WW Australia Pty Ltd & Village Themepark Management Pty Ltd v Trust Company Limited

[2009] ATMO 107

TRADE MARKS ACT 1995

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

Re:Oppositions by WW Australia Pty Ltd & Village Themepark Management Pty Ltd to registration by Trust Company Limited of trade mark applications:

1113596 (41 & 43) WHITEWATER WORLD

1113607 (25 & 35) DREAMWORLD’S WHITEWATER WORLD; and

1133755 (9, 14, 16, 21, 24, 28, 30 & 35)

Delegate:

Michael Kirov

Representation:

Opponents: Eric Ziehlke, of Chrysiliou Law

Applicant: Ben Fitzpatrick of Counsel, instructed by Shauna Ross of DLA Phillips Fox

Decision:

2009 ATMO 107

Section 52 oppositions: sections 42(b) and 60 pressed – trade marks not deceptively similar – insufficient relevant reputation in Opponents’ trade marks –oppositions not established. Costs awarded against the Opponents.

Background

1. These are oppositions brought jointly by WW Australia Pty Ltd and Village Themepark Management Pty Ltd (“the Opponents”) pursuant to s.52 Trade Marks Act 1995 (“the Act”) to registration of the trade marks subject of application numbers 1113596, 1113607 and 1133755 in the name of Trust Company Limited (“the Applicant”).

2.     Because each of the three oppositions relies on somewhat different evidence, because each of the opposed marks is different and because, moreover, the goods and/or services covered by each of the opposed applications are different, I have found it expedient in my decision to discuss each opposition separately.  Nevertheless, all three oppositions have a number of things in common and these are firstly mentioned below.

The Parties

3.     The Applicant, through its exclusive licensee, operates two “theme” or amusement parks located adjacent to each other at Dreamworld Parkway, Coomera, on the Gold Coast of Queensland.  The first of these, named “Dreamworld”, features “13 themed worlds” as well as various amusement and action rides and has continuously operated since 1981 under this name.  The “Dreamworld” name is of course featured in opposed trade marks 1113607 and 1133755.  I mention that the Applicant is the registered owner of more than 20 registrations dating from 1973 for the trade mark DREAMWORLD covering a wide range of goods and services, including a registration dating from 1983 covering “Amusement services, amusement centres and parks, pleasure grounds and entertainment services, cinemas and theatres” in Class 41.

4.     The Applicant’s second theme park, the focus of these oppositions, is a “surf to beach themed amusement park”[1] that features water-based amusement and action rides along with water-based activities such as surfing classes.  It has traded under the names WHITEWATER WORLD, DREAMWORLD’S WHITEWATER WORLD and WHITEWATER WORLD by DREAMWORLD since 5 December 2006, although significant advertising and promotional activity took place in the months leading up to the official opening of the theme park on that day and advance ticket sales commenced from 1 September that year.  I refer hereafter to this second theme park as “the Applicant’s Park”.

[1]Gregg declaration, paragraph 16

5.     The Opponents, too, operate an amusement park on the Gold Coast with a water-based theme.  Notwithstanding changes in its ownership and its operators over the years, this theme park has continuously operated from the same site since 1984.  Its original trading name was CADES COUNTY WATER PARK.  In 1986 it was renamed WET’N’WILD/WATER PARK.  Finally, its name was changed to its current one, WET’N’WILD/WATER WORLD[2], in 1997.  I refer hereafter to this theme park as “the Opponents’ Park”.  I mention that ownership and operation of the Opponents’ Park is closely related to that of two further long-established theme parks situated on or near the Gold Coast named SEA WORLD and WARNER BROS. MOVIE WORLD.

[2] Usually rendered in the Logo format shown below in paragraph 22 when in use, although separate use of WET’N’WILD and WATER WORLD independently as names and trade marks is also claimed by the Opponents.

