Vincent Kevin Lowe v Racing Australia Ltd

[2017] ATMO 20

TRADE MARKS ACT 1995

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

Re:Opposition by Vincent Kevin Lowe to registration of trade mark application 1666433(16, 35, 41 & 42) - RACING AUSTRALIA & Device - in the name of Racing Australia Limited.

Delegate:

Jock McDonagh

Representation:

Opponent: Written submissions only

Applicant: Miriam Stiel & Kimberley Evans of Allens Patent & Trade Mark Attorneys

Decision:

2017 ATMO 20

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 60 and 62A considered – neither established – trade mark to proceed to registration

Background

1. This is an opposition brought by Vincent Kevin Lowe (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) to registration of the trade mark subject of the application detailed below in the name of Racing Australia Limited (‘the Applicant’):

Application Number:

1666433

Priority Date:

24 December 2014

Goods/Services:

Class 16: Paper, cardboard and goods made from these materials; printed matter including books, periodicals and promotional and publicity materials; stationery

2.     Class 35: Advertising; business management and business administration; collection, compilation, analysis and dissemination of data and statistics; business information; office functions; public relations; all of the foregoing services including providing such services online

3.     Class 41: Collection, compilation, analysis, publication and dissemination of entertainment, sporting and racing information, including providing such services online

4.     Class 42: Hosting of websites and online databases; internet portal services (hosting); hosting platforms on the internet for management of sporting and racing events and for the presentation of data relating to sporting and racing competitions and events; creating indexes of online information; online provision of web-based applications

Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied

Trade Mark:

(‘the Trade Mark’)

1. During the course of examination, registration 1644339 (see [10] below) was cited under s 44 of the Act; however, a letter of consent was obtained from the owner of that registration and the Trade Mark was accepted under s 44(3)(b) of the Act.

2. Following the advertisement in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration on 11 June 2015, the Opponent filed a Notice of Intention to Oppose on 23 June 2015.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 22 July 2015. The Applicant filed a Notice of Intention to Defend on 24 September 2014. The SGP raised grounds of opposition under sections 60 and 62A of the Act.

   Evidence

3. The Opponent filed Evidence in Support of its opposition on 14 January 2016.  This evidence consists of a declaration made on 14 January 2016 by the Opponent, with an assortment of attachments (‘the Lowe Declaration’).

4. The Applicant elected not to file any Evidence in Answer and requested a hearing to decide the matter.

5. I heard the matter in Canberra on 23 February 2017 as a delegate of the Registrar of Trade Marks. Miriam Stiel & Kimberley Evans of Allens Patent & Trade Mark Attorneys represented the Applicant. The Opponent elected not to attend the hearing.

6. Prior to the hearing I directed the Opponent to file an outline of submission by 9 February 2017 and the Applicant to file submissions by 16 February 2017. The Applicant complied with directions but the Opponent did not file its ‘outline of arguments’ until 21 February 2017. The Opponent had also sent an email on 17 February 2017 to this Office, pointing out alleged anomalies in the examination process such that the Trade Mark had been accepted in the face of trade mark registration 1644339, in the name of Racing Victoria Ltd, with a priority date of 1September 2014, for the mark shown below:

7. In the email the Opponent also pointed out that he had filed trade mark application 1657903 on 13 November 2014 that had been rejected by the Registrar. The applied for mark is shown below:

8. I decided to accept both documents as submissions. The attorneys for the Applicant did not object to this course of action. I will discuss the issues raised by the email later in this decision.

9. As a delegate of the Registrar of Trade Marks I am to decide the opposition as required by s 55 of the Act which provides that, 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.

   Grounds of Opposition, Onus and Standard of Proof

10. As indicated above, in the SGP the Opponent nominated grounds of opposition under sections 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

11. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 24 December 2014, being the filing date of the application (‘the Priority Date’).[3]

    [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32]

    [2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd[ 2015] FCAFC 156, [133].

    [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595

    Discussion

    Section 60

12. Section 60 of the Act is reproduced below:

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

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

    (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

13. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the Priority Date there was another trade mark that had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.

14. In his declaration the Opponent states that he registered the domain name <racingaustralia.net> on 22 July 1999 and has actively operated, with his partner Kristen Manning, a website at the corresponding address since that date. The web site relates to the thoroughbred racing industry. The Opponent and his partner are both apparently well-known and experienced in the horse-racing industry, with the Opponent having been employed by the Moonee Valley Racing Club for some 34 years and Ms Manning being an experienced racing journalist and author, and pedigree manager.

