has misused the word “Showdown”, in effect, by seeking to appropriate to itself ownership of the bi-annual football matches between the AFC and the PAFC at Football Park when, in reality, they are “owned” or prescribed by and under the control of the AFL. It also contends that SAB has made use of the AFC and PAFC logos, and photographs of the club captains, in certain of its promotional material when it was not entitled to do so. In effect, it asserts that SAB has deliberately and in a calculated manner sought to promote itself as having the right to stage the Showdown matches and to use the intellectual property of the AFL concerning the AFC and the PAFC when it does not have such rights, and in effect to undermine the value of the rights which the AFL has granted to CUB. Those matters are said to be factors which should lead to the Court, in its discretion, to decline interlocutory relief even if SAB otherwise established the legal and factual foundation for some form of injunctive relief.
THE INTENTIONS OF THE PARTIES
The allegation about SAB’s intentions referred to in the preceding paragraph is “complemented” by the allegation by SAB that CUB, by its conduct in relation to the Showdown 9 promotion and the Showdown 10 promotion, has engaged in a covert operation intended to deprive SAB of the value of its sponsorships with the AFC and the PAFC and to obtain for itself rights of association with those two clubs which it has not secured directly from those two clubs. SAB contends that such an intention on the part of CUB may assist in establishing the requisite misrepresentation to support its case both in relation to the s 52 claim and passing off: see Australian Woollen Mills v F S Walton & Co Ltd (1937) 58 CLR 641 at 657; Apand Pty Ltd v Kettle Chip Co Pty Ltd (1994) 52 FCR 474 (“Apand”); Mark Foys Pty Ltd v TVSN (Pacific) Ltd (2000) 49 IPR 303; Telmak Teleproducts (Australia) Pty Ltd v Coles Myer Ltd (1989) 15 IPR 362; Campomar Sociedad, Limitada and Anor v Nike International Ltd (2000) 169 ALR 677 at 686 (“Campomar”). SAB also contends that such a finding is relevant to the questions whether CUB has used SAB’s word mark as a trade mark, and whether CUB can make out its pleaded defence under s 122(1)(b)(I) and (ii) of the TP Act that CUB used the word mark “in good faith” to indicate the kind, quality, intended purpose etc of the services or the time of rendering of services. SAB submits that CUB’s knowledge of SAB’s word mark registration or other claimed legal rights, and an intention to circumvent such rights, may demonstrate the absence of good faith, as may an intention to adopt or erode the goodwill of SAB. It relies upon Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 (“Johnson & Johnson”); Britt Allcroft (Thomas) LLC v Miller (t/as The Thomas Shop) (2000) 49 IPR 7; affirmed on appeal [2000] FCA 1724 for that proposition.
I accept that proof of an intention to mislead or deceive may enable the Court more readily to infer that certain conduct, judged objectively, is misleading or deceptive or is likely to mislead or deceive: Apand at 356; Campomar at 686. However, in my view, by reason of the rights which CUB acquired through its Memorandum of Understanding with the AFL, entered into on 19 February 2001 (“the MOU”), the intentions of CUB are not such as to enlighten the questions whether it has contravened s 52 of the TP Act or has passed off its goods or services as those of SAB. I accept that CUB, at material times, has been aware of SAB’s word mark, and of its promotion of the “West End Showdown” concept in relation to the Showdown matches, and of its sponsorship of both the AFC and the PAFC. I have little doubt that CUB regarded the opportunities which those matters provided to SAB to promote its West End beer products in South Australia as significant. When CUB signed the MOU with the AFL, and so became “the Premier Partner” of the AFL, it is also clear that it perceived that the rights which it thereby secured from the AFL provided it with an opportunity to promote its products in South Australia in ways in which it had previously been unable to do. It promptly set about its planning for the Showdown 10 promotion, including negotiation to secure sponsorship contracts with Mr Ricciuto and Mr Primus (and other players). Although dated 27 March 2001, Mr Ricciuto’s contract was stated to take effect from 15 March 2001 and Mr Primus’ contract, dated 11 April 2001, was stated to take effect from 1 March 2001. An internal document of CUB of 28 February 2001 in relation to that planned promotion recorded :
“LNA owns rights to the West End Showdown through s’ship of both clubs. CUB’s major sponsorship of the AFL allows VB to gain ownership of football in SA and provide consumers with a (sic) offer better than anything LNA have offered in the past.”
That document was signed off at senior management levels including CUB’s managing director.
I am satisfied that CUB did take steps to endeavour to increase its market share of beer sales in South Australia, particularly those sales effected through the relationship or “traditional fit” of beer and football (about which substantial evidence was given), and thereby to reduce the market share of SAB for its beer products which SAB had, at least in part, built up through its sponsorship of the SANFL, the AFC and the PAFC and its promotion of the Showdown matches. As a result of investigations carried out, at least by mid-March 2001, CUB was aware in terms of the registration by SAB of the word mark and of the device mark. As early as the time of its planning for the Showdown 7 promotion, officers of CUB expressed the objective of linking Victoria Bitter beer to the AFC and the PAFC clubs. However, in my view, the evidence does no more than identify that CUB, particularly in relation to the Showdown 10 promotion, was doing no more than seeking to take advantage of the rights which it had secured as the Premier Partner of the AFL. The way in which it has sought to do so, is of course, the subject of these proceedings. But I do not consider that the fact that it has sought to exercise its contractual rights really informs the question whether, in doing so, it has contravened provisions of the TP Act or has passed off its goods or services as the goods or services of SAB. This is a matter where, as appears from an analysis of the contractual relationships and contractual rights referred to later in these reasons, CUB is seeking to exercise its contractual rights to the fullest, and as a consequence (if it is successful in being able to do so) at the expense of SAB.
In Queensland Wire Industries Pty Ltd v Broken Hill Proprietary Co Ltd (1988-1989) 167 CLR 177 at 191 (“Queensland Wire”), Mason CJ and Wilson J said :
“Competition by its very nature is deliberate and ruthless. Competitors jockey for sales, the more effective competitors injuring the less effective by taking sales away. Competitors almost always try to ‘injure’ each other in this way. This competition has never been a tort ...”
In my view, the intention of CUB to take advantage of its contractual entitlements with the AFL, and of its sponsorship contracts with Mr Ricciuto and Mr Primus, to penetrate the market for the sale of packaged beer in South Australia by associating its product with the competition, and in particular with the Showdown matches and with the AFC and the PAFC, reflects an attempt to exercise of those rights. If it were successful, obviously to an extent that would diminish or potentially diminish the potential market of SAB and diminish the extent of the association which it claims to have developed with football in South Australia through its sponsorship of the SANFL and of the AFC and of the PAFC. CUB claims to be entitled to do precisely that which it has done, and in the manner in which it has done it. This is not a case of one trader intending by surreptitious means to usurp the market share of another trader. It is a case where there is, as the respective positions of the parties indicate, a clash between what one trader claims it is entitled to do under contract where another trader in the same market claims that that conduct infringes s 52 of the TP Act and amounts to passing off. It is the produce of the sort of competition to which Mason CJ and Wilson J referred in Queensland Wire.
In New Zealand Olympic and Commonwealth Games Association Inc v Telecom New Zealand Ltd (1996) 35 IPR 55, McGechan J declined an interim injunction (which would effectively have resolved the proceedings as timing was critical). His Honour found (at 62) the defendant’s advertising was on the “borderline” in relation to suggesting an association with or sponsorship of the plaintiff by its “adventurous” (at 61) advertising, looking at the matter objectively; he did not explore the intentions of the defendant in reaching that conclusion.
In those particular circumstances, I do not consider that CUB’s intention tends to indicate that its conduct contravenes any provision of the TP Act or passes off its products and services as SAB’s products and services so as to assist in determining whether those contraventions or that cause of action have been established.
