Western Australia Sports Centre Trust Trading as VenuesWest v M.G. Investment Holdings Pty Ltd

[2016] ATMO 133

TRADE MARKS ACT 1995

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

Re:Opposition by Western Australia Sports Centre Trust, trading as 'VenuesWest' to registration of trade mark application 1729568 (41) – PA PERTH ARENA (Device) - filed in the name of M.G. Investment Holdings Pty Ltd

Delegate:

Nicholas Smith
Decision on the Written Record

Decision:

2017 ATMO 133

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 58 considered – s58 established in relation to a limited range of services – Amendment of mark to remove goods not made - registration refused

Background

1.       This is an opposition brought by the Western Australia Sports Centre Trust, trading as 'VenuesWest' (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘Act’) to registration of the trade mark subject of the application detailed below in the name of M.G. Investment Holdings Pty Ltd (‘Applicant’):

Application Number:	1729568
Priority Date:	2 November 2015
Services:	Class 41: Arranging of festivals; Arranging parties; Video game entertainment services  (‘Applicant’s Services’)
Trade Mark:	(‘Trade Mark’)

2.       Following advertisement on 24 March 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’) on 11 April 2016. The SGP was assessed by this office as adequate. The Applicant filed a Notice of Intention to Defend on 25 April 2016. The SGP raised a ground of opposition pursuant to s 58 of the Act. The Applicant, on 25 April 2016, amended the Trade Mark to remove a large number of services for which the Trade Mark had originally sought to be registered.

Evidence

1. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 15 June 2016.  This evidence consists of a declaration made on 15 June 2016 by Dianna Adler, Manager Planning, Research and Reporting of the Opponent, with Attachments 1-8 (‘Adler 1’). 

2. The Applicant filed Evidence in Answer to the opposition (‘EIA’) on 29 September 2016.  This evidence consists of a declaration made on 29 September 2016 by David Mulligan, Director of the Applicant (‘Mulligan Declaration’).

3. The Opponent filed Evidence in Reply to the opposition (‘EIR’) on 22 November 2016.  This evidence consists of a declaration made on 22 November 2016 by Dianna Adler (‘Adler 2’).

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities.  By letter issuing from IP Australia on 1 February 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  Neither party chose to file submissions in this matter.

5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by section 55 of the Act which relevantly provides that, unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide on the basis of the written record, comprised of the materials mentioned in the previous paragraphs:

   (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.

   The Opponent

6. The Opponent is the owner of Perth Arena, a live entertainment, music and sports venue situated at 700 Wellington St, Perth Australia.

7. Adler 1 and 2 contain the following claims/statements:

   ·     In August 2012 the Opponent paid advertising agency BrainCELLS to develop a logo for Perth Arena.  BrainCELLS developed a logo that is identical to the Trade Mark.

   ·     Perth Arena was opened to the public on 10 November 2012.  The Trade Mark has been used by the Opponent since the day the venue was opened, including being featured in its official opening invitations.

   ·     The Trade Mark is used extensively through Perth Arena including on doors, windows and signage within the venue, on material distributed to customers in connection with events held at Perth Arena and on its website.  Its usage would be classed as use for entertainment, recreational, sporting and cultural activities, festival sand events, provision of facilities for events, organisation and non-financial sponsorship of events and competitions and provision of information relating to the aforesaid services over the Internet.

   The Applicant

8. The EIA provides no details about the Applicant.  Rather the Mulligan Declaration states that the Opponent has not demonstrated prior use of the Trade Mark in the provision of the same or similar services for which the Trade Mark is sought to be registered.

   Grounds of Opposition, Onus and Standard of Proof

   11. As indicated above, in the SGP the Opponent nominated s 58 of the Act as a ground of opposition. 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 2 November 2015, being the filing date of the application in Australia (‘relevant date’) (except in circumstances, not present here, in which a different priority date is provided for in the Act).[3]

   Discussion

   Section 58 – Applicant not owner of trade mark

   12. Section 58 of the Act is reproduced below:[4]

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

   [2] Following 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, see also s 29(1) Trade Marks Act 1995 (Cth).

   [4] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased the unpublished decision of the Registrar’s Delegate in respect of the opposition to Trade Mark Application No. 1678345 – Heavens Woodfire Pizza - in the name of Melambada Pty Ltd.

   Section 58. Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

9. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[5]

   · that the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[6] and

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[7]

   [5] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

   [6] Re Hicks’ Trade Mark (1897) 22 VLR 636.

   [7] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

10. The ground based on s 58 of the Act was particularised in the SGP as follows:

    The Perth Arena trademark (ref. 1727902 and 1729568) was developed by Western Australia Sports Centre Trust, trading as VenuesWest for the Western Australian Government owned entertainment Venue, 'Perth Arena' at 700 Wellington St, Perth, 6000. The trademark was used from the day the venue opened which is 10 November 2012. The trademark style guide from November 2012 and evidence of its use from 10 November 2012 can be provided upon request.

11. I find that the Opponent has used the Trade Mark as a trade mark from November 2012.  Adler 1 and 2 contain clear evidence that the Trade Mark (or a mark identical to the Trade Mark) had been developed by the Opponent and had been adopted by the Opponent in November 2012.  There is no evidence of any use of the Trade Mark by the Applicant prior to the relevant date.  The first and third factors referred to above are satisfied.  However, in order for the Opponent to succeed under this ground it is necessary to show that the second factor is satisfied, namely that the Applicant’s Services are the ‘same kind of thing’ as the services the Opponent used the Trade Mark for. 