6.     At the heart of these oppositions is the Opponents’ contention that each of the opposed trade marks so nearly resembles one or more of three trade marks which have been used in relation to the Opponents’ Park that confusion or deception in the marketplace was likely to result if the opposed marks were used for similarly themed amusement parks and ancillary goods or services in 2006 when the opposed applications were filed.  Applications 1113596 and 1113607 were filed on 12 May 2006 and application 1133755 on 6 September 2006 (“the Relevant Date(s)”).

7.     I heard these matters as delegate of the Registrar of Trade Marks on 6 May 2009 in Sydney.  Ben Fitzpatrick of Counsel, instructed by Shauna Ross of DLA Phillips Fox, appeared for the Applicant.  Eric Ziehlke of Chrysiliou Law, Patent and Trade Mark Attorneys, appeared for the Opponents.

The Grounds of Opposition

8.     The Opponents filed their Notices of Opposition (“the Notices”) to applications 1113596 and 1113607 on 3 October 2006 and to application 1133755 on 22 June 2007.

9. The Notices all list a large number of grounds corresponding to various provisions of the Act. Mr Ziehlke however confirmed prior to the hearing that in the case of all three oppositions the Opponents would be pressing the grounds based on sections 42(b) and 60 of the Act only. These grounds are discussed below in relation to each of the oppositions in turn, where I have found it convenient to firstly examine the s.60 ground before then discussing the s.42(b) ground. As a formal matter, I note the remaining grounds listed in the Notices are not established.

10. Since all three opposed applications were filed prior to 23 October 2006, (when amendment to section 60 made by the Trade Marks Amendment Act 2006 came into force), the section applies as it stood prior to such amendment[3].  The relevant section is set out below:

[3] See Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 80

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.

11. As regards the s.42(b) ground, Mr Ziehlke confirmed at the hearing that the Opponents would argue use of the opposed trade marks would be contrary to law because it would constitute:

·misleading or deceptive conduct, contrary to s.52 Trade Practices Act, 1974 (“the TPA”);

·false representations as to sponsorship or approval or affiliations, contrary to section 53 of the TPA; and/or

·the common law tort of passing off.

12.   With respect to both grounds the parties’ representatives agreed that the relevant class of persons likely to be concerned with the goods and services offered by the parties under their respective trade marks (“the Target Market”) comprises young adults, children and those with children or possibly grandchildren, that is to say a substantial proportion of the population as a whole.

Onus

13. Mr Fitzpatrick submitted that in light of the “presumption of registrability” the Opponents would need to show a reasonable probability of confusion or deception in order to succeed under their s.60 or s.42(b) grounds and he cited several Federal Court decisions which have considered this issue. In accordance with IP Australia’s current practice, however, I confirm that I am proceeding on the basis that the Opponents need only establish one or both of their grounds of opposition on the balance of probabilities[4].

[4] Following Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599, in which the cases cited by Mr Fitzpatrick were all considered. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

1. Opposition to Application 1113596 WHITEWATER WORLD in Classes 41 & 43

14.   Details of the opposed applications are as follows:

Application Number:  1113596

Trade Mark:  WHITEWATER WORLD

Priority Date:       12 May 2006

Services (“the Services”):             Class: 41

Theme and amusement parks; amusement rides; action rides; entertainment centres; amusement arcades; pin-ball parlours; services provided by theme and amusement parks; the provision of amusement grounds; cinemas and theatres; function venues; amusement and entertainment services, recreational, sporting, educational and cultural programs and activities; live performances; production of sports and entertainment spectacles including circuses; publication of arts and entertainment materials; production and publication of entertainment programs, television and radio programs, music and other audio, audio-visual, interactive and multimedia programs and material in any medium including on-line; production and publication of cinematographic films, videotapes, cassettes, compact discs, CD-ROMs, DVDs, recording discs, games and programs; publication of books and periodicals in printed or electronic form including "talking books" (other than publicity texts); conducting and arranging competitions; conducting and arranging seminars; conducting and arranging exhibitions; conducting and arranging functions; rental of entertainment products including videos; rental of sporting products and equipment; photography

Class: 43

Provision of food and beverages; restaurants; take-away outlets, cafes; catering services; temporary accommodation, accommodation reservation