I have also formed the view that the matters to which CUB refers critically of SAB are not matters which indicate conduct on the part of SAB which would weigh materially in the scales, adversely to SAB in determining whether or not to grant injunctive relief. I do not find it necessary to determine whether or not SAB has wrongfully used player images or player names without authority, or has used the AFC or the PAFC logos without authority, in circumstances which attract reprobation on the part of the Court. SAB was not, by the pleadings, put on notice of those matters. Its principal witness was Mr Yorston. He gave his evidence in a straightforward and uncomplicated way, and I have no hesitation in accepting him as a truthful witness. In fact, I did not find that any of the witnesses who gave evidence did other than attempt to give honest and reliable evidence. To the extent to which, if at all, SAB in its promotional and advertising campaigns has transgressed beyond that which it was strictly entitled to do, I accept that that was not done consciously either in relation to any player photograph or image in relation to the use of the AFC or PAFC club logos. I do not think, in that circumstance, it is necessary to determine whether those transgressions occurred as alleged. Indeed, without SAB having been put on notice by the pleadings as to those matters, it is probably unfair to SAB to make any such determination. As I have said, any such transgressions, even if established, were not in my view deliberate and intentional. In that circumstance, I should not place any real weight upon any such transgressions, if they occurred, adversely to SAB in any discretionary judgment as to whether to grant injunctive relief, if otherwise SAB establishes an entitlement to injunctive relief.
Nor do I consider that SAB’s steps to identify the bi-annual matches between the AFC and the PAFC at Football Park conducted by the AFL as “Showdown” matches and to register the word mark and the device mark, and to promote its products by reference to those events, involves any deliberately wrongful attempt to take advantage of the AFL matches or to wrongfully generate a perception that it has rights which it does not have, or that it has rights which in fact reside with the AFL or with CUB. Again, based upon Mr Yorston’s evidence, I accept that the process by which the “Showdown” concept came to be developed was a normal marketing process by which SAB was seeking to be an active participant and competitor in the market for the sale of packaged beer and other beer products in conjunction with football in South Australia. I do not consider that the matters put forward by CUB as critical of SAB are matters which, even if established, would weigh adversely to SAB in the discretionary scales.
THE SHOWDOWN 7 PROMOTION
(A) THE VALIDITY OF THE WORD MARK
CUB’s cross-claim that the registration of the word mark should be cancelled is made under s 88 of the TM Act. Section 88(2) specifies the grounds available for that application, relevantly under s 88(2)(a) any grounds on which the registration of the word mark could have been opposed under Div 2 of Pt 5 of the TM Act. Within that Division of the TM Act, s 57 authorises opposition to the registration of a trade mark on any of the grounds on which an application for registration may be rejected under Div 2 of Pt 4, with one exception not relevant for present purposes, and s 59(a) authorises opposition to the registration of a trade mark on the ground that :
“... the applicant does not intend to use ... the trade mark in Australia ... in relation to the goods and/or services specified in the application.”
Within Div 2 of Pt 4 of the TM Act, s 41(2) obliges the rejection of an application to register a trade mark if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered from the goods or services of other persons. And s 43 obliges the rejection of an application for a trade mark in respect of particular goods or services if, because of some connotation that the trade mark has, the use of the trade mark would be likely to deceive or cause confusion. They are the three grounds specified in the cross-claim for the order sought that the registration be cancelled.
It is not claimed in the pleadings that any circumstances have occurred subsequent to the registration of the word mark no longer distinguish the word mark so that its use now is likely to deceive or to cause confusion: cp s 88(2)(c). Nor has it been pleaded that, since the registration of the word mark, its use has become generally accepted as a description for a particular service so as to remove from SAB any entitlement to any exclusive rights to use the word mark in relation to that service: cp s 24(1) and (2). Although counsel for CUB referred to s 24 of the TM Act in the course of final submissions, it was not put forward as itself providing a defence to the claim of SAB for infringement of the word mark, and I do not consider it is necessary to consider s 24 further. Had it been put forward on that basis, it would have been necessary to decide whether to allow amendment to the pleadings, and if so upon what terms, to ensure a fair hearing for SAB.
The word mark is registered in respect of class 41 services described in the registration as “Sports events, live entertainment services being entertainment services provided in conjunction with sporting events.”
In my view, it is clear that the presentation of the bi-annual football matches between the AFC and the PAFC at Football Park as part of the competition is made by the AFL, and that SAB has no role to play in the presentation of those football matches.
The AFL conducts the competition, and its objects include the promotion throughout Australia of Australian Rules football. It has the objects of controlling the program of matches for the competition, and of controlling the activities of players and others in any activity associated with football, including promotional activities.
The AFL has issued very detailed Regulations (“the Regulations”) by which it controls the competition and matters associated with the competition. It is not necessary to refer to the Regulations extensively. Some provisions are salient to the present proceeding. A football club, including the AFC and the PAFC, which participates in the competition, must observe and comply with the terms of the Club’s Licence Agreement, and with the AFL Player Rules and the Regulations. The AFL controls each club’s playing apparel, and each club is given the right to use that club’s playing apparel. The AFL retains the absolute and exclusive right to engage in sponsor advertising, including the use of any trade mark or logo, on any player. No club or player may display on any player any trade mark or logo or other advertising without the AFL’s permission. The AFL controls the broadcasting of matches in the competition.
The AFL also issues Player Rules. Under the Player Rules, all players must be registered with the AFL as a player of a particular club to be eligible to play in any match in the competition, and each club must engage each of its registered players under a contract of service in the approved form. The AFL and the AFL Players’ Association (“AFLPA”) has entered into a Collective Bargaining Agreement 1998 - 2003 (“CBA”) which establishes generally the terms of contracts of service between AFL clubs and players, and each club is bound by the terms of the CBA. One purpose of the CBA is to ensure that sponsors of the AFL and sponsors of AFL clubs are able to obtain the benefits of association with the AFL, the AFL clubs, and the competition. The CBA deals with a range of matters concerning “the fundamental planks on which the competition is based”, including player lists and player payments and benefits.
On 11 October 1990, the AFL and the SANFL entered into a licence agreement to field a team in the competition. As one might expect, that licence agreement obliged the SANFL to comply with the various Rules and the Regulations of the AFL, and not to diminish the intellectual property of the AFL. That licence agreement provided for the SANFL to make available Football Park for matches in the competition, and for AFL sponsorship signage at Football Park. On 13 February 1991, the AFL with the SANFL, entered into a sub-licence agreement with the AFC whereby the AFC became entitled to field a team in the competition. The AFC agreed to be bound by the terms of the licence agreement of 11 October 1990. On 31 October 1996 the AFL and the SANFL entered into a further licence agreement to field a second team in the competition and subsequently on 26 November 1996 a sub-licence agreement was entered into between the AFL, the SANFL and the PAFC for the PAFC to field that team. Although the later licence agreement and sub-licence agreement were in different terms to their earlier counterparts, the general effect of the relevant terms is much the same.
The AFL has also entered into a Ground Occupancy Agreement with the SANFL for the occupancy and use of Football Park for AFL matches in the competition, which deals amongst other things with game and arena advertising and signage.
The picture reflected by those various agreements and by the general evidence concerning the competition is that the AFL conducts, and is the provider of all competition throughout Australia. It has substantial public following and goodwill. The AFL is the proprietor and owner of all trade marks, logos, shields, emblems and team playing apparel associated with the competition, including the logo and team playing apparel of the AFC and of the PAFC. Many of the trade marks and logos are registered in the name of the AFL under the TM Act or under the Designs Act 1906 (Cth), including the logos of both the AFC and the PAFC registered inter alia as trade marks in respect of the goods and services in class 41. Further, the evidence shows that the AFL arranges all match fixtures for the competition. It owns or leases or authorises the venues for all matches in the competition. It prepares and sells, or authorises the preparation and sale of, all tickets for entry to the matches in the competition and is entitled to the proceeds of all ticket sales.
The AFL football matches provided by the AFL constitute services for the purposes of the International Classification of Goods and Services for the Purposes of the Registration of Marks, WIPO, Geneva 1981. In my view it is clear that they constitute “sports events” and “live entertainment services” for the purposes of class 41, and that the AFL is the “proprietor” or “provider” of those services for the purposes of the TM Act.
SAB’s services in relation to Showdown football matches included the pre-game launch of each match at which the two clubs, the team captains and the media are present, and the presentation in a publicised ceremony of the West End Showdown trophy to the winning team captain and more recently the awarding of the West End Showdown medal to the best player of each match. The evidence shows that those entertainment activities associated with the Showdown matches have generated considerable public and media interest. They have been promoted by SAB by television advertising, by the production of specially packaged beer products, by the conducting of competitions for tickets to a Showdown match and for other prizes, and by other merchandising.
In my view, the word “Showdown” is not merely descriptive of the nature of those services. In Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514, Kitto J said that the question whether a proposed trade mark is capable of distinguishing the applicants’ goods or services in respect of which the registration is sought from the goods or services of other persons is :
“... 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 the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.”