12. In respect of the ‘same kind of thing’ the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews stated as follows:

    The “same kind of thing” in respect of the goods or services of the parties does not equate to goods or services which may be “of the same description” (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same source). It is a narrower test that applies in the context of a claim to ownership[8]. …

    In respect of the Applicant’s services, I am not aware of any court authorities which discuss whether services may be “the same kind of thing” as goods, although the Registrar has at times considered the question. For example in The Hoyts Corporation Pty Ltd v Hoyt Food Manufacturing Pty Ltd[9] the delegate considered the service of providing refreshments for immediate consumption (such as hot tea and coffee) not to be the same kind of thing as those goods in packaged, dry form to be later prepared for drinking. In James Arthur Daemar v Howe Laboraties, Inc[10] the delegate considered that the “treatment of common metals and their alloys, motors and engines” was not the same kind of thing as a conditioning additive for motor oil on the basis that the additive achieved only a temporary change in engine performance, not a transformation of the type contemplated by class 40.[11]

    I do not consider these cases assist me here. The first of the above examples involve goods which are everyday, supermarket items and their preparation does not require any particular expertise. The second of the examples involves services which are not necessitated by the goods, in that treatment of metals, motors and engines (in the ‘transformation’ sense contemplated by class 40) does not necessarily require a conditioning additive for motor oil.

    Here, the question is whether the claim to ownership of the Trade Mark in respect of skylights and associated goods might extend to building construction, repair and installation services relating to those goods. I am inclined to believe that it does. Building construction services relating to skylights, windows and roof vents is likely to entail the construction of those goods with varying degrees of size and complexity, ranging from skylights, windows and roof vents for use in residential homes to skylights, windows and roof vents that may span office foyers or hotel entrances. A manufacturer of such goods would reasonably be expected to have the expertise to provide those services, and use of the Trade Mark in respect of the goods would, I consider, entitle the manufacturer to ownership in respect of the services of constructing them.[12]

    [8] Colorado Group Limited v Strandbags Group Pty Ltd (‘Colorado’) [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340.

    [9] [2003] ATMO 61.

    [10] [1996] ATMO 48.

    [11] Australia adopts the Nice Classification of Goods and Services, and in the sixth edition of it (relevant at the time of the decision) the Explanatory Notes to class 40 stated that that class “includes, in particular services relating to transformation of an object or substance and any process involving a change in its essential properties” but did not include maintenance or repair services of the type contemplated by class 37.

    [12] Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103, [14]-[18].

13. The Opponent’s evidence establishes that the Opponent owns and operates Perth Arena, a live entertainment, music and sports venue and that they had used the Trade Mark at the relevant date in connection with the following services:

    ‘Entertainment, recreational, sporting and cultural activities and events; provision of facilities for events, including entertainment, recreational, sporting and cultural events; organisation and non-financial sponsorship of entertainment, sport, cultural and recreational events and competitions; provision of information relating to the aforesaid services over the Internet’ (‘Opponent’s Services’)

14. Following the logic of the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews I am prepared to find that the Opponent’s Services are the same kind of thing as ‘Arranging of festivals; Arranging parties’ since the offering of events including entertainment and recreational events (which would include festivals and parties) would require some degree of organization of those events.  An entity that offers services including entertainment and recreational events would reasonably be expected to have the expertise to provide services relating to the arranging of festivals and parties, and use of the Trade Mark in respect of entertainment and recreational events would entitle the service provider to ownership in respect of services relating to the arrangement of these events.

15. However I do not find that the Opponent’s Services are the same kind of thing as ‘Video game entertainment services’, which appear to have very little connection to the services provided by the Opponent under the Trade Mark prior to the relevant date. 

16. I find that the Opponent has established the ground of opposition under s 58 with respect to ‘Arranging of festivals; Arranging parties’ but has failed to establish it with respect to ‘Video game entertainment services’.

    Decision

17. Section 55 of the Act relevantly provides:

    55Decision

    (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

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

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

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

    Note:For limitations see section 6.

18. The ground under s 58 of the Act has been established in respect of ‘Arranging of festivals; Arranging parties’ but not with respect to ‘Video game entertainment services’. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

    My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[13]

    [13] [2014] FCA 1304, [232].

19. The Applicant has been provided with the opportunity to amend the Applicant’s Services to remove the ‘Arranging of festivals; Arranging parties’, allowing the Trade Mark to proceed to registration for ‘Video game entertainment services’.  On 10 October 2017 the Applicant’s representative filed a request, purportedly on behalf of the Applicant, requested the amendment to the Applicant’s Services to remove ‘Arranging of festivals; Arranging parties’. 

20. However this office now been made aware that the Applicant was deregistered on 28 December 2016 and therefore the request made on 10 October 2017 could not have been a request on behalf of the Applicant.  On 18 October 2017, I wrote to the parties indicating that I would not treat the 10 October 2017 request for amendment as a valid request but providing the parties to file an application for assignment if any rights the Applicant had to the mark had been transferred to a third party prior to deregistration.   No such application was received by the 1 November 2017 deadline.  

21. As the Applicant, by reason of its deregistration, has chosen not to take up the opportunity to amend the Applicant’s Services. I therefore find that the Opponent has established the ground of opposition it raised pursuant to s 58 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

    Nicholas Smith
    Hearing Officer
    Oppositions and Hearings
    2 November 2017