Winton Shire Council and the Waltzing Matilda Centre Limited v Brenda Mauriceen Lomas

[2000] ATMO 90

TRADE MARKS ACT 1995

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

Re:Oppositions by WINTON SHIRE COUNCIL and by the WALTZING MATILDA CENTRE LIMITED to registration of trade mark application 749100 (in classes 29, 30, 31, 35, 42) - WALTZING MATILDA- filed in the name of BRENDA MAURICEEN LOMAS.

Background

Ms Brenda Lomas ("the applicant") has filed trade mark application 749100.  She seeks to register the trade mark WALTZING MATILDA in respect of various goods and services, as follows:

Class 29:      Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats; foodstuffs and prepared foods included in this class

Class 30:      Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery; biscuits and cakes; ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice; foodstuffs and prepared foods included in this class

Class 31:      Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt

Class 35:      Services in class 35 namely, advertising; business management and administration; accountancy; franchising and licensing services including the appointment of franchises and licensees and the conduct and management of same; retail and wholesale services relating to acquisition, supply and sale of foodstuffs, beverages and groceries; statistical analysis; information surveys and marketing research; publicity press releases and supervision of promotional campaigns; consultancy services in regard to the above services

Class 42:      Services in class 42 namely, the establishment, operation and conduct of outlets, venues and facilities for the supplying and provision of meals and refreshments, including restaurants, cafes, food outlets, meal rooms, dining venues, eateries, cafeterias, canteens, snack bars, takeaway stores and fast-food outlets; providing foodstuffs and beverages to the said outlets, venues and facilities; catering services; advisory and consultancy services pertaining to the said services.

Three parties, two of whom are represented in the present proceeding, oppose registration of this application.  The two ("the opponents") are the Winton Shire Council and the Waltzing Matilda Centre Limited ("WMC").  Of these, WMC is the operator of a tourist centre and major tourist attraction in Winton, in central Queensland, called the Waltzing Matilda Centre.  It will be convenient, unless the contrary appears, to use WMC to indicate both the company and the centre it operates.  WMC was established under the auspices of Winton Shire Council.  Two of the directors of WMC are representatives of the Shire Council.

The opponents filed evidence in support, and served a copy of this on the applicant.  The applicant did not rely on evidence in answer to the opposition and so the opponents requested their opposition matters be heard.  I conducted that hearing under delegation from the Registrar of Trade Marks.

At the hearing, the applicant was represented by Ms Carmen Champion of Counsel, instructed by John Spence and Associates, Solicitors.  Matthew Hall, solicitor, of the solicitor firm of Dunhill, Maddern and Butler, Brisbane, represented the opponents.  To all practical purposes, the hearing was of a single matter at the behest of two opponents acting jointly.

Evidence

The opponents relied on a declaration by Ian Jempson, the manager of WMC.  Mr Jempson has occupied that position since December 1998.  Annexed to his declaration are exhibits IJ-1 to IJ-9, which shed light on the formation and corporate sponsorship of the WMC and the history of the song Waltzing Matilda.

The WMC, which opened in April 1998, is the outcome of a concerted effort, three years prior to that, to promote and celebrate the centenary of the first public performance of the song.  The centenary event attracted 15,000 people to the town of Winton. 

The words to the song were written by Banjo Patterson and set to music in collaboration with Christina McPherson.  The song was written at Dagworth Station, about 100 kilometres north-west of Winton, in 1895.  The first public performance of the song was in Winton, in April of that year.  However, other parts of the opponents' evidence suggest that the town of Kynuna, which is considerably closer to Dagworth than is Winton, has also promoted itself as connected with the song.

Excluded Evidence

On 15 June 2000, the day of the hearing, the opponent filed a further declaration, asking, under regulation 5.15, for permission to serve a copy of some further evidence and rely on it in these proceedings.  That material consists of a further declaration by Mr Jempson, with two exhibits.  I have denied the opponents permission to do this and I now set out my reasons for doing so.

The first of the new exhibits simply expands on a theme already strong in Mr Jempson's original declaration, that no stone was left unturned in seeking to fund a Waltzing Matilda tourist package for the town of Winton.  The second exhibit attaches two proposals that also predate the commencement of the WMC.  One proposal is apparently a concept study for what the WMC might consist of.  The second is for what it might be enhanced by, if the consultant's report was accepted:  proposals for "beauty and style" and "hype and excitement".  What follows this, however, is simply an outline for proposed equipment and for a menu for the Waltzing Matilda Kitchen at the WMC.