It is a question of fact in each case whether the proposed trade mark is not capable of so distinguishing the applicant’s goods or services from the goods or services of other persons: Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 60 per Branson J. In Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1 at 6, the Full Court (Bowen CJ, Woodward and Lockhart JJ) said :
“It is a question of degree in every case whether a mark trespasses across the line between an indirect and a direct reference to character or quality. ...”
It is clear that the word “Showdown” has some common English uses, as the dictionary definitions to which I was referred demonstrate, including a meeting between two antagonists. That use has been applied to sporting contests, including a pre-season or “trial” football match between the PAFC and the Collingwood Football Club (another in the AFL) in early 1997. It also has been, and is, used in a generic or vernacular sense to refer to the bi-annual football matches between the AFC and the PAFC. The use of the descriptors “Showdown match” or “Showdown matches” or the like is quite common. Counsel for SAB acknowledged that. The proposed use of the word mark by SAB, at the time of registration, does have a descriptive flavour, and for that reason there is a greater difficulty on the part of SAB in demonstrating that it is distinctive of SAB’s services. However, I have come to the view that the word mark is distinctive in the sense that it distinguishes the services of SAB from those of others of the same type in the market: cp Johnson & Johnson.
In my view, at the time of the registration of the word mark, the word mark did not fall foul of s 41(2) of the TM Act. It is not merely descriptive of the services in respect of which the registration was sought and procured. In my judgment, it was capable of distinguishing SAB’s services in relation to the Showdown matches from those of other persons. It is a word mark which is used to evoke the mental picture of the activities associated with the matches between the AFC and the PAFC in the context of a significant confrontation between those two clubs: cp Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190. If it were limited to evoking the mental picture of that confrontation itself, which is not a sporting service provided by SAB, then the contention of CUB in relation to s 41(3) and s 43 of the TM Act would succeed.
CUB contends, in relation to s 43 of the TM Act, that the use of the word mark in relation to SAB’s services would be likely to deceive or cause confusion because it connotes that SAB and not the AFL is the presenter of the Showdown matches. It is necessary to look to the inherent qualities of the word mark to see whether its use would be likely to deceive or to cause that confusion: Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at 434 - 435 per Branson J. There are clearly circumstances where the use of a mark may indicate an association or sponsorship, or the existence of a status or authority, which does not exist and so may be likely to mislead or deceive: eg Radio Corp Pty Ltd v Disney (1937) 57 CLR 448. In this matter, I do not consider that the word mark or its use implies that it is a badge of origin of the Showdown matches themselves, or that there is a connection between the AFL as the presenter of those matches and SAB: cp Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 (“the Shell case”). The context in which the word mark has to be, and is, used is not one which would really admit of the likelihood of such deception or confusion. The “ownership” of the competition by the AFL, including the Showdown matches, is generally understood. The word mark itself does not, by its use, imply any association or relationship with the AFL.
The services to be provided by use of the word mark are not of themselves services which would imply any such association or relation with the AFL. I accordingly reject the claim for cancellation of the word mark based upon s 43 of the TM Act.
I also reject the attack upon the word mark based upon s 59 of the TM Act. I do not consider that it has been shown that at 8 December 1997 SAB did not intend to use the word mark in Australia in relation to live entertainment services provided in conjunction with sporting events, namely the Showdown matches. The evidence demonstrates the process by which SAB same to register the word mark. Its intention to use the word mark is clearly demonstrated by that evidence. If SAB’s subsequent conduct is relevant to that issue, its conduct since registration of the word mark has been in accordance with that intention.
In my judgment, the attack upon the registration of the word mark fails and the cross-claim should be dismissed.
(B) THE INFRINGEMENT OF THE WORD MARK
Section 120(1) provides that a person infringes a registered trade mark if that person uses as a trade mark a sign that is substantially identified with the trade mark in relation to goods or services in respect of which the trade mark is registered. CUB contends that its use of the word “Showdown” in relation to the Showdown 7 promotion is not use of the word mark “as a trade mark”.
I have found, and it is not really disputed by SAB, that the word “Showdown” has a generic or vernacular use to refer to the Showdown matches, as well as its trade mark use by SAB. There could really be little doubt about its generic use. The reference to each of the bi-annual football matches between the AFC and the PAFC at Football Park as part of the home and away competition as the “Showdown” or (for example) in relation to the forthcoming such match on 5 August 2001 as “Showdown 10” is demonstrated by the media material in evidence as well as by most of the witnesses. The word “Showdown” is used as a commonplace to refer to the matches or to the occasion of the matches. As I have noted, that usage also accords with dictionary definitions of the word.
In the Johnson & Johnson case, the Full Court concluded that the use of the word “Caplets” was not in the circumstances use of that word as a trade mark. After referring to the observations of Kitto J in the Shell case at 422 that “context is all important”, Burchett J concluded at 343 in that matter about the use of the word “Caplets” :
“.. It is a descriptive use, identifying the goods by reference to their origin when new, which is no longer, at any rate generally, a relevant commercial origin for the purposes of trade mark law.”
In his reasons for judgment, Gummow J at 347 - 348 identified the approach to be taken in the following passage :
“When the issue is one of infringement, a pivotal question is whether the use complained of is use by the alleged infringer as a trade mark. The answer to that question requires an understanding of the ‘purpose and nature’ of the impugned use: see Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (the Shell case) (1963) 109 CLR 407 at 426, per Kitto J. As his Honour there points out, with reference to Edward Young & Co Ltd v Grierson Oldham & Co Ltd (1924) 41 RPC 548, and as s 66 of the present Act also indicates, the nature of the allegedly infringing use may be considered in the light of a usage common in the relevant trade. The relevant context, where the mark is a word mark, includes a consideration of the way in which the word has been displayed in relation to the goods and advertisements of which complaint is made: see Mars GB Ltd v Cadbury Ltd [1987] RPC 387 at 402, per Whitford J.
Where the trade mark allegedly used by the defendant comprises ordinary English words (such as “Page Three”, considered by Slade J in News Group Newspapers Ltd v The Rocket Record Co Ltd [1981] FSR 89 at 102) then, as this decision illustrates, that circumstance may be taken into account by the court in the process of reasoning by which it accepts or rejects a submission that the use in question is not a trade mark use but a description of the goods in question. To say that is not to gainsay the point made by Dixon CJ in Mark Foys Ltd v Davies Coop and Co Ltd (the Tub Happy case) (1956) 95 CLR 190 at 194 - 195 that language is not always used to convey a single, clear idea; a mark may have a descriptive element but still serve as a badge of trade origin. However, where the issue is one of infringing use by use of a word mark (as in the present case), the fundamental question remains, to paraphrase what was said by Williams J in the same case (supra) (at 205), whether those to whom the user is directed are being invited to purchase the goods (or services) of the defendants which are to be distinguished from the goods of other traders ‘partly because’ (emphasis supplied) they are described by the words in question.”
In this matter, the question is whether CUB has used the word “Showdown” in relation to the Showdown 7 promotion in a descriptive sense or as a mark. Sackville J in Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192 at 209 - 213 reviewed many of the authorities on the question whether there has been use of a word as a trade mark. I respectfully adopt his Honour’s analysis. In the end, the answer to that question depends upon the nature and purpose of the impugned use, having regard to the context in which that use occurs.
In addressing that issue, I have considered the particular form of presentation of the word “Showdown”. It is in the context of drawing attention to an event, as it is used as part of the exhortation “Experience Showdown” on the corflutes and in the advertising material. The Showdown 7 promotion was to invite persons to attend a football match conducted by the AFL which I have found to be described generically by many in South Australia as a Showdown match.
There is evidence that there is an association in the minds of a proportion of those in South Australia who are over eighteen and buy or consume beer between the word “Showdown” and SAB. SAB set out by its promotional and advertising material to engender such an association.
Part of the material relied upon in that regard was the evidence of David Briggs (“Mr Briggs”), a person who I accept was qualified to conduct a consumer survey of South Australian adults to ascertain the awareness of Showdown events and any association of brands or products with those events.
I ruled that his evidence was admissible, notwithstanding the objections taken to it. The timing of his engagement meant that his survey, arguably, did not comply with Federal Court Practice Note 11. CUB, through its solicitors, did not have a full opportunity to comment upon and to participate in the process by which the survey questions were formulated and utilised. That does not lead to his evidence being inadmissible: Eveready Australia Pty Ltd v Gillette Australia Pty Ltd (1999) 47 IPR 327.
