Viacom International Inc v Canopener Pty Ltd

[2008] ATMO 100

TRADE MARKS ACT 1995

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

Re:Opposition by Viacom International Inc to registration of trade mark application 1136983(3, 38 & 41) - PIMP MY FACE - filed in the name of Canopener Pty Ltd.

Delegate:	Jock McDonagh
Representation:	Opponent: Written submissions from Griffith Hack Applicant: No appearance or submissions
Decision:	2008 ATMO 100 Section 52 Opposition: grounds under ss 44 and 60 not made out. Overall opposition not established. Costs awarded against opponent

Background

1. Canopener Pty Ltd (‘the applicant’) is the applicant for registration of a trade mark, current details of which are:

   Application No:           1136983
   Priority Date:               22 September 2006

   Goods/services:           Class 3: Cleansing products for removing make-up; eye make up remover; eye make-up; foundation make-up; impregnated pads for removing make-up; impregnated paper for removing make-up; lotions for the removal of eye make-up; make-up; make-up (bases for- ); make-up pads of cotton wool; make-up powder; make-up powders sold in compacts; make-up preparations; make-up products; make-up removing milk; make-up removing preparations; powder for make-up; preparations for removing make-up; products for removing the make-up; anti-sun preparations (cosmetics); biological products used as components in cosmetics; body creams (cosmetics); colour cosmetics for the eyes; colour cosmetics for the skin; cosmetics; cosmetics for animals; cosmetics for bronzing the skin; cosmetics for eyebrows; cosmetics for eyelashes; cosmetics for personal use; cosmetics for protecting the skin from sunburn; cosmetics for skin tanning; cosmetics for suntanning; cosmetics for the treatment of dry skin; cosmetics for the use on the hair; cosmetics for use on the skin; cosmetics in the form of creams; cosmetics in the form of eye shadow; cosmetics in the form of gels; cosmetics in the form of lotions; cosmetics in the form of mascara; cosmetics in the form of milks; cosmetics in the form of nail polish; cosmetics in the form of oils; cosmetics in the form of powders; cosmetics in the form of rouge; cosmetics preparations; cosmetics to remove pigmentation marks; essential oils for use in cosmetics; eyebrow cosmetics; facial wipes impregnated with cosmetics; hair cosmetics; liners (cosmetics) for the eyes; milks (cosmetics); moisturisers (cosmetics); nail base coat (cosmetics); nail enamel (cosmetics); nail enamel remover (cosmetics); nail gloss (cosmetics); nail hardeners (cosmetics); nail polish removers (cosmetics); nail preparations (cosmetics); nail revitalising lotions (cosmetics); nail tips (cosmetics); nail treatment creams (cosmetics); nail treatment gels (cosmetics); nail treatment lotions (cosmetics); nail varnish remover (cosmetics); nail varnish removing preparations (cosmetics); night creams (cosmetics); non-medicated cosmetics; nourishing creams (cosmetics); oils for the body (cosmetics); oils for the breasts (cosmetics); oils for the skin (cosmetics); paper hand towels impregnated with cosmetics; powder compacts (cosmetics); preparations for removing cosmetics; skincare cosmetics; sprays for use on the body (cosmetics); sun barriers (cosmetics); sun blocking cream (cosmetics); sun blocking gel (cosmetics); sun blocking lipsticks (cosmetics); sun blocking lotions (cosmetics); sun blocking oils (cosmetics); sun blocking preparations (cosmetics); sun creams (cosmetics); sun gel (cosmetics); sun lotions (cosmetics); sun milk (cosmetics); sun protecting creams (cosmetics); sun protection oils (cosmetics); sun protection products (cosmetics); sun protectors for lips (cosmetics); sun screen preparations (cosmetics); sun screening preparations (cosmetics); sun skin care products (cosmetics); suntan lotion (cosmetics); suntan milk (cosmetics); suntan oils (cosmetics); suntan preparations (cosmetics); sun-tanning preparations (cosmetics); tanning compositions (cosmetics); tanning creams (cosmetics); tanning oils (cosmetics); tanning preparations (cosmetics); textile pads impregnated with cosmetics; tints (cosmetics); tissues impregnated with cosmetics; toilet napkins of cellulose impregnated with cosmetics; toilet napkins of cellulose wadding impregnated with cosmetics; toilet napkins of paper impregnated with cosmetics; toy cosmetics (usable); varnishes (cosmetics); beauty care preparations; beauty care products; beauty creams; beauty face packs; beauty gels; beauty masks; beauty milks; beauty preparations; beauty products; distilled oils for beauty care; non-medicated beauty preparations; non-medicated skin care beauty products