15.   The parties served and filed Evidence in Support, Evidence in Answer and Evidence in Reply relating to the opposition to application 1113596 as set out below:

Evidence in Support

▪ Statutory Declaration by Elizabeth Swann made 28 March 2007, with Exhibits ES-1 to ES-4

▪ “First” Statutory Declaration by Graham McHugh made 18 April 2007, with Exhibits GEM-1 to GEM-5

▪ “Second” Statutory Declaration by Graham McHugh made 18 April 2007, with Exhibits GM-1 to GM-10

▪ “Third” Statutory Declaration by Graham McHugh made 18 April 2007, with Exhibits G1 to G6

Evidence in Answer

▪ Statutory Declaration by Stephen Gregg made 12 February 2008, with Annexures A-L and Exhibits SG-1 to SG-83

Evidence in Reply

▪ Statutory Declaration by Stephen Peet made 19 September 2008

▪ Statutory Declaration by Michelle Gai Gorton made 29 September 2008, with Annexures A to E

▪ Statutory Declaration by Adrian Kenneth Goldsmith made 27 October 2008, with Exhibits AG-1 to AG-3

▪ Statutory Declaration by Timothy Patrick Carrroll made 27 October 2008

Discussion

Section 60

16.   To establish their s.60 ground the Opponents need to show that as of the 12 May 2006 filing date of application 1113596:

·there existed another trade mark to which the WHITEWATER WORLD mark is at least “deceptively similar”;

·which had acquired a reputation in Australia;

·such that use of the WHITEWATER WORLD mark for the Services would be likely to deceive or cause confusion amongst a substantial number of the Target Market.

17.   Mr Ziehlke indicated that there were in fact three trade marks used by the Opponents prior to the Relevant Date to which the Opponents say the opposed mark is deceptively similar and which, it is claimed, had garnered the kind of reputation contemplated by s.60.  The three trade marks, (hereafter collectively “the Opponents’ Trade Marks”), are:

·     (a) WATER WORLD (occasionally used independently of the collocation WET’N’WILD WATER WORLD, but even when used in combination with the words “Wet’n’Wild” functioning, it is claimed, as a trade mark in its own right)

·     (b) WET’N’WILD WATER WORLD (as a whole)

·     (c) WHITEWATER

18.   It is well established that in order to assess deceptive similarity trade marks should not be compared side by side.  Rather, I should attempt to assess the effect or impression produced on the minds of potential purchasers of the Services, who know of one or more of the Opponents’ Trade Marks (and perhaps have an imperfect recollection of them), when they encounter those services bearing the WHITEWATER WORLD trade mark.

19. Nor is this the same kind of abstract or notional comparison as would usually be the case for the purposes of s.44 of the Act. Here I agree with Mr Ziehlke’s submission[5] that in assessing deceptive similarity under s.60 I should take into account the actual manner in which the Opponents’ Trade Marks had been used and the nature and extent of their reputations as at the Relevant Date, this being the background against which use of the opposed mark “in a normal and fair manner”[6] for the Services would take place.

[5] Citing Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599

[6] Being the often quoted phrase of Evershed, J (as he then was) from Re Application by Smith Hayden & Co Ltd (1946) 63 RPC 97 (at 101).

20. In this regard section 10 of the Act provides that “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”. Section 60(b), for its part, indicates that it must be “because of the reputation of that other trade mark [that] use of the first-mentioned trade mark would be likely to deceive or cause confusion”. It is accordingly appropriate to first consider the nature and extent of the reputation of each of the Opponents’ Trade Marks as at 12 May 2006.

21.   Evidence concerning use of the Opponent’s Trade Marks is contained in the First McHugh declaration, (which addresses use of the marks WATER WORLD and/or WET’N’WILD WATER WORLD), in the Second McHugh declaration (which addresses use of the claimed mark WHITEWATER) and in the Swan and Peet declarations.  I discuss in turn below each of the marks relied upon.

