Wiley Publishing Inc v Moondance Pictures Pty Ltd

[2004] ATMO 70

TRADE MARKS ACT 1995

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

Re:Opposition by Wiley Publishing Inc to registration of trade mark application 876215(9, 16, 21, 24, 25, 28, 41) - UPSIDE DOWN CARTOON MAN - filed in the name of Moondance Pictures Pty Ltd.

Delegate:	Terry Williams
Representation:	Opponent: Dr Mary Turonek, Lord and Co, attorneys Applicant: Carmen Champion, counsel, instructed by Slaters, lawyers
Decision:	S 52 opposition: applicant’s mark does not have a connotation (s43) and is not deceptively similar to opponent’s device (s44 and 60). Trade mark to be registered.

Background

1. Moondance Pictures Pty Ltd (Moondance) has applied to register the following trade mark

   in classes 9, 16, 21, 24, 25, 28, 41.  In broad terms, the goods and services in question include (by way of example only) electronic apparatus and games (class 9), stationery and books, domestic equipment and utensils, linen and textile goods, clothing, toys (including electronic games in class 28) and entertainment services in relation to stories, and the direction and production of television and radio entertainment.

2. IDG Books Worldwide, Inc, (IDG) opposed registration.  It is the American publisher of the familiar “… For Dummies” books and all of its grounds of opposition arise from the registration, use, reputation or connotation of a cartoon device used in or on, among other things, the cover and the text of these books. 

3. Subsequent to the filing and service of evidence in support, answer and reply as per Part 5 of the Trade Mark Regulations, Wiley Publishing Inc (Wiley) asserted that it had acquired the right or interest on which IDG had relied to oppose registration.  Consistently, Wiley has also been recorded as the new registered owner of trade mark 760393, as shown below.  In the remaining paragraphs I will refer to this registered trade mark as “the Wiley device”, using that term to cover both that exact device and various minor variants.  Wiley’s actual registered device is as follows:

4. After the filing of evidence in support, answer and reply the matter was listed for hearing, which I conducted.  I am now to decide the opposition under delegation from the Registrar of Trade Marks.

5. At that hearing, Wiley was represented by Dr Mary Turonek, attorney, of the attorney firm of Lord and Co.  Carmen Champion of counsel, instructed by Slaters, solicitors, appeared for the applicant.

   Grounds of opposition

6. Wiley relied on three grounds, under sections 44, 43 and 60.

7. It will be convenient to dispose of s 43 first.  This reads:

   Trade mark likely to deceive or cause confusion

   43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

8. As to the proper and narrowly construed meaning of “connotation”, Ms Champion noted the Full Federal Court decision in T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 at para 43. There Wilcox, Kiefel & Emmett JJ said:

   “The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in those sections.  It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others.  So the alleged deception or confusion is not for a reason covered by section 43”.  

   She therefore urged me to decide that, similarly, the case put by Wiley did not involve a connotation.

9. Dr Turonek, for her part, submitted that there was another way of reading this critical paragraph.  In the quote above, she submitted, “it”, in reference to the case made by Big Country, did not refer to the generality of such cases but to the specifics of the facts on which Big Country relied.  That case, at paras 51-66, turned on facts that were all post filing and therefore clearly not, she said, ever able to establish a connotation.  I do not believe that her argument, while doing no violence to the quote, is the correct reading of the decision.  The court rejected, emphatically, the argument being run by Big Country under s 43.  That the specifics of use by others was not even addressed in getting to that point is significant.  The details of the evidence put up by Big Country were not, on my reading of the decision, germane to the failing of the s 43 aspect of the rectification case.  They became material only when s 41 came into issue later in the decision.

10. Accordingly, I believe that the correct reading of the decision is that there is a class of cases, of the type described, that cannot succeed under s 43.

11. Dr Turonek, however, argued strongly that, even so, the case here for the opponent is not at all analogous to that put by Big Country in TGI’s, supra.  She reminded me that the extent of usage made by the opponent prior to the filing date is very extensive indeed.  The usage, she said, had established the device used by Wiley as something of a symbol.  The connotation of a sign, she continued, was something that arose out of a cultural context. 

12. Ms Champion was critical of this abstract notion of a cultural context as being very vague and thus not advancing the debate.  However, I do not agree.  Words have meanings, implications and suggestions only because these arise through use and familiarity.  Sometimes these result in dictionary entries, in other instances they are not so easily documented and must be got at from opposition evidence.  Hence in Amalgamated TV -v- Clissold 52 IPR 207 at page 218, the hearing officer noted:

    The word “connotation”, in this context, refers to that which is implied within a trade mark itself, in addition to its essential or primary meaning.  It is possible that evidence can reveal such a connotation.  This can occur when it is convincingly shown that there is a perception, among people in an intended market, that a mark is so related to one party that use of the same mark by another would be deceptive and confusing because purchasers might incorrectly infer some sort of endorsement or relationship.