After hearing the opponent's submissions, I decided there was little merit in introducing these items so late in the piece without a much better explanation of their relevance and of why they were not uncovered earlier.  I was, and am, far from satisfied that these materials are likely to have a significant effect on the outcome of the proceeding.

Issues and Decision

In general terms, Mr Hall, on behalf of the opponents, argued that the trade mark WALTZING MATILDA was:

• not the property of the applicant in view of first use by WMC and/or Winton Shire Council.  This is a ground of opposition under s 58 of the act.

• deceptive unless there was a proper affiliation with the town of Winton. This is a ground that may, depending on the facts of the case, arise under either Section 43 or 60 of the Trade Marks Act 1995 ("the act").

I will deal with those issues in order, noting that, in terms of s 55, the opponent bears the responsibility of establishing any ground of opposition on which it relies.

Ownership

As to ownership of the mark, it is clear that, in the absence of any earlier use by the applicant, ownership is to be determined at the filing date of the application, 20 November 1997.  At that date, the Waltzing Matilda Centre was unfinished.

Mr Hall noted that the evidence showed that $430,000 had been spent in advertising and marketing the centre, starting in early 1997 once the construction of the centre had commenced.  He argued that the marketing activities of WMC, to promote foodstuffs and the service of providing these, were trade mark use.  He included under that heading all of the significant activities that preceded the opening of the WMC.  Mr Hall relied on the trading and promotional activities of WMC, in relation to food items generally, to defeat the applicant's claim to ownership of the identical trade mark in relation to food and to services such as the franchising and operating of venues for the sale of food. 

Mr Hall also argued that it was sufficient for a claim of ownership to be made in respect of "very close" services - they did not need to be utterly identical.  He relied on the decision of Gummow J in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) AIPC 91-049 to support his case that the relationship between the opponent's alleged trade in food to defeat the applicant's claim, not just in relation to food, but in relation to franchising etc.

Ms Champion, for the applicant, took issue with this.  She noted, quite correctly in my view, that for a claim to ownership to succeed, the claim had to be in respect of "the same kind of thing", and that this is a narrower test than simply being closely related.  Gummow J, in Carnival v Sitmar, supra, accepted that ocean cruises originating in different ports were not sufficiently different as to overcome a conflict of ownership.  However, nothing in Mr Hall's submission convinces me that a claimed ownership in relation to goods ought to preclude ownership by another in relation to restaurant and other related services, or vice versa.

More tellingly, Ms Champion argued that, on the evidence, neither WMC nor Winton Shire Council was using the trade mark WALTZING MATILDA for conducting a trade in goods or relevant services at the filing date of the application under attack.  She argued that, on the evidence, the use relied on by the opponents was not the use of a trade mark in relation to goods or services offered for sale under the mark.  Rather, the opponents had promoted the WMC as a venue celebrating the origin of the song in question, a song that none the less belonged to the nation, as the opponents' own evidence repeatedly asserted.  If there was a perception that food was served or sold at the WMC, there was no perception, she claimed, that the words WALTZING MATILDA were in use as a badge of origin, to indicate a trade source of the foods or other products in question.

Mr Hall, in reply, buttressed his argument by reference to Buying Systems (Australia) Pty Ltd v Studio Srl (1995) 30 IPR 517. He argued that, from that case, the preliminary steps necessary to trade in goods, together with the requisite intention to conduct such a trade could establish ownership in respect of goods. In Studio, the use was found to be in:

• the actions of approaching potential magazine advertisers and printing letterheads and related stationery

• having an intention to conduct a trade in a magazine and

• subsequently conducting such a trade. 