(a) The trade mark WATER WORLD

22.   The first mark relied upon by the Opponents is the mark WATER WORLD.  Mr Ziehlke submitted that the Opponents’ evidence demonstrated it had used the words “Water World” as a trade mark in their own right in three different ways since they were adopted in 1997, as indicated below:

·     As part of the logo        (“the Logo mark”)

·     As part of the collocation WET’N’WILD WATER WORLD (sometimes rendered as WET’N’WILD/WATER WORLD), with the elements WET’N’WILD and WATER WORLD appearing on a single line, used when the Opponents’ Park is referred to in narrative format and use of the Logo mark is not practical (“the Narrative mark”); and

·     Independently of the words “Wet’n’Wild” (“WATER WORLD solus”).

23.   As Mr Ziehlke explains in his written submissions[7]:

In all the promotional material issued by the Opponents, the marks WET’N’WILD and WATER WORLD are prominently displayed.  Whenever these two marks are presented in stylized form, they are always presented on separate lines and the typestyles of WET’N’WILD and WATER WORLD are different.  The Opponents make use of a variety of typestyles for these two marks on differing goods and services, but the marks WET’N’WILD and WATER WORLD are always in differing typestyles.  There are occasions in printed material where the phrase WET’N’WILD WATER WORLD is used on a single line, but this only occurs where this name appears in narrative format and it is not possible to present the words WET’N’WILD and WATER WORLD on different lines and in different typefaces.  Quite often, the word WET’N’WILD is (sic) presented by itself and sometimes the word WATER WORLD is (sic) used without the representation of the word (sic) WET’N’WILD.  Exhibit GM-3 (sic) is an example of such use.

[7] Based on the information contained in paragraph 13 of the First McHugh declaration and in paragraph 8 of the Peet declaration.

24.   Before discussing the Opponents’ use of the words “Water World” as they appear in the Logo mark and in the Narrative mark it is convenient to first refer to use of the claimed mark WATER WORLD solus.  In fact, as Mr Ziehlke conceded at the hearing, Exhibit GEM-3 (not GM-3 as referred to in the above quote) is the sole example in the Opponents’ otherwise apparently comprehensive evidence of use of the words “Water World” independently of the words “Wet’n’Wild”.  Exhibit GEM-3 is a 2-sided “Fact Sheet”, which contains a great deal of information concerning the Opponents’ Park and bears the imprint “Compiled 17/8/98”.  The Fact Sheet is reproduced below:

25.   Amongst the 26 references to the Opponents’ Park on the Fact Sheet, the words “Water World” appear without the words “Wet’n’Wild” once only, being in the initial line which reads, “AUSTRALIA’S WORLD FAMOUS WATER WORLD!”  This may be contrasted with their occurrence as part of the Logo mark, which appears twice, and as part of the Narrative mark, which appears some 16 times.  The Opponents’ Park is otherwise referred to in the Fact Sheet some 7 times with the words “Wet’n’Wild” alone.

26.   I conclude that the trade mark WATER WORLD solus was not generally used to any significant extent prior to the Relevant Date.  Rather, use of the words “Water World” was almost exclusively confined to use as part of the Logo and Narrative marks.  Such independent usage as is shown in Exhibit GEM-3, as detailed above, is clearly insufficient to warrant further analysis in terms of the Opponents’ s.60 ground.

27.   That said, there is abundant evidence of the Opponents’ use of the words “Water World” as part of the Logo and Narrative marks, dating back to 1997, on a wide range of promotional and advertising materials for the Opponents’ Park and the cafés and food outlets contained therein.  Average annual revenue generated by the park since 2000 has exceeded $23 million (with the associated food outlets adding a further $4 million per year on average) and some $2 million of that was turned over to promotional expenditure each year.  Many examples of television, radio, print and point-of-sale promotional materials are shown in the evidence.  On average, more than 800,000 people visited the park each year over the three year period 2004-2006.  Ms Swann, a specialist researcher of online databases, attests that some 419 articles appeared in the Australian press between 1 January 1997 and the Relevant Date (that is, approximately 30 articles per year on average) “in which there was reference to the words WATER WORLD in relation to the WET’N’WILD/WATER WORLD Gold Coast theme park operated by the opponents”.  In summary, I am satisfied the Opponents’ Park has been widely promoted and marketed since 1997 by reference to both the Logo mark and the Narrative mark and am satisfied that a significant number of people in Australia would have had some awareness of the Opponents’ Park and of its name/trade mark WET’N’WILD/WATER WORLD as at the Relevant Date.  Whether it can be said the words “Water World” are functioning as a trade mark in their own right and, if so, whether the claimed trade mark had the reputation contemplated by s.60, will however need to be further examined.