13. It seems to me, therefore, that it is impossible to decide if a sign has a connotation without looking at it in its place in our society and our culture.  This, in more concise terms, is its cultural context.

14. It is quite clear from the evidence that the device used by Wiley is one of the features of its books – where it is often prominent on the cover - and related items.  It also turns up in advertisements, on bookmarks and leaflets.  Even so, it is hard to see whether that device was, at the filing date, analogous to BRAVEHEART, SUMMER BAY, CONFEST etc.  The books on which Wiley’s case is primarily based are more or less ubiquitous and have been for some years[1].  Even so, I do not think that, in the public mind, the Wiley device connotes approval or any sort of licence by Wiley or its predecessors.  This is so even though there are many people who would recognize the Wiley device as a feature of the “… For Dummies” books. 

    [1] In the evidence in support there is reference to an AC Neilson 2000 study.  This is said to have concluded that, in respect of  the “DUMMIES MAN” logo trade mark, there is 52% brand awareness and that 16% of the Australian population has purchased a “… For Dummies” book.  Neither the actual survey result nor its methodology is in evidence so I cannot give it great weight.  However, the quoted details seem to me to be consistent with what the evidence otherwise supports.

15. Such recognition arises from eyesight and memory.  Recognition does not translate directly into any of the sorts of things that can amount to a connotation.  Connotation arises in the subsequent reflections of the observer, or, to adopt Dr Turonek’s words, it comes from the cultural context in which the viewing and the recall have occurred.  Thus, to re-use an example I have applied in an earlier opposition, the word Stradivarius is probably recognized whether used in relation to cheese or to violins but has a connotation only in relation to the latter.  On the present evidence, I conclude that the opponent’s case here is within the category of arguments that the Federal Court has indicated are unable to succeed.

16. Moreover, in the present case, the argument being put by Wiley has another level of abstraction.  Wiley would have it that the applicant’s mark has a connotation because of the extent to which, in itself, it resembles the Wiley mark.  Over and above what I have said in the previous paragraphs, and for reasons which follow, I do not agree that there is sufficient resemblance.  The applicant’s trade mark therefore simply would not have the necessary connotation, even had all the other elements of section 43 been present.  This ground has not been established.

    Deceptive similarity

17. This is a key concept in the remaining arguments put by Wiley, under both s 44 and s 60, the terms of which I will not set out in full.  My conclusion is that the requisite deceptive similarity of the competing marks is not present, and that Wiley has thus not established a ground under either section.  This applies equally to the mark as registered by Wiley (s 44) and to the slight variants that arise in actual use (s60).  I will now explain this conclusion.

    Definition of deceptively similar

    10. For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

18. Ms Champion made much of the individual differences between the two marks, which she categorized as follows

    1.   the sharply defined triangular head;

    2.   the overly large round eyes giving the character the look of wearing glasses;

    3.   the pointy chin;

    4.   the ears which straddle the glasses;

    5.   the pointing finger.

    In the case of the applicant’s mark, she noted:

    1.   the upside-down depiction of the cartoon character;

    2.   the rounded top of the head with its spiky black hair;

    3.   its long face emphasized by the length of the nose;

    4.   the quizzical expression resulting from the lifted eyebrows and the smiling mouth;

    5.   the small extended ears.

19. In combination these elements, she argued, made up a meaningful whole which determined the impression the mark would leave: Newton Pty Ltd v Apple Computer Inc [2000] ATMO 55.

20. Dr Turonek countered that the case law generally supports a view that the prospect of imperfect recollection is not displaced by a comparison of details.  She noted various authorities such as Shell Co of Australia v Esso Standard Oil (Aust) Ltd, Australian Woollen Mills Ltd v FS Walton & Co, and De Cordova v Vic Chemical Co.   From the latter she drew the caution: “in most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or by some significant detail, than by any photographic recollection of the whole”.

21. Obviously, the first point of difference between the disputing marks is that the device of the head and shoulders in the applicant’s mark is inverted.  Dr Turonek noted, however, that given “the relevant course of business and way the particular class of goods are sold” (Australian Woollen Mills, supra) many of the relevant goods would likely be sold through book sellers and department stores in their retail book outlets.  The goods are, on the whole, likely to be displayed with the front covers facing outwards, or the spine of the book facing outwards from book shelves.  Alternatively, the goods may be displayed in piles on table tops where the goods may be readily accessed by consumers, picked up and replaced on the so called piles or shelves.  The arrangement of the goods may be haphazardly placed in the course of the trading day, and it is, she argued, overall quite likely that the goods may be rearranged such that the graphic devices and trade marks may appear upside down or inverted.