   Class 38: Broadcast of information by means of television; broadcast of television programmes; broadcasting of cable television programmes; broadcasting of programmes by television; cable television broadcasting; cable television services; communication of information by television; interactive services for facilitating the recording of television programmes; operation of cable television systems; operation of television cable networks; pay television broadcasting; provision of access to television via decoding apparatus; rental of cable television equipment; subscription television broadcasting; television broadcast transmissions; television broadcasting; transmission of television programmes; cellular radio telephone services; cellular telephone communication; communications by telephone; mobile telephone communication services; provision of communications by telephone; telephone communication services; transmission of information by telephone; transmission of messages by telephone; Internet portal services; Internet service provider (ISP) services; Internet services providers (ISPs); provision of user access to the Internet

   Class 41: Distribution (other than transportation) of television programmes; distribution of radio and television programmes (rental of programme material); distribution of television programmes (rental of programme material); hire of televisions; pay television entertainment; production of cable television programmes; production of radio and television programmes; production of television programs; rental of facilities for the production of television programmes; rental of television programmes; television entertainment; television programme distribution (other than transportation); television studio services; publishing of books; arranging of sporting events; event management services (organization of educational, entertainment, sporting or cultural events); organisation of ceremonial events; organisation of entertainment events; organisation of musical events; organising events for cultural purposes; organising events for entertainment purposes; organising of entertainment and social events; academies (education); academy education services; arranging of exhibitions for educational purposes; career counselling (education or training advice); physical education; physical education instruction; physical health education; primary education services; providing information, including on-line, about education, training, entertainment, sporting and cultural activities; provision of educational information; provision of on-line forums for education or entertainment; publication of educational materials; publication of educational texts; rental of educational apparatus; amusement machine entertainment services; arranging of entertainment; arranging of exhibitions for entertainment purposes; children's entertainment services; club services (entertainment or education); conducting of exhibitions for entertainment purposes; dissemination of entertainment material; entertainment; live entertainment; live entertainment production services; organisation and conducting of dance, music and other entertainment festivals; organisation of competitions (education or entertainment); organisation of contests (education or entertainment); organisation of entertainment events; organisation of exhibitions for entertainment purposes; organisation of fairs for entertainment purposes; organising events for entertainment purposes; organising of entertainment; organising of entertainment and social events; party planning (entertainment); pay television entertainment; production of audio entertainment; production of live entertainment; providing facilities for entertainment; providing information, including on-line, about education, training, entertainment, sporting and cultural activities; provision of an online chat room/forum for entertainment purposes; provision of club entertainment services; provision of entertainment facilities; provision of live entertainment; radio entertainment; rental of domestic entertainment apparatus; rental of entertainment apparatus; social club services (entertainment, sporting and cultural services); television entertainment; theatre restaurants (entertainment); video entertainment services; video game entertainment services; adventure playground services; children's adventure playground services; producing of motion pictures, plays and videos; rental of apparatus for the playing of games; arranging parties; master of ceremony services for parties and special events; organisation of parties; rental of toys; arranging of beauty contests; beauty school services; organising of beauty contests; organising of beauty pageants; telephone games; Internet games (non-downloadable); providing digital music (not downloadable) from the Internet; hire of DVDs; rental of DVDs

   Trade Mark:                PIMP MY FACE

2. Following examination, the application was accepted for possible registration and advertised as such in the Official Journal of Trade Marks on 25 January 2007.

3. On 24 April 2007, Viacom International Inc (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade mark.

4. The opponent served and filed evidence in support of the opposition. It comprised a declaration by the Vice president of the opponent Michelena Hallie. The declaration provides details of the opponent’s television programme “Pimp my Ride”, and products associated to it.