28.   Mr Ziehlke submitted that the Opponents’ manner of use of the Logo and Narrative marks was such that, concurrently with being an element in these combination marks, the words “Water World” were indeed also functioning as a trade mark in their own right, independently of the words “Wet’n’Wild”.  Thus, he argued, it was still necessary to consider whether the opposed WHITEWATER WORLD mark was deceptively similar to the trade mark WATER WORLD per se.

29.   In support of this contention, Mr Ziehlke claimed the following matters in his written submissions:

·     The mark WATER WORLD is sufficiently inherently adapted to be distinctive for registration without the need for evidence of use;

·     The mark WATER WORLD has the function of distinctively describing the range of water-based activities of the Park as distinct from the mark WET’N’WILD which refers to the character and excitement of the Park;

·     The mark WATER WORLD is always presented on a separate line to the WET’N’WILD mark, except in narrative context;

·     The mark WATER WORLD is always presented in a different typestyle to the mark WET’N’WILD, except in narrative context; and

·     Both the marks WET’N’WILD and WATER WORLD are occasionally used independently of each other.

30.   In further support, Mr Ziehlke referred to Bennett J’s decision in Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 IPR 242, where her Honour concluded on the facts before her that use of the composite trade mark PRO-BIO LIVING WATERS for bottled water, (with the elements PRO-BIO and LIVING WATERS rendered in different scripts and font sizes and on different lines), did constitute separate use of the words LIVING WATERS as a trade mark in their own right. Mr Ziehlke also referred to Kolotex Glo Australia Pty Ltd v Sara Lee Personal Products (Australia) Pty Ltd (1993) 26 IPR 1. Here Wilcox J was considering whether use of the tag line “Sheer Relief for Active Legs” in three places on the Respondent’s pantyhose packaging, (twice capitalized as just indicated and the third time entirely rendered in capital letters), constituted use of “Sheer Relief” as a trade mark in its own right. His Honour held it did and thus that the Respondent’s use infringed the Applicant’s registration for SHEER RELIEF, which covered “Hosiery” in Class 25. Finally, in this context, Mr Ziehlke also referred to Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd (2006) 69 IPR 243. In this case, somewhat at odds with Mr Zielhke’s submissions, Moore J held, inter alia, that GO WACKO as used in the tag line DOGS GO WACKO FOR SCHMACKOS did not amount to use of GO WACKO as a trade mark in its own right, (notwithstanding his finding the offending WHACKOS trade mark of the Respondent deceptively similar to the tag line as a whole).

31.   In the Pro Bio Living Waters case Bennett J may well have adjudged the words “Living Waters” to be relatively more distinctive in relation to bottled water than I would admit of the words “Water World” as they appear in the Logo and Narrative marks in relation to the Opponents’ Park. Relevantly, her Honour said (at [29]):

A mark may have a descriptive element but still serve as a badge of trade origin (Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 ; 101 ALR 700 ; 21 IPR 1 (Johnson & Johnson) per Lockhart J at FCR 335; ALR 710; IPR 12 and per Gummow J at FCR 347; ALR 723; IPR 24) and there may still be trade mark use although another trade mark or indication of origin is used in the same packaging or advertisement (Johnson & Johnson per Gummow J at FCR 349; ALR 725; IPR 26; Pepsico per Sackville J at ALR 210, 213 and 216; IPR 179, 182 and 185). The use of descriptive words may, however, make it more difficult to establish that the words do so distinguish the product.