The principles relating to the use of survey evidence were considered by the Full Court (Lockhart, Wilcox and Gummow JJ) in Arnotts Ltd v Trade Practices Commission (1990) 24 FCR 313 at 359 - 362 and by McClelland J in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158. After the helpful submissions of counsel, I formed the view that Mr Briggs’ evidence was admissible in accordance with those authorities, and that the criticisms made of the form and sequence of the questions were matters which went to the weight to be given to the results of the survey. In addition, I did not consider that I should exercise my discretion under s 135 of the Evidence Act 1995 (Cth) to exclude that evidence.
When Mr Briggs was cross-examined, a number of the criticisms put in submissions were also put to him. In the result, I do not place much weight upon his evidence in this particular matter. I do not think it adds much to what other witnesses spoke about. It is not really in issue that the term “Showdown” is a widely recognised and used term to refer in a generic sense to the Showdown matches. I also accept from Mr Briggs’ evidence that a significant number of persons in South Australia recognise that the term “Showdown” is associated with the promotion of Showdown matches by SAB by the activities referred to above. There is clearly a close connection between the Showdown matches put on by the AFL, and the Showdown promotional activities which represent SAB’s use of its word mark. I do not consider that the survey evidence effectively drew the distinction between those two uses of the expression “Showdown”, so that the responses elicited demonstrating the extent of the association between SAB and the term “Showdown” do not indicate whether those responses were truly reflective of an understanding of the use of SAB’s word mark in relation to its services, or were reflective only of an understanding of a term commonly applied to the football matches themselves. I also have reservations about placing much weight on the survey results when the survey was conducted shortly after media publicity of an interlocutory injunction made in these proceedings. Finally, to the extent that the survey questions included the specific invitation to address the association of a beer product with the term “Showdown”, (where no such associations had been given unprompted), it is hardly surprising that a significant number of South Australians would identify the beer products of SAB, given its extensive promotion generally in South Australia including through the SANFL and the SANFL competition.
The context in which the “Showdown” expression was used by CUB in relation to the Showdown 7 promotion is that there was soon to be the Showdown 7 match. CUB wished to promote the sale of its Victoria Bitter beer product by that promotion, involving the competition described. For that purpose, which is of course an entirely proper purpose, it identified the event in respect of which the competition was conducted. It identified that event by the use of the “Showdown”. The text of the promotional corflutes and advertisements is directed to the event, by the words “Experience Showdown 7” and by the nature of the prize offered. The background to the corflutes draws attention to the football match itself, as does the entry form. In my judgment, the purpose and nature of the use of the word “Showdown”, having regard to the fact that the football match was by then commonly known as a Showdown, is simply to describe accurately the occasion of the football match. It was not to use that word as a trade mark.
Accordingly, I do not consider that the word mark of SAB has been infringed by the use by CUB of the word “Showdown” in relation to the Showdown 7 promotion.
(C) THE CONTRAVENTION OF THE TP ACT
It is a question of fact to be judged in all the circumstances whether the conduct of CUB in relation to the Showdown 7 promotion (and the other two promotions) is misleading or deceptive or is likely to mislead or deceive: S & I Publishing Pty Ltd v Australian Surf Lifesaver Pty Ltd (1998) 88 FCR 354. In forming that view, it is necessary to identify the relevant section of the public by reference to whom the effect of the impugned conduct is to be judged: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 per Gibbs CJ at 199. The Chief Justice there said that s 52 must be regarded as contemplating the effect of the conduct on reasonable members of the class of consumers likely to be affected by the conduct. In Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 202, Deane and Fitzgerald JJ said, in relation to the relevant section of the public, that the question is to be considered by reference to all those who come within it :
“... including the astute and the gullible, the intelligent and the not so intelligent, the well educated as well as the poorly educated, ...”
(citing a passage in the judgment of Lockhart J in Puxu Pty Ltd v Parkdale Custom Built Furniture Pty Ltd (1980) 31 ALR 73 at 93).
In Campomar, the Full Court (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ) at 704 explained that :
“Where the persons in question are not identified individuals to whom a particular misrepresentation has been made or from whom a relevant fact, circumstance or proposal was withheld, but are members of a class to which the conduct in question was directed in a general sense, it is necessary to isolate by some criterion a representative member of that class. The inquiry thus is to be made with respect to this hypothetical individual why the misconception complained has arisen or is likely to arise if no injunctive relief be granted. In formulating this inquiry, the courts have had regard to what appears to be the outer limits of the purpose and scope of the statutory norm of conduct fixed by s 52. Cf Environment Agency (formerly National Rivers Authority) v Empress Car Co (Abertillery) Ltd [1999] 2 AC 22 at 30-1. Thus, in Puxu, Gibbs CJ observed that conduct not intended to mislead or deceive and which was engaged in ‘honestly and reasonably’ might nevertheless contravene s 52. (1982) 149 CLR 191 at 197; 42 ALR 1. Having regard to these ‘heavy burdens’ which the statute created, his Honour concluded that, where the effect of conduct on a class of persons, such as consumers, was in issue, the section must be ‘regarded as contemplating the effect of the conduct on reasonable members of the class’.”
At 705, their Honours explained that the Court may well decline to regard as controlling the application of s 52 those assumptions by persons whose reactions are extreme or fanciful. They said :
“... The initial question which must be determined is whether the misconceptions, or deceptions, alleged to arise or to be likely to arise are properly to be attributed to the ordinary or reasonable members of the classes of prospective purchasers.”
There seems to be little dispute that each of the three Showdown promotions were directed to South Australian residents over eighteen years of age, and who drink and purchase beer. It is also suggested that those persons be interested in and follow sport, particularly Australian Rules football, and such persons may well be (but need not be) supporters of either the AFC or the PAFC football teams.
I do not think it is necessary to further refine the relevant class to such persons who are interested in Australian Rules football, or to such persons who are supporters of the AFC or the PAFC. In my view, the relevant class of persons should not be so confined, simply because there are purchasers or potential purchasers of packaged beer in South Australia who might be influenced to purchase the Victoria Bitter products of CUB if it is presented as and perceived as a sponsor of prominent South Australian based sporting teams, whether or not such persons have an interest in either the AFC or the PAFC, or in Australian Rules football. However, in the present matter I do not think that the outcome in any respect would be any different whether the class is the wider one to which I have referred, or the slightly narrower one identified by SAB.
In Taco Co of Australia Inc v Taco Bell Pty Ltd at 202, Deane and Fitzgerald JJ observed that whether or not conduct amounted to a representation is “a question of fact to be decided by considering what is said and done against the background of all surrounding circumstances”. That passage was referred to with approval by the High Court (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ) in Campomar at 703. In addressing the conduct of CUB in relation to each of the Showdown 7 promotion, the Showdown 9 promotion, and the Showdown 10 promotion, I have had regard to the more general evidence about the marketing and promotion of CUB and SAB beer products in South Australia, the evidence about the retail outlets by which their respective products are sold to consumers, and to the evidence of the strong and direct competition between them. I have also, by way of background material, had regard to the evidence of the extent to which brewers such as SAB have invested in sponsorship of sporting activities as a means of promoting their products and their perceptions as to the value of establishing such sponsorship associations for that purpose. The evidence also demonstrates that beer and football is a “traditional fit” or that they enjoy a strong linkage for the purpose of marketing the sale of beer products.
It is necessary to address the several alleged representations set out at [24] above.
In my judgment the promotional and advertising material produced by CUB in relation to the Showdown 7 promotion did not represent to consumers that the Showdown 7 match, or Showdown matches, are associated with CUB in the sense that CUB is the brewing company that sponsors either the AFC or the PAFC or the SANFL or the Showdown matches. The reference to “the” brewing company in the allegation must indicate an assertion of a representation that, somehow, CUB is the exclusive brewing company sponsor of the clubs or of the SANFL or of the Showdown matches. I do not consider that the material so presented conveys that message. I do not consider that there is any material which presents CUB or Victoria Bitter beer as the exclusive sponsor of any of those entities or of the Showdown matches.
I also do not consider that that promotional and advertising material represents to the relevant class of persons that CUB or Victoria Bitter beer is a sponsor of the SANFL at all. Again, in my judgment, there is nothing in the promotional material to point to that conclusion.