5. The applicant has not filed or served any evidence, nor has it participated in the opposition proceedings.

6. The opponent asked to be heard and the matter came before me as a delegate of the Registrar of Trade Marks, in Melbourne on 16 September 2008.  However, as the applicant indicated that it would not appear at the hearing, the opponent elected not to appear but rather to rely on written submissions.

7. The Notice of Opposition cited all grounds of opposition available to the opponent under the Act; however, in its submissions the opponent only relied upon the grounds of opposition under sections 44 and 60.  For the sake of completeness, my reading of the evidence indicates that all other grounds of opposition are not supported and I treat them as having been abandoned.

   Discussion

8. The opponent is the owner of trade mark 1043405 PIMP MY RIDE with a priority date of 24 February 2005 and registered in the following goods and services:

   Class 9: Sound, video and data recording and reproducing apparatus for storing, recording, transmitting and reproducing sound and/or images; amusement apparatus for games for use with a television screen or video monitor; computerized or electronic amusement apparatus; computer software; computer games; electronic games; video games; compact-disc-read-only memory games; audio output games; game cartridges for computer video games and video output game machines; computer games cassettes; computer game programs; computer game tapes; sound and video recordings; phonograph recordings; records; cinematographic and photographic films; motion picture films and videotapes; MP3 players; digital cameras; mobile telephones and all types of wireless mobile phone equipment and accessories including mobile phone face plates; ring tones understood in the context of downloadable ring tones, music, MP3s, graphics, games and video images for wireless mobile communication devices; wireless transmission and mobile communication devices allowing voting and receiving of voice and text messages with other wireless mobile communication devices; sunglasses/eyeglasses; magnetical data carriers containing images and/or sound; laser discs; video discs, compact discs; CD-ROMs; CD-I's; digital versatile discs (DVD's); tapes; videocassettes; cartridges, cards featuring motion picture films, news, sports and television series, documentaries, game shows, variety shows, reality based television shows, animation, concerts and other performances; memory carriers; interactive compact discs and CD ROMs (compact disc read-only-memory); carrying cases for cassettes and compact discs; interactive electronic games to use with computers, television/broadcast
   
   Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; magazines; periodical publications; books and newspaper; paper and cardboard articles; writing instruments, pencils, pens, notepads, writing pads, greeting cards, transfers (decalcomanias); figurines (statuettes) of papier mache; instructional and teaching materials; writing machines, office machines and typewriters; printed publications; booklets, catalogues; guides; carrier bags; paper bags; pamphlet; brochures; news sheets; printed programs; crayons; paint brushes; erasers; rulers; pencil sharpeners, pencil boxes and cases; pencil holders; posters; photograph albums; ring binders; folders; note-books; diaries; calendars; postcards; drawing (graphic); stickers; stencils, bumper stickers, fine paper, gift vouchers; labels, note-paper, paper packaging materials, paper tissues, printing paper, tickets, wrapping paper, writing paper, cardboard, printed computer programs; paper tape and cards for use in data processing; parts and fittings for all the aforesaid goods
   
   Class 25: Clothing, outerwear clothing; sportswear; leisurewear; casual wear; swimwear; nightwear; footwear and headgear; T-shirts; belts; scarves; jackets; suits; trousers; skirts; stocking; tights; neckties; gloves; sweaters; dresses; blouses; shirts; hats; caps; boots; shoes; slippers
   
   Class 38: Broadcasting and telecommunications services; cable and satellite transmission services; wireless mobile phone services; providing downloadable ring tones, music, MP3's, graphics, games, video images and information for wireless mobile communication devices; providing wireless transmission of uploading and downloading ring tones, voice, music, MP3's, graphics, games, video images, information and news via a global computer network to a wireless mobile communication device; voting and polling through a wireless mobile communication device; sending and receiving voice and text messages between wireless mobile communications; providing on-line voting system via the Internet or a wireless communication device; Internet services which should be understood to include communication services, including transmitting streamed sound and audio-visual recordings via the Internet
   
   Class 41: Educational, teaching and training, entertainment, sporting and cultural services, including production of radio and television programs; production of films and live entertainment features; production of animated motion pictures and television features; cinema and television studios; motion picture entertainment, television entertainment and live entertainment performances and shows; publication of books, magazines and periodicals; providing information on the applicant's television programming services to multiple users via the world wide web or the Internet or other on-line databases, including on-line voting system; production of dance shows, music shows and video award shows; comedy shows, game shows and sports events before live audiences which are broadcast live or taped for later broadcast; live musical concerts; tv news shows; organizing talent contests and music and television award events; organizing and presenting displays of entertainment relating to style and fashion; providing information in the field of entertainment including by means of a global computer network

9. Section 44(2) of the Act states:

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar services see subsection 14(2).