32.   In this regard I do not agree with Mr Ziehlke’s submission that IP Australia’s acceptance on a prima facie basis of the Opponents’ applications to register the words “Water World” alone for services in Classes 35, 41 and 43 indicates those words were considered, or are, distinctive in relation to those services.  (I mention in passing that those applications were filed after the currently opposed applications, which were not cited, and are themselves being opposed by the Applicant.)

33.   Nor do I agree with Mr Ziehlke’s submission that Office guidelines (found in paragraph 13.5 of Part 22 of the Trade Marks Office’s Manual of Practice and Procedure) support his contention that the words “Water World” are, as he put it it in his written submissions, “inherently distinctive”[8].  Being inherently distinctive is not a requirement for, nor is it necessarily implied by, acceptance for registration on a prima facie basis.  In my view the words “Water World”, as used in the Logo and Narrative marks, undoubtedly have a measure of descriptive significance in relation to a theme park which features water-based rides and attractions.  In his own written submissions Mr Ziehlke says “The mark WATER WORLD has the function of distinctively describing the range of water-based activities of the Park”.  Timothy Carroll, executive manager in charge of marketing the Opponents’ Park, refers to “the importance of the WATER WORLD element in signifying the particular characteristics of the Opponents’ Park” and himself uses the words in an apparently descriptive manner when describing the park’s landscaping, noting “The purpose of such landscaping is intended to provide a WATER WORLD experience involving water activities…”.  As mentioned in paragraph 25 and contrary to Mr Ziehlke’s submissions, the sole example of use of the words “Water World” independently of the words “Wet’n’Wild” shown in the Opponents’ evidence is on a Fact Sheet produced in 1998 where they appear in the phrase “AUSTRALIA’S WORLD FAMOUS WATER WORLD!”  I would here agree with Mr Fitzpatrick’s submission that in this context their use borders on the descriptive rather than use as a trade mark.

[8] Paragraph 13.5 in fact states that, “Trade marks consisting of WORLD, WORLD OF, LAND, LAND OF in combination with the name of, a direct reference to, or an attribute of, the designated goods or services will generally be considered prima facie capable of distinguishing.”

34.   It seems, too, that the Opponents themselves may have questioned how distinctive the words “Water World” were, given Mr Carroll indicates that the possibility of confusion with the Applicant’s Park “…so concerned myself and my marketing staff that we were forced to selectively introduce the BIGGEST’N’BEST slogan in place of WATER WORLD in certain communications”.  I believe it is worth noting, in addition, that despite their concerns in the months preceding the opening of the Applicant’s Park, which Mr McHugh acknowledges had “been the subject of intensive promotion leading up to and subsequent to its opening on 8 December 2006”[9], the Opponents apparently took no substantive steps by way of Court action to formally restrain use of the WHITEWATER WORLD name and trade mark. This is despite their raising in the present oppositions claims of passing off and breaches of the TPA.

[9] While nothing turns on this, I note in passing the Applicant’s evidence is that the Applicant’s Park commenced trading “on or about 5 December 2006”.

35.   That said and notwithstanding my view that the words “Water World” do not in fact contain a great deal of inherent distinctiveness in relation to a water-based theme park, I do nevertheless accept, as Mr Ziehlke submitted, that the words “Water World”, as they appear in the Logo and Narrative marks, could be said to be functioning to some extent as a trade mark in their own right and I proceed on that basis.

36.   Mr Fitzpatrick argued that, even if this be the case, the reputation of the words “Water World” as a trade mark in their own right was insufficient to trigger s.60.  Certainly I do not think it can be said the words “Water World” alone enjoyed the kind of reputation enjoyed by the Logo or Narrative marks as wholes (or, for that matter, by the words “Wet’n’Wild” alone, which the Opponents’ evidence indicates are often used alone as an alternative to the Logo and Narrative marks).  I agree with Mr Fitzpatrick that this is relevant to the question of whether the WHITEWATER WORLD mark should be adjudged deceptively similar to the WATER WORLD mark per se, to which I now turn.