The picture is more complex in relation to the allegation that that material represents that CUB or Victoria Bitter beer is a sponsor of the AFC or the PAFC. The features of the corflutes and the entry forms which SAB has identified as leading to that conclusion include the use of the words “Showdown 7” which it contends is a trade mark use by CUB of its word mark, and which are words understood by a significant part of the public, to relate or to be associated with its products. I have, however, concluded in the preceding section of these reasons that in context the use of those words in the Showdown 7 promotion do no more than identify the occasion of a football match between the AFC and the PAFC at Football Park, and that the use of the word “Showdown” in that material is but a generic or vernacular use of that word. It is a convenient and well understood way of referring to the occasion of such a football match. Although in a large print, and in a different colour from the other text, the use of those words is in the expression “Experience Showdown 7 in a VB box with seven mates” so as to refer to the occasion rather than to direct the reader’s attention to some relationship between that event and any particular product, or to suggest that the occasion is an occasion which is sponsored by CUB. In my view, the word “experience” does not refer to experiencing the services of SAB in relation to a Showdown football match, but to the football match put on by the AFL itself. The balance of the text to which I have otherwise referred earlier in these reasons is in a similar context. It is also necessary, as SAB points out, to have regard to the fact that promotional material also uses the logos of the AFC and the PAFC, and the AFL, and contains representations of a bottle of Victoria Bitter beer and the Victoria Bitter label or logo. In my view the use of the two club logos on that advertisement, either by itself or in combination with the other elements of that presentation, would not lead a member of the relevant section of the public to the belief that CUB or Victoria Bitter beer was sponsoring the AFC or the PAFC. The focus of the presentation is upon a football match between those two clubs. In relation to that football match, the presentation is to promote a competition designed to sell the Victoria Bitter beer product. The background to the promotion is either the moving football or the aggregation of players of both clubs in action photographs. In context, in my view, the use of the two logos does not do more than draw attention to the nature of the contest. I have had regard to the whole of the material which constitutes that promotional material and including the positioning of the logos to which I have referred in relation to the text and presentation of that material, in reaching that view.
For similar reasons, I do not consider that that promotional material represents that CUB or Victoria Bitter beer is a brewing company that sponsors the Showdown matches. In my view, that material focuses on the competition which CUB is conducting to promote the sale of its products by reference to the Showdown 7 match, but does not represent, by conducting the competition or by referring to the Showdown 7 match, or by the use of the club logos, that it is in some way sponsoring the match itself or Showdown matches generally.
I also do not consider that the other advertising under the Booze Brothers banner in The Advertiser in relation to the Showdown 7 promotion amounts to the making of any such representations by CUB, assuming CUB was responsible for that advertising. Each of the advertisements promoted the sale of a range of products from Booze Brothers outlets. The material complained of comprises only a part of each advertisement, and the focus is upon the competition being conducted by CUB and Booze Brothers for the opportunity to attend the occasion of the Showdown 7 match itself in a corporate box. In my view, it does not suggest any of the associations or sponsorships alleged.
There is, in my view, little difference in practical terms between the first representation, and the second and third representations as set out in [24] above and as I have understood them from the pleadings. I do not think that the promotional material represents that the AFC or the PAFC have an association with CUB, or that Victoria Bitter beer and CUB’s other products have a commercial association with the Showdown matches, or the AFC, or the PAFC. My reasons for that conclusion are the same as those concerning the first of the representations alleged.
I also do not consider that that promotional material represents that Victoria Bitter beer or CUB’s other products are available for sale and consumption by the general public at Football Park during Showdown matches. I do not regard any of the promotional material as conveying anything as to the availability generally of Victoria Bitter beer or other CUB products at Showdown matches, other than clearly indicating that in “a VB box” such products are likely to be available. That is not an issue in these proceedings. The evidence clearly demonstrates that in the CUB corporate box at Football Park such products were available.
The fifth of the particular representations, although alleged in respect of both the Showdown 7 promotion and the Showdown 9 promotion, in fact relates only to the Showdown 9 promotion. I do not need to address it at this point in my reasons.
Consequently, in my judgment, CUB has not engaged in conduct which is misleading or deceptive or is likely to mislead or deceive in contravention of s 52 of the TP Act in relation to the Showdown 7 promotion. SAB has also alleged that that conduct contravened s 53(c) and (d) of the TP Act. For the reasons already given, I do not consider that the promotional material associated with the Showdown 7 promotion represented that goods or services of CUB have sponsorship or approval which it did not have, or represented that CUB has sponsorship or approval or affiliation which it did not have. I conclude that the alleged contraventions of the TP Act in respect of the Showdown 7 promotion are not made out.
(D) PASSING OFF
The elements of the tort of passing off are referred to in Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731 at 742 by Lord Diplock. Relevantly for present purposes, those elements include the making of a misrepresentation by a trader which is calculated to injure the goodwill of another trader. It is clear that the conduct of CUB which is complained of was in the course of its trade to prospective customers, and was calculated to generate sales of its Victoria Bitter beer products at the expense of SAB, in the sense that it was endeavouring to sell its beer products to those who might otherwise have bought beer products of SAB.
The further amended statement of claim claims that CUB “passed off its goods and/or services as being the goods and/or services” of SAB by the Showdown 7 promotion by making the representations set out in [24] above. I have found that CUB did not make the representations alleged by SAB in relation to the Showdown 7 promotion. Consequently, in my view, a critical element in the “passing off” cause of action has not been made out and the claim based upon that cause of action should be dismissed.
THE SHOWDOWN 9 PROMOTION
The nature of the Showdown 9 promotion is not materially different from the Showdown 7 promotion. For the same reasons as I have reached in relation to the Showdown 7 promotion, I do not consider that CUB has infringed the word mark. Subject to considering the representation set out as (v) in [24] above, I also do not consider that CUB has contravened the provisions of the TP Act or has engaged in unlawful passing off of its goods or services as the goods or services of SAB.
The representation specific to the Showdown 9 promotion is that, since CUB became “the Premier Partner” of the AFL, it is “a/the” sponsor in respect of beer products for the Showdown matches, or of the SANFL, or of the AFC or of the PAFC.
I do not consider that the material associated with the Showdown 9 promotion does represent that CUB is the beer sponsor (in the sense of the only or the exclusive beer sponsor) of the Showdown matches or of any of the SANFL, the AFC or the PAFC. Nor do I consider that that material represents that CUB is a beer sponsor of the Showdown matches, or of any of the SANFL, the AFC or the PAFC. In my view, that material is no more than a means of promoting the sale of Victoria Bitter beer by reference to the occasion of the Showdown 9 match. I shall not repeat the matters concerning the nature and purpose of that material discerned from my consideration of it, or the context in which it was made, which lead to that conclusion. The only feature of that material which has caused me any concern in that regard in relation to the particular representation, as it did in addressing the claims that that material asserted an association with the AFC and the PAFC, is the presence of the two club logos on certain of that promotional material. Unlike the Showdown 7 promotional material, those logos were not accompanied by the AFL logo. However, I do not consider that, judged objectively, the presence of those two logos in all the circumstances does convey a sponsorship of the AFC and of the PAFC by CUB. It seems to me to be a means of identifying more explicitly the teams playing in the Showdown 9 match, and in its context is another way of identifying those teams rather than simply by use of common names “Adelaide Crows” and “Port Power”, in particular having regard to the fact that the words “Adelaide Crows” and “Power” appear as part of the logos.
Accordingly, I conclude that there is no misrepresentation in that regard. In my view, CUB has not contravened the TP Act nor engaged in unlawful passing off in relation to the Showdown 9 promotion.
THE SHOWDOWN 10 PROMOTION
CUB ultimately acknowledged, by its counsel in closing submissions, that certain promotional material associated with the Showdown 10 promotion represents to consumers and potential consumers of beer products that CUB and its Victoria Bitter beer is a sponsor of the AFC and the PAFC. That acknowledgment was specifically made in relation to the thirty can cartons described above. I consider that the acknowledgment was appropriately made. The presentation of that carton constituted by the “head to head” photographs of the two club captains in playing apparel in conjunction with the two club logos and the Victoria Bitter beer label or logo clearly conveys that message.
I am also of the view that the presentation or proposed presentation of other promotional material by CUB in connection with the Showdown 10 competition, with one qualification, also carries the same representation, namely that CUB is a sponsor of the AFC and of the PAFC. The presentation on packaged cartons of twenty-four cans and twenty-four bottles of Victoria Bitter beer is the same as that for the thirty can packages. The corflutes and other point of sale material, and the advertising in The Advertiser and in the AFL Football Record, also is to the same effect. In my view the proposed television advertisement also conveys to the relevant class of consumers that CUB is a sponsor of the AFC and of the PAFC. It too refers to a particular football match between those clubs in conjunction with the Victoria Bitter beer carton packaging described above, and additionally it has the captains of each of the clubs in club playing apparel referring expressly to the Showdown 10 football match between their respective clubs. That combination of factors, in the circumstances, in my view conveys the representation alleged by SAB that CUB is a sponsor of both the AFC and of the PAFC.