This was very much different, he said, to the sort of use made of KENT GOLDEN LIGHTS, where no actual intention to trade was evident.  In that case, Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414; 3 IPR 545, Deane J noted, at IPR 557:

In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade. There was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used. The cigarette packets and associated advertising material were delivered to Philip Morris to demonstrate what Loew’s was marketing in other countries and what Philip Morris might market, under licence from Loew’s, if it decided to manufacture and trade in the goods in Australia and to use the mark locally at some future time. There was no relevant trade in the goods in Australia and the delivery of the cigarette packets and associated material to Philip Morris did not, in the circumstances, constitute a relevant user or use in Australia of the mark KENT GOLDEN LIGHTS for the purpose of indicating or so as to indicate a connection in the course of trade between the new cigarettes and Loew’s.

In Studio, supra, Gummow J relied on an assessment of evidence of dealings with potential advertisers - who ultimately became actual customers for advertising space in the magazine.  Gummow J found that:

These steps amount to sufficient activity by the opponent to produce the result that the applicant for registration at the date of its application on 8 December 1983 could not accurately put itself forward as claiming to be proprietor of the relevant mark. The activities of the opponent were sufficient to constitute a relevant use of the mark in Australia for the purpose of indicating or so as to indicate a connection in the course of trade between it and the new magazine. This is not a case where those activities occurred without any existing intention to offer or supply the magazine in trade. The case is quite different from activities of the nature discussed in Moorgate. 

It is a mistake to draw an analogy between the present matter and the circumstances of the trade in magazines, at issue in Studio.  Transactions with advertisers, rather than customers, are a mainstay of successfully publishing a magazine.  The advertisers are the ones who provide a very large part of the revenue of the business.  Trade mark use has been found even in relation to a magazine or publication that is given away to customers.  See "REALTOR" Trade Mark, Application by Estate Agents Co-Operative Ltd - 20 IPR 54 and also “GOLDEN PAGES” Trade Mark [1985] FSR 27 and “VISA” Trade Mark [1985] RPC 323.

I fully accept that, in promoting the to-be-opened centre, WMC had a clear intention to operate a tourist attraction dedicated to the song that it portrays as an unofficial national anthem.  Prior to that, Winton Shire Council and the bodies acting either with it or under its aegis had a very definite intention to put on a unique cultural event.  They sought extensive sponsorship for that event from a very wide range of companies and government agencies.  Sponsorship for the centre was also sought from those same bodies.  However, the connections, between the opponents and those funding or sponsoring bodies, and between the opponents and the public who saw the promotion of the to-be-opened centre, were not relationships involving the use of a trade mark for either goods or relevant services.  The words WALTZING MATILDA were used as the name of the upcoming centre, not as an indication of an offer to trade in, or to designate the origin of, goods or relevant services either then on offer or to be offered.

I accept that there is necessarily a connection of sorts between a sponsor and the event or centre that it sponsors.  The same could be said about, for example, the relationship between a baker and his/her banker prior to the commencement of the operation of a bakery.  However, there is nothing in the cases to which Mr Hall referred to suggest that mere business necessity is enough of a link on which to hang a claim to ownership of a trade mark.

Even if the preliminary dealings were trade mark use, it was use in relation a proposed cultural centre.  That is, according to Mr Jempson, the way the proposal was put.  I am not convinced, however, that there was, on these details, an offer to trade in any services at all, even those of a cultural centre.  Ms Champion is right when she argues that, either way, this is a far cry from any commerce under a trade mark used in relation to food or to any of the services specified in the current application.

Therefore, the opposition fails in relation to the question of ownership.

As to deception or confusion, I will dispose of s 43 immediately.

Inherently deceptive - section 43

This provides:

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.

Mr Hall asserted that the reputation of the WMC gave rise to a connotation that will attract the action of s 43. He argued that some form of Winton affiliation would, at the filing date, have been expected. He argued that the connotation was inherent in the mark because of the strong and widely known historical links between the town and the song.

I disagree.  I accept that a significant number of people have long been familiar with the history of the song.  I accept, too, that the opponents have built on this, promoting the "bush" or Australiana aspects of their activities in relation to accommodation, food and drink.  None the less, the song, as Ms Champion argued, has outgrown both its origins and any possible exclusive link with either opponent.  As a song, it belongs to and indicates Australia as a whole. 

That is the backdrop against which the opponents' claims must be measured. There is nothing about that situation that would suggest to anyone that the words in question, used as a trade mark by the applicant in respect of any of the goods or services it has specified, inherently denoted any sort of affiliation between the goods or services so marked and the town of Winton, the Winton Shire Council or the WMC. Therefore, the opposition fails under s 43.