15. One of the attachments to the Lowe Declaration is a photograph of a 2003 National Media Award for the web site A copy of an article written by Michael Sharkie in the Age newspaper on 7 November 2007 refers to “a ‘popular online racing forum racingaustralia.net’ and ‘the racingaustralia forum’”.

16. The Lowe Declaration states that Ms Manning has managed a number of ‘Racing Australia Syndicates’, which part own a number of very successful thoroughbred race horses. The Lowe declaration further states that the relevant racing industry body will no longer accept the Opponent’s syndicate names that include ‘Racing Australia’.

17. The Lowe Declaration also states that the Opponent and Ms Manning manage a number of social media networks that link to the web-site and includes a Racing Australia Facebook Group, which is said to have 5,853 members.

18. There is no supporting evidence demonstrating what the Opponent’s website looked like at the Priority Date or currently, nor anything to enable me to assess the website.

19. The evidence and submissions are not entirely clear as to what the Opponent is claiming as a trade mark, whether it be the domain name ‘racingaustralia.net’ or the syndicate name ‘Racing Australia’. The domain name has been used since 1999 and the syndicate name since 2006.

20. Neither putative trade mark is capable of supporting this ground of opposition. Both are comprised of entirely descriptive terms. Indeed, the Opponent was advised by the trade mark examiner of the non-distinctive nature of his unsuccessful application number 1657903. It is worth noting that the Trade Mark and the trade mark subject of registration 1644339 are composite marks that include distinctive devices that render the respective marks as wholes capable of distinguishing the relevant goods and services despite their also including the descriptive words ‘racing Australia’.

21. The evidence only shows that the Opponent has used RACING AUSTRALIA as a business name in relation to various syndicates of race-horse owners. There is a suggestion that the online forum supported by the website is called RACING AUSTRALIA.

22. Even if the Opponent had used racingaustralia.net and/or Racing Australia [Syndicate] as trade marks, there is no evidence of either having a significant reputation as at the Priority Date.

23. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (“McCormick”)[4] by Kenny J at [81] – [82]:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [4] (2000) 51 IPR 102

24. Further, at [86], Kenny J said:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

25. I am not satisfied that the Opponent has used RACING AUSTRALIA as a trade mark at all. However, even if he had done so, there was no evidence of reputation such that use of the Trade Mark would be likely to deceive or cause confusion. The non-descriptive elements of the Trade Mark, in particular its device element, effectively distinguish the mark as a whole from the bare descriptive words elements of the Opponent’s business name/claimed trade mark. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

    Section 62A

26. Section 62A of the Act provides:

    Application made in bad faith

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

27. Bad faith was judicially considered in Fry Consulting Pty Ltd v Sports Warehouse (No 2) wherein Dodds-Streeton J stated:

    Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character…

    The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[5]

    [5] [2012] FCA 81 [164].

28. While there is no direct evidence regarding the Applicant, I gather from the Lowe Declaration and submissions from both parties that the Applicant is the peak national administrative body for thoroughbred horse racing in Australia. In common with a number of sporting bodies in Australia, it seems to have adopted as its business name the descriptive term for its sport (‘racing’) followed by the descriptive term for its area of authority (‘Australia’). Like the Opponent, the Applicant would not be able to register its business name as a word trade mark because its descriptive nature would likely be required for use by other traders without improper motives.

29. As I have discussed under the s 60 ground, there has been no evidence of trade mark use of RACING AUSTRALIA by the Opponent. The registration by the Applicant of a composite trade mark, which includes its distinctive device as well as its descriptive business name, does not appear to me to be in any way “unscrupulous” or “underhand”. The registration, by itself, does not prevent other traders without improper motives from using the descriptive words for the sake of their ordinary meaning.

30. I am not persuaded that the Opponent has discharged the onus of establishing that the Applicant, as at the Priority Date, applied for the Trade Mark in bad faith, in the sense that in all the circumstances, persons adopting proper standards would regard the decision to apply to register the Trade Mark as being in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.

31. Accordingly I find that the s 62A ground of opposition has not been established.

    Decision

32. The Opponent has failed to establish any of the grounds of opposition.  Trade Mark application no. 1666433 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

33. In the event that the Applicant prevailed, the attorneys for the Applicant sought an award of costs. The general rule is that 'costs follow the event', such that a successful party has a reasonable expectation of being awarded costs against the unsuccessful party. As the successful party, the Applicant is therefore entitled to its costs and I accordingly award costs against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

    Jock McDonagh

    Hearings Officer

    Trade Marks Hearings

    1 March 2017