I also consider that the material representing the Showdown 10 promotion, with the one exception referred to in the next succeeding paragraph, also conveys the representation that the AFC and the PAFC have consented to or authorised that promotion. It is really a case where the wider finding that that material represents that CUB is a sponsor of the two clubs encompasses the narrower finding that the two clubs have consented to or authorised that promotion. I consider that the carton packaging in the context of the particular football match, and the other promotional material, indicates to the relevant class of persons that both the football clubs have agreed to the promotion of that football match by their respective captains by CUB conducting the competition which constitutes the main element of the Showdown 10 promotion.
I have not reached the same conclusion about the separate photographs each of the two clubs’ captains. Those photographs do not refer to a particular football match in which the two clubs are to participate. Although each player is in his respective club’s playing apparel, and each photograph has the respective club’s logo on it, in my view those elements in conjunction with the captain of the club would not lead members of the relevant class of the public to the view that CUB is a sponsor of the AFC or the PAFC or that the respective clubs have consented to those players being photographed in that way. The significant elements in reaching that conclusion are that the photograph bears the player’s autograph, and that there is no reference to any particular match in the competition in which either of the clubs is to participate.
CUB’s contention is that the representation which is made by its promotional material in relation to the Showdown 10 promotion is not misleading or deceptive because it is a sponsor of both the AFC and the PAFC, and that both the AFC and the PAFC have consented to or authorised CUB to conduct the competition and to promote the sale of its Victoria Bitter beer products in the manner that the Showdown 10 promotion sets out to do. It seeks to demonstrate that position through the contractual arrangements between itself and the AFL, and between the AFL and the SANFL and the AFC and the PAFC.
CUB did not contend that its entitlement by contract to utilise each of the significant elements of that material, in particular the AFC and PAFC logos and playing apparel and the photographs of the two captains, provides it with protection or immunity from a contravention of the TP Act or from liability for passing off if in fact its conduct were found to be misleading and deceptive or likely to mislead or deceive. It was appropriate for CUB to adopt that position.
It has been held that an exculpatory clause in a contract such as one acknowledging that no representations or warranties have been made or given other than those expressly contained in the contract cannot prevail against the policy of the TP Act. The statutory prohibition against misleading and deceptive conduct is not overridden by such exclusionary or disclaimer clauses, whether contained in the primary contract or external to it: see the cases referred to by Burchett J in Burg Design Pty Ltd v Wolki (1999) 45 IPR 201 at 210 - 211, and the reasons for decision of the Full Court (Nicholson and Sundberg JJ) in IOOF Australia Trustees (NSW) LTD v Tantipech (1998) 156 ALR 470 at 478 - 480. The fact of such an exclusionary or disclaiming provision may be relevant to the determination whether the alleged representation was made or whether it was relied upon. The reason for that position was explained by Lockhart J (with whom Burchett and Foster JJ agreed) in Henjo Investments Pty Ltd v Collins Marrickville Pty Ltd (1987) 79 ALR 83 at 98 - 99 :
“... Section 52 is a section in the consumer protection provisions of an Act concerned to protect the public from misleading or deceptive conduct and unfair trade practices which may result in contravention of the Act. It has been held that exclusion clauses, ... cannot operate to defeat claims under s 52 .
...
There are wider objections to allowing effect to such clauses. Otherwise the operation of the Act, a public policy statute, could be ousted by private agreement. Parliament passed the Act to stamp out unfair or improper conduct in trade or in commerce; it would be contrary to public policy for special conditions such as those with which this contract was concerned to deny or prohibit a statutory remedy for offending conduct under the Act. ...”Those policy considerations would apply with equal force where the existence of positive contractual rights might be argued to lead to the inapplicability of the TP Act where its terms would otherwise apply to impugned conduct. In Campomar, it was held that the trade mark registration of the appellant in the word “Nike” for perfume products did not enable it to engage in conduct in contravention of s 52 of the TP Act by presenting its “Nike Sports Fragrance” as being in some way promoted or distributed by the respondent or with consent and approval.
CUB does not have any direct sponsorship arrangements between itself and the AFC, or between itself and the PAFC. That is, there is no sponsorship or like contract to which CUB and the AFC are parties, and there is no sponsorship or like contract to which CUB and the PAFC are parties. The evidence discloses that in relation to twelve of the sixteen participating clubs in the competition, CUB does have such a direct sponsorship contract in addition to its contractual arrangements with the AFL.
The AFL has created a tiered structure for sponsorship of or associated with the competition. CUB submitted that there are six tiers, and it is convenient to adopt that analysis. It reflects the consideration of the various contractual documents referred to in these reasons, although it is not necessarily the case that the “lower” tiers have lesser or subordinate rights to those in the “upper” tiers. The respective rights are really complementary. Those sponsorship tiers are :
AFL Premier Partner
AFL Protected Sponsor
AFL Club Protected Sponsor
Sponsor of an AFL Club
Player promotions for the AFL or AFL clubs
Player Marketing Contracts
As the issues in this case demonstrate, the margins at which respective sponsorship rights operate may potentially intersect. It is the attempt by CUB to take advantage of its contractual rights which has led to the claims against it
CUB then relies upon its contractual rights with the AFL under the MOU, and under certain contracts which it has with Mr Primus and Mr Ricciuto to support its case that the representations it makes in connection with the Showdown 10 promotion are not misleading or deceptive and are not likely to mislead or deceive.
Under the MOU, CUB is designated the “Premier Partner of the AFL” and is also identified as an AFL Protected Sponsor in relation to beer (and other) products. It is given naming rights, inter alia, to the competition. It is entitled to display the combined AFL/CUB logo on the playing surface, when matches in the competition are played, and certain other signage rights at the venues when those matches are played. Its name or brand mark appears on all AFL tickets.
For present purposes, the most significant of those contractual rights is a non-exclusive licence to use AFL intellectual property for promotional and advertising purposes in relation to its beer products. That non-exclusive licence includes use of the logos and playing apparel of the AFC and of the PAFC.
On 27 March 2001, CUB entered into a sponsorship agreement with Mr Ricciuto, said to be operative from 15 March 2001. On 11 April 2001 CUB entered into a sponsorship agreement with Mr Primus, said to be operative from 1 March 2001. In each instance, it was in accordance with their respective sponsorship agreements that the two club captains made themselves available for the “head to head” photograph, for the individual photograph, and for the television advertisement which was used or proposed to be used as part of the Showdown 10 promotion. In anticipation of the finalisation of those contracts, on 27 March 2001 CUB conducted a media event announcing the appointment of Mr Ricciuto and Mr Primus as “CUB AFL Ambassadors in South Australia”, which (it proclaimed through its media release) was to leverage the profile of its beer products in South Australia to build on the “Premier Partnership” with the AFL so as to “secure higher profile for these brands across the State via the AFL’s two SA-based teams”.
As noted earlier, the terms of the CBA bind the AFL, the AFLPA, the clubs that participate in the competition including the AFC and the PAFC, and the players. It defines the terms “AFL Protected Sponsor” and “Sponsor of an AFL Club”, and also uses and describes the term “AFL Club Protected Sponsor”. For present purposes, it seeks to control circumstances in which AFL intellectual property (defined to include the playing apparel and the club logos of the AFC and the PAFC) may be used for promotional purposes. It also regulates the circumstances in which players may enter into player marketing contracts and may use their images in promotion and marketing, and the extent to which players and players’ images are to be available to the clubs and to the AFL for promotional activities.
The term “AFL Protected Sponsor” is defined in clause 7 of the CBA to mean one or more of the five sponsors of the AFL nominated by the ALF in writing to the AFLPA from time to time. The term “Sponsor of an AFL Club” is also defined in clause 7 of the CBA as follows :
“Sponsor of an AFL Club means a person, corporation or entity from time to time holding the right, consistently with this Agreement, to display its name, reputation, image, products or services on any playing apparel of any AFL Club or who or which is otherwise designated by an AFL Club, consistent with this Agreement, to be a sponsor;”
Clause 29.1 of the CBA authorises a player to contract with an AFL club or a “Sponsor of an AFL Club” to derive payments as a direct result of bona fide promotions/marketing by that player in accordance with the Guidelines for Marketing Contracts set out in Schedule B to the CBA.