Deceptive because of prior reputation - s 60

The other ground of opposition to which allegations of potential deception or confusion are relevant is s 60. This provides:

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.  A trade mark is deceptively similar to another trade mark if it so nearly resembles that other mark that it is likely to deceive or cause confusion.

Note 2:  For priority date see section 12.  The priority date in this case is the filing date, 20 November 1997.

Ms Champion attacked the opponents' case on the threshold question of the extent of their reputation at the relevant date.  She noted that the WMC was not in operation at that date. However, the extent of publicity and promotion is difficult to ignore.  I believe, therefore, that I should accept the general trend of the evidence as showing that, in November 1997, there was a significant number of people who knew of the planned centre.  It is conjectural just how much those people would have known about the specifics of what the centre was planned to do.  However, I think it is a fair inference from the evidence that a great many people were familiar, if not with the WMC as such then with the food and catering aspects of the Waltzing Matilda Centenary held at Winton in 1995.  Many of them would have the perception that the event was to lead up to some sort of regular event or tourist fixture in the town.

The test, that being so, is this.  Is any notional use of the words WALTZING MATILDA, in the way that trade marks are normally used by, variously, the manufacturer of relevant goods, a restaurateur, a restaurant franchising operation, or a trader in the other specified class 35 services, reasonably likely to cause deception or confusion?  Here I rely on Smith Hayden & Co. Ltd.'s appn (1946) 63 RPC 97 at 101. That decision addressed the UK Trade Marks Act 1938. However, it will, for present purposes, sit well enough with s 60 of our own legislation, though I note that there are critical differences in the drafting that may at other times intrude. To quote from Smith Hayden's application:

Having regard to the reputation acquired by the name 'Hovis', is the Court satisfied that the mark applied for, if used in a normal or fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?

I note, in saying this, that the opponent bears the responsibility of establishing a case under s 60. The applicant, unless that is done, has no case to answer.

I find nothing in this evidence that suggests that the applicant, in conducting a trade in any relevant goods, or restaurant services, or the specific class 35 services in question, would produce any significant risk of deception or confusion.  Given that the song in question is part of the heritage of all Australians, it would be an unusual person who had more than the idlest speculation about an affiliation between either the applicant or its goods and services and the opponents.  This would be so even if the applicant were to open a (franchised or otherwise) restaurant in Winton or if stores there choose to sell her goods.  Any speculation that arose in such a case would be due primarily to proximity or other circumstances of trade, not to the trade marks at issue.

The more general run of idle doubts and speculations that may arise from use of the trade mark are outside the concerns of the Trade Marks Act 1995, as the Full Federal Court has recently made clear.  See Registrar of Trade Marks v Woolworths [1999] FCA 1020. There, speaking for a majority, French J recast the law set out under the 1955 act.

A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

French J indicates that the section is triggered if "some people" will be caused to wonder.  However, I do not believe that he was attempting to modify his previous stipulation, for which there is long-standing authority in a case to which he had just referred, that the doubt that must afflict the "ordinary" person must be a "reasonable" one. 

French J was speaking of the terms of s 44, which governs some of the dealings of the registrar with applications that are under examination. I believe that an opponent, who is required to establish a ground under s 60, faces the same practical problem. Such an opponent has the advantage of being an advocate of its own cause, and of being able to rely on evidence but, under s 55, it has the burden of making a case.

In this instance, that is something the opponents have not done. The opposition therefore fails under s 60 also.

Conclusion

The oppositions have failed on all grounds.  My decision is that the application should be registered.  I direct that registration proceed unless, within 30 days of the date of this decision, the registrar is served with a copy of a notice of appeal.  In the event of such an appeal, I direct that registration not occur before the appeal is decided or discontinued.

I direct that the opponents each pay one half of the applicant's costs in terms of the official scale.  In the event of dispute, and on payment of the fee for doing so, those costs will be taxed, allowed and certified on the following basis:

• the scale cost of receiving and perusing a single notice of opposition,

• 20% of the scale cost for receiving and perusing a second notice of opposition. 

• the scale costs for a single opposition beyond that point, at which, from the applicant's point of view, the two oppositions entirely coalesced.

Terry Williams
Hearing Officer

17 August 2000