37. Given the terms of ss.10 and 60 of the Act, the essential issue is whether, in view of the reputation of the trade mark WATER WORLD in its own right, (albeit acquired through use as part of one or both of the Logo or Narrative marks), use of the WHITEWATER WORLD mark for the Services was likely to deceive or cause confusion amongst a substantial number of the Target Market as at the Relevant Date.

38.   In arguing that the opposed WHITEWATER WORLD trade mark was deceptively similar, Mr Ziehlke firstly highlighted the general rules for comparison of marks as discussed by Parker J in Pianotist Co’s Application (1906) 23 RPC 774 (at 777). Here he stressed Parker J’s words that “you must consider the nature and kind of customer”, noting that tickets for both parties’ parks were often purchased remotely via the Internet or through travel agents or hotels.

39.   Mr Ziehlke also referred generally to Kitto J’s discussion on deceptive similarity in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-595, (quoted with approval by French J, as he then was, in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411). Set out below is French J’s restatement of Kitto J’s discussion with reference to the Trade Marks Act 1995:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring.  A mere possibility is not sufficient.

(ii) 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.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration.  These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark.  The question is not limited to whether a particular use will give rise to deception or confusion.  It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

40.   Mr Ziehlke, again relying on the claimed “inherent distinctiveness” of the WATER WORLD mark, noted that the words in question were wholly contained within the opposed mark.  He referred to cases, including Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97, indicating that in comparing marks in this context the degree of inherent distinctiveness of the shared element must be taken into account.

41.   For the Applicant, Mr Fitzpatrick too stressed that the inherent distinctiveness of the shared element was critical and he cited a number of cases in support.  He noted Burchett J, in comparing the trade marks VOGUE and EUROVOGUE, had said in Conde Nast Publications Pty Ltd v Virginia Taylor (1998) 41 IPR 505 (at 511-12):

At the same time, it should be borne in mind that ``vogue'’ is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant's registration, but the court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.

42.   I have already indicated my view that the words “Water World” do not contain a great deal of inherent distinctiveness in relation to a water-based theme park, notwithstanding they may qualify for registration on a prima facie basis under IP Australia’s current practice regarding such marks.  Indeed, a check of the Register suggests the desire of traders to combine the element WORLD with other, apparently descriptive, words is extremely common, with there being more than 500 current registrations for such marks in Class 41 alone.  Registration 736174 UNDERWATER WORLD owned by Oceaenis Australia Pty Ltd, which covers, inter alia, “Education and entertainment services in relation to marine and freshwater environments such as services in relation to marine parks, exhibits, displays, theme parks and exhibitions” is a pertinent example.  While the state of the Register can provide no more than an indication of what trade marks may actually be in use for particular goods or services, I am satisfied from the sheer number of registrations that the practice of combining apparently descriptive words with the word “world” is common to the trade in Class 41 services[10].  There are likewise a significant number of current registrations in separate ownership for marks of this kind covering services involving the provision of food or beverages.  In this regard it is well accepted that where an element shared by trade marks under comparison is also common to the trade generally its presence in both marks must be somewhat discounted in assessing deceptive similarity.

[10] Indeed, this is no doubt why IP Australia has seen fit to make specific reference to its practice on such trade marks in its Manual of Practice and Procedure.

43.   The Opponents’ contention that WHITEWATER WORLD is deceptively similar to WATER WORLD is of course based on the fact that both marks contain the element WATER in addition to the common element WORLD.  However it must be borne in mind that the word “whitewater”, and for that matter the words “white water”[11], have a well known meaning in their own right which is quite specific and which, contrary to Mr Ziehlke’s submission, I believe is quite different in kind from that of the word “water” per se.  The 2009 edition of the Macquarie Dictionary Online, for example, contains definitions[12] for both “whitewater” and “white water” as follows:

whitewater

// (say 'wuytwawtuh)
adjective of or relating to white water, especially river rapids: whitewater rafting.

// (say 'wuytwa