Clause 33 extends the scope of the entities with whom a player may engage in marketing activities and to use a player’s image in promotion and marketing. Clause 33.1(a) provides :
“The Parties agree that a Player may use his own Image or licence the use of his own Image provided that such use:
(i) does not conflict with an AFL Protected Sponsor;
(ii) does not conflict with an AFL Club protected sponsor;
(iii) it is not prejudicial to Australian Football;
(iv)does not use AFL Intellectual Property or Club Intellectual Property without the consent of the AFL or the relevant AFL Club;
(v)does not use other AFL property (including without limitation playing and on field uniforms and other items within the AFL on field policy) without the consent of the AFL.”
Effectively, that clause seems to protect an AFL Protected Sponsor and an AFL Club Protected Sponsor from players marketing, and it prevents players using any intellectual property of the AFL or of each of the AFL clubs, including club logos and playing apparel. The concept of an AFL Club Protected Sponsor is described in cl 33.1(b) of the CBA. It provides for each AFL club to nominate up to four entitles as AFL Club Protected Sponsors. That nominated sponsor must have contributed at least a specified sum of money to the AFL Club under its sponsorship contract within a particular financial year (for the purposes of the AFL, the financial year runs from 1 November one year to 31 October in the succeeding year), but the eligibility of AFL Protected Sponsors under the terms of the predecessor of the CBA is preserved.
Schedule C to the CBA contains AFL Licensing Operational Guidelines setting out in more detail how a player may use his image under the CBA. The AFL Licensing Operational Guidelines stipulate when, and in what circumstances, the AFL may use a player image for promotional purposes. And they stipulate how a player may use his own image for promotional purposes. Section (E) clause 17 provides :
“A Player may use his own Image for personal promotional activities, provided that those activities do not conflict with AFL Protected Sponsors or AFL Club protected sponsors and where activities will require the use of AFL property, those activities do not conflict with an AFL licensee which spends $100,000 or more in advertising with AFL Licensing, provided always that those activities are not prejudicial to the game of Australian football.”
Players are not permitted to use any AFL intellectual property, including club logos, or playing apparel in any promotional activity without the consent of the AFL. In addition, section (E) clause 21 provides :
“Players shall not ‘pass off’ their association with their AFL Club in their personal promotional activities.”
Examples of permitted player promotional activities are attached to those Guidelines.
Clause 33.5(a) obliges a player to make himself available for a specified number of occasions each year for promotional activities of the AFL club and of the AFL. Clause 33.5(b) provides that a player :
“hereby authorises the AFL and the AFL Club to use the Player’s Image, at no cost to the AFL or the AFL Club, for the promotion of Australian Football, the AFL Club or the AFL, as the case may be, including the use of his Image to promote Australian Football where such promotion includes promotion of the AFL Protected Sponsors and AFL Club Protected Sponsors;”
The final step in the contractual construct is the Standard Playing Contract. That of Mr Ricciuto is dated 11 February 1999 and that of Mr Primus is dated 30 August 2000 with the AFC and the PAFC respectively. They are in different terms, but not in material respects. In the case of Mr Ricciuto, the player and the club are each bound by the CPA. The player may use his image for advertising and promotion, provided that does not conflict with the product of a “Major Sponsor” of the club, or with any sponsor of the AFL. The player is not entitled to use the intellectual property of the AFL or of the club, including the club logo or playing apparel, without consent and may not endorse any product so as to connote the sponsorship, approval or affiliation of the club or the AFL without consent. That clause more or less corresponds with clause 31 of the CPA. The player is also obliged to be available for club and AFL promotions on a specified number of occasions in each year, and authorises the club to use his image to promote the club or the AFL (including the products of any Major Sponsor of the club and a Sponsor of the AFL). It appears that Mr Ricciuto’s contract was an earlier version of the Standard Playing Contract, and that the reference to a Major Sponsor of the club is to an AFL Club Protected Sponsor and the reference to a Sponsor of the AFL is to an AFL Protected Sponsor. The contract with Mr Primus refers to AFL Club Protected Sponsors and AFL Protected Sponsors.
CUB further contended that, in considering whether CUB, by its representations in the Showdown 10 promotion had contravened s 52 of the TP Act, it was necessary to have regard to the nature and conduct of SAB’s contractual rights with the SANFL, and with the AFC and the PAFC. I do not consider that that is necessary to do so for the purpose of addressing the claim against CUB in respect of the Showdown 10 promotion. I have found that it has represented by the material associated with the Showdown 10 promotion (with the exception identified), and will represent by its further proposed promotional material associated with that promotion, that it is a sponsor of the AFC and of the PAFC, and that the AFC and the PAFC have consented to or authorised that promotion. I do not consider that the question whether those representations are misleading or deceptive. Or are likely to mislead or deceive, will depend upon the contractual sponsorship rights of SAB with either the SANFL, the AFC or the PAFC. It will depend upon CUB’s contractual rights
It is clear, however, that SAB is not an AFL Club Protected Sponsor nor an AFL Club Sponsor as defined in the CBA. Nor does it have any direct contractual licence to use the AFC or the PAFC logos or playing apparel in its promotional material either from the AFL or from either of those clubs under its sponsorship contracts with the AFC or the PAFC, or from the SANFL. There may be occasions when SAB may, however, be the beneficiary of a promotion by either of those clubs and at which the club logos are featured or at which players, including the club captains, are featured including in playing apparel. Such occasions may include occasions when the club exercises its rights under clause 33 of the CBA or under Standard Playing Contracts, and in conjunction with the contractual rights of SAB under its sponsorship agreements with the two clubs.
As noted above, there is no direct contractual relationship between CUB and the AFC or the PAFC in the nature of a sponsorship agreement. I further find that neither the AFC and the PAFC have, by any direct communication to CUB, consented to or authorised that promotion. The question is whether those representations are misleading and deceptive, or is likely to mislead or deceive in the light of those findings, and in the light of the contractual arrangements which exist between CUB and the AFL and between CUB and Mr Ricciuto and Mr Primus. CUB also referred to the contractual arrangements which exist between the AFL, the SANFL and the AFC and the PAFC. It is also necessary to have regard to the financial arrangements which reflect the implementation of certain of those various contractual arrangements.
CUB is a significant sponsor of the AFL. By reason of the rights which that sponsorship has secured, it may use the logos and playing apparel of the AFC and the PAFC. Its sponsorship monies paid to the AFL constitute part of the revenue of the AFL which, in part, was distributed to the clubs including the AFC and the PAFC. The AFL Annual Report for 2000 indicates that the AFL distributed $50.2 million in that year, including $2,780,059 to the AFC and $2,758,300 to the PAFC. As the Chief Executive Officer of each of those clubs acknowledged, that level of payment is only possible by the sponsorship monies paid to the AFL by its sponsors including its Premier Partner sponsor CUB. CUB is apparently to pay the AFL a very substantial amount over the next several years by way of sponsorship monies.
CUB’s contention is that it is thereby a “sponsor” of each of the AFL clubs including the AFC and the PAFC. I do not accept that contention. In my view, the representation of sponsorship of the two clubs made by the Showdown 10 promotion indicates that CUB has made a direct financial contribution to each of those clubs to gain the commercial benefits of being seen to have that association with those clubs. Each of the AFC and the PAFC has a separate legal identity, and is so recognised not simply by the AFL but generally within the community. It is of the essence of the competition that the AFL clubs be perceived as independent competitors, as indeed they are. Each of the AFL clubs, in my view, is readily so recognised so that its administration is separate from each of the other clubs and each enters into its own sponsorship arrangements. The evidence demonstrates generally that such arrangements are entered into. The sponsorship tiers of the AFL also recognise that fact, although for the purpose of determining whether, to the relevant section of the community, the representation is misleading I do not think that matter is publicly known or understood, and so I do not take it into account. The value of the sponsorships which the clubs may enter into is itself a significant element of the financial operations of the club. The affiliation of supporters to each club, including the AFC and the PAFC, is significant. That affiliation is club-based, rather than to the AFL itself. That affiliation is obviously an important part of the rights of the clubs in attracting sponsorships. I conclude that the representations made by the Showdown 10 promotion are likely to mislead or deceive those persons in South Australia who are over eighteen and who drink or purchase beer, particularly those who follow football including the AFC and the PAFC, into the belief that CUB is a sponsor of the AFC and of the PAFC because, despite its contractual arrangements to which I have referred, CUB is not a sponsor of the AFC or the PAFC. In my view, it is also generally understood that representations of sponsorship may not be made without the approval or consent of the entity with which the sponsorship is claimed to exist. I do not consider that the contractual arrangements enjoyed by CUB to which I have referred entitle it to assert, as it is acknowledged that the Showdown 10 promotion asserts, that the AFC and the PAFC have agreed to or consent to the Showdown 10 promotion. Neither club has done so in fact. The terms of the sub-licence agreements of those clubs with the AFL do not amount to such agreement or consent. Whilst it is true, as CUB contends, that there are now (at least in South Australia) co-existent sponsorships for the promotion and sale of beer in conjunction with the Showdown matches, the grantors of those sponsorship rights are not the same. CUB’s rights derive from the AFL (in this instance, used in conjunction with its rights through its contracts with Mr Ricciuto and Mr Primus). SAB’s rights derive from the AFC and the PAFC. But, in my view, the representations convey sponsorship with the AFC and the PAFC which has been granted by the clubs, and they are likely to mislead and deceive because neither of those clubs has granted such sponsorship to CUB.