   Note 3:For priority date see section 12.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

10. To establish this ground the opponent must show to my satisfaction that it (or indeed, a third party) owns a registered or pending trade mark which:

    ·    has an earlier priority date than the application;

    ·    is substantially identical or deceptively similar to the trade mark of the application;  and which

    ·    has a specification of goods or services which is similar or closely related to that of the application.

11. The opponent’s cited trade mark has an earlier priority date than the application, and the specification of services in classes 38 and 41 are similar to those of the application. Therefore the key issue to be decided is whether or not the competing marks are either substantially identical or deceptively similar.

12. The opponent directed my attention to the definition of deceptive similarity in section 10 of the Act and to the classic test propounded by Windeyer J in Shell Co. of Australia v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415.

13. My attention was also drawn to the authorities holding that a mark will be found to be deceptively similar to another mark if it takes a prominent and distinct feature of that mark[1], that most persons recall a mark by general impression[2] and commonality of the idea of a mark was important in such recollection[3].

    [1] Seven-Up Co v Bubble Up Co. Inc. (1987) 9 IPR 259; De Cordova v Vick Chemical Co. (1951) RPC 271; Saville Perfumery Ltd v June Perfect Ltd (1941) 1B IPR 44; Polaroid Corp. v Sole Pty Ltd [1981] 1 NSWLR 491 at 497-498

    [2] De Cordova v Vick Chemical Co. (1951) RPC 271.

    [3] Jafferjee v Scarlett (1937) 57 CLR 115, per Latham CJ at 121-2.

14. The opponent further submitted that the first portion of a word is by far the most important for assessing the likelihood of confusion[4] and that the assessment of deceptive similarity requires consideration of the use of the respective marks, including the nature of the trade involved[5].

    [4] London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264; Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505

    [5] An Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774.

1. The expressions “pimp” or “pimp my” are not specifically defined in evidence or submissions. However, it is evident from the exhibits to the Hallie declaration that the verb is American urban slang, roughly meaning “to improve” or “to make more attractive”, much like the older Anglo-Australian slang expression “to tart up”. In the context of the opponent’s television programme, it describes the customizing of a person’s otherwise nondescript motor vehicle into something far more attractive to the show’s target audience.

2. While the state of the register of trade marks is not determinative, I note that the marks PIMP MY TV and PIMP UP YOUR LIFE have already been registered, and PIMP MY PET, PIMP MY TAX and PIMP MY PORRIDGE have been accepted for possible registration. They tend to confirm my opinion as to the understanding of “pimp my” in the present trade mark.

3. Therefore, I cannot agree that the expression “pimp my” is a distinctive feature of the marks. I am not satisfied that there is likely to be any confusion in the marketplace. I find that this ground is not established.

4. The remaining ground relied upon by the opponent was that of similarity to a mark that has acquired a reputation in Australia.

5. Since the application was filed on 22 September 2006, the unamended section 60 ground shown below is relevant to this opposition:

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

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

   (a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
   (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For priority date see section 12.

6. I have already determined that the application is not substantially identical with or deceptively similar to PIMP MY RIDE, so this ground is likewise not established.

   Decision

7. Section 55 of the Act provides:

   Decision

   55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

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

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

   Note:  For limitations see section 6.

8. I have found that the opponent has been unsuccessful under each of the grounds listed on the Notice of Opposition.

9. The trade mark application may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal against this decision, I direct that registration shall not occur until any appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s direction or order.

   Costs

10. The opponent sought costs in the matter. As the applicant has been the successful party and there is nothing before me to suggest that I should not apply the general rule, I award costs against the opponent in accord with the Official scale as set out in Schedule 8 of the Regulations to the Act.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    17 December 2008