22. This is a relevant circumstance, and one that has before now authorized a finding of deceptive similarity.  See Joosse Agencies Pty Ltd v Maglificio Biellese Fratelli Fila SpA[2].  However, in that case, the trade marks in dispute were such that the opposed mark much more resembled an F when inverted than a J when seen right side up.  Thus, there was no readily apparent feature, name or identity by which the two marks could be distinguished when one of them was inverted.  As the Hearing Officer put it (emphasis added):

    The only noticeable difference between the F logo of the opponent and what might be described as the inverted F logo of the applicant is the relative thickness of their individual integers and their respective square and rounded ends.  The trade marks are otherwise virtually identical when one or the other of them is inverted.

    [2] (1985) 5 IPR 411; (1986) AIPC 90-265

23. In the present matter, as the hearing officer had also noted in Joosse, the competing trade marks cannot be readily ascribed names that allow them to be distinguished.  They are plainly a head and shoulders logo and an inverted head and shoulders.  Dr Turonek referred to exhibit MR24, which sets out, from left to right, the applicant’s mark, the Wiley mark, and an inverted version of the applicant’s mark.  I note, but attach no weight to, the fact that the Wiley mark as shown in this exhibit is actually a mirror-image of the registered trade mark.  Similarly, MR 20, which purports to show the actual registered trade mark, is also a mirror image.  Nothing turns on this mirror-imaging, and I note that from time to time the opponent does use the device in the form shown in MR20 and 24, eg MR13 and 18, where left and right-hand versions are used on the same pages.  In some exhibits, the hand that is most typically pointing may, instead, be holding what appears to be a CD ROM.  At other times, the device is used without the hand showing, though these instances appear to be comparatively rare and I give them little weight for s 60 purposes.

24. The net effect of MR24 is to emphasize the similarities of the competing marks when compared side by side.  This is particularly so in the somewhat unlikely case where the opponent’s device is flanked by accurate and inverted renditions of the applicant’s mark.  It is clearly indisputable that there are many points of similarity.  However, comparison of device marks is very often a matter of first impression.  The present case is one that illustrates just how possible it is to have marks that create a very different first impression while being built up of various features in common. 

25. I believe the difference in impression may be due to the grotesquely oversize eyeballs of the Wiley device, which might perhaps be taken to be spectacles.  These gain prominence by being framed by the oversize ears, which they overlap.  The eyeballs are also emphasized by the pointing finger: both finger and eyes appear to have a common focus, whether in registered or mirror-imaged form.

26. I think, too, that I must still attach some weight to the fact that the applicant’s mark shows an inverted drawing.  While I am fully aware of the cautions sounded by Dr Turonek and by the earlier Joosse decision, I think some weight must be given to the inversion.  The potential for goods to be displayed upside-down is simply something that has to be allowed for as one of the surrounding and relevant circumstances.  Conversely, however, there is nothing to show that swing tickets, relatively common on clothing and referred to in Joosse, are a common feature of the goods or services nominated by the applicant.  I am aware that, for example, music CDs are sold from bargain bins where disorder is the norm.  However, the chances of a mistake arising from this cause seem to me to be remote.

27. Dr Turonek drew my attention to my earlier decision in Knoll AG v American Home Products[3].  That was a case where the marks at issue were depicted below:

    [3] 2002 ATMO 112; or (2004) 59 IPR 565, where it is reported as Knoll v Wyeth.

     

28. In that case, I had already expressed my opinion that the majority of the population might perceive the two marks as different.  I went on, however, to explain that, in the recollection of a still-significant element:

    the essence of the competing marks will, in the minds and perceptions of a substantial number of people, be of a stick figure giving an impression of exuberant energy in a setting with both circular and strong diagonal whirling elements. 

29. This analysis was directed to the existence and extent of a confusion that would not, in my view, have existed at all in the minds of the majority.  Such an approach was open where the devices were undetailed and relatively abstract stick-figures but is, I think, less persuasive when the competing devices are cartoon figures that, as well as being less abstract, have quite marked points of distinction.  Again, it is of some weight that one mark is inverted.  In the present instance, my view is that the possibilities of confusion, while not vanishingly small or utterly fanciful, are not significant.

30. Finally, I would make one observation with regard to the evidence as it relates to s 60.  I note that there appears to be little emphasis on the use of the Wiley device as a trade mark.  There has been much use of the device, and some at least of the use would undoubtedly qualify as trade mark use.  But what reputation the device in question may have is not primarily as a trade mark so much as a feature of various “…For Dummies” books etc.  In my opinion, such reputation as there might be in this device is inextricable from concurrent use with the “… For Dummies” books etc.  Therefore I am far from satisfied that normal and fair use of the present mark by the applicant, absent such a context, on any of the goods or services specified, would cause any deception or confusion at all.  If this matter goes elsewhere on appeal, no doubt that matter will be traversed at greater length.

    Conclusion

31. The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

32. I direct that Wiley pay the costs of the applicant to the extent set out in the scale.

    Terry Williams
    Hearing Officer
    Trade Marks Hearings
    30 November 2004