I find that, in relation to the Showdown 10 promotion, CUB has contravened ss 52, s 53(c) and s 53(d) of the TP Act. That conclusion is reached notwithstanding that, as I have found, CUB is entitled by the MOU with the AFL to use the names, playing apparel and logos of the AFC and of the PAFC and has entered into sponsorship contracts with the captains of those two clubs. It is the manner of presentation of those matters in the combination which constitutes the Showdown 10 promotion, with the exception of the two individual photographs of Mr Ricciuto and Mr Primus in their clubs’ playing apparel, which offends those provisions.
In the light of that conclusion, I do not need to separately address SAB’s claims that CUB’s conduct by the making of those representations wrongly passes off its goods or services as the goods or services of SAB.
There remains for consideration SAB’s complaint that CUB, by the Showdown 10 promotion, has contravened the TP Act by representing that there is a corporate box known as the “VB Superbox” at Football Park.
The SANFL provides three levels of corporate facilities at Football Park, which it calls “Open Corporate Facilities”, “Enclosed Corporate Facilities”, and “Park Pavilions”. The Park Pavilion corporate boxes are located at the upper level of the grandstand at the southern end of Football Park. They are about fifty square metres in size. Since about April 2001, CUB has been licensed to occupy and use one of the Park Pavilion corporate boxes, and is permitted to use the name Carlton and United Breweries on fascias to identify it. It may display its promotional material inside that corporate box. It is permitted to supply CUB products in that corporate box, but otherwise it is not entitled to supply beer products within Football Park. Subject to that particular permit (with SAB’s approval), SAB has exclusive beer pourage rights at Football Park. Prior to April 2001, CUB occupied an enclosed corporate facility, which is a lower tier of the available corporate facilities at Football Park.
The winners of the Showdown 7 promotion and of the Showdown 9 promotion were given access to the corporate box occupied by CUB for those matches, and were there able to consume CUB beer products including Victoria Bitter beer.
In the light of the evidence that the Park Pavilions corporate facilities are, from time to time, referred to as “Superboxes”, SAB confined its contention to the claim that the representation is likely to mislead or deceive because CUB has no legal right to call its corporate box a “VB” box as distinct from a “Carlton and United” box. It is put that there is no “VB” box, and that the representation is also likely to mislead and deceive because it conveys that CUB has greater sponsorship and promotional rights, and a greater presence, at Football Park than it in fact has.
I do not accept those contentions. In my view, that part of the Showdown 10 promotion which offers as a prize attendance at the Showdown 10 match in the “VB Superbox” does not convey that CUB has any particular sponsorship and promotional rights at Football Park than the capacity to offer the occupancy of a premier corporate box at the Showdown 10 match at which Victoria Bitter beer and other CUB products will be available for consumption. It is not therefore necessary to refer in any detail to the signage and other rights which CUB has in relation to Football Park for AFL matches played there under its arrangements with the AFL, and the AFL arrangements with the SANFL. I also do not consider that the use of “VB” as distinct from “CUB” or “Carlton and United” as the name of the box is misleading or deceptive or is likely to mislead or deceive. It is correct that the term “VB Superbox” is not the term by which CUB’s corporate box in the Park Pavilions is known. But it is difficult to see how any member of the public might be relevantly misled or deceived by what is really a marketing description of a facility which CUB has the capacity to offer as a prize in the proposed competition. I think, in context, that the description used means no more than that CUB, as the promoter of that competition and as the supplier of Victoria Bitter beer, has the capacity to offer that prize. Accordingly, I reject that aspect of SAB’s claim.
CONCLUSION
In the result, I have found that SAB has not made out its claims for relief in respect of the Showdown 7 promotion or in respect of the Showdown 9 promotion. I consider that it has made out contraventions of ss 52, 53(c) and 53(d) of the TP Act by CUB in relation to the Showdown 10 promotion by its conduct and proposed conduct in representing that :
(a)CUB and its Victoria Bitter beer is a sponsor of the AFC and of the PAFC; and that
(b)the AFC and the PAFC have consented to or authorised that promotion,
but not by offering as a prize in the Showdown 10 promotion the chance to attend the Showdown 10 match in a “VB Superbox”. The conduct associated with the Showdown 10 promotion which gives rise to that contravention is, in my judgment, the packaging of the cartons including the “head to head” photograph of the two club captains and, by reason of that conduct with which it is associated, the manner of entry to the competition by use of the two club captains’ voices. The point of sale material comprising corflutes, price boards and to the extent that they contained the head-to-head captain’s photograph the mobiles also constitutes the same representation, as does the advertising material in The Advertiser and in the AFL Record and in the proposed television commercials. I do not consider that the individual photographs of the two club captains contravene those provisions.
I have rejected, earlier in these reasons, CUB’s contention that conduct on the part of SAB disentitles it from injunctive relief. I do not see any other reason why I should not grant to SAB an injunction restraining CUB from engaging in the conduct which I have found to constitute contraventions of the TP Act.
I accordingly order that CUB be restrained, and an injunction is hereby granted restraining it, from conducting the Showdown 10 promotions to the extent referred to. That includes prohibiting CUB from procuring or authorising the broadcasting of the television commercial referred to in [21] above, and from supplying or promoting the sale of packaged beer in the form of the packages referred to in [18] above as well as from promoting the sale of packaged beer by means of the corflutes and price boards and mobiles (to the extent that they display the “head to head” captains’ photograph) referred to in [11] and [13] above.
I give liberty to the parties to speak to the terms of the proposed order.
I do not consider it appropriate to make the more extensive injunctive orders sought in paragraph 11 of the second further amended application. The conclusion I have reached in this matter relates to the particular promotional material which is represented by the Showdown 10 promotion. As my consideration of the various contractual relationships variously between CUB and the AFL, and between the AFL, the SANFL and the AFC and the PAFC, and the AFLPA, indicates, there is potential for overlap or intersection between the contractual rights for which they provide. It is not appropriate to make orders which might interfere with the exercise of contractual rights, except in relation to the particular circumstances which are found to exist. Nor is it appropriate to make orders of that general nature in the light of the contractual rights which CUB has, inter alia, under the MOU; it is in my view in the circumstances only appropriate to make orders which respond to particular identifiable conduct or proposed conduct on the part of CUB complained of. I also see no need to make any orders in terms of par 13 of the second further amended application.
By agreement between the parties, the claims in par 14 to par 19 of the claim were not the subject of evidence and are to be heard and determined separately, if necessary, in the light of these reasons for judgment. I will therefore list the matters for further directions in relation to those claims at a time convenient to the parties. I will hear the parties as to costs, although I indicate a provisional view based upon the outcome of SAB’s claims and the cross claim that it would be appropriate simply to make no order as to the costs of these proceedings to date.
I certify that the preceding one hundred and thirty (130) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Mansfield.
Associate:
Dated: 13 July 2001
Counsel for the Applicant/Cross Respondent:
Mr F M Douglas QC with Mr D Kell
Solicitors for the Applicant/Cross Respondent:
Johnson Winter & Slattery as agents for Mallesons Stephen Jaques
Counsel for the Respondent/Cross Claimant:
Ms S Crennan QC, Mr J Wells QC and
Mr P Jopling QC with Mr I Robertson
Solicitors for the Respondent/Cross Claimant:
Thomson Playford as agents for Corrs Chambers Westgarth
Dates of Hearing:
18, 19, 20, 21, 22, 25, 26, 27 and 28 June 2001
Date of Judgment:
13 July 2001
4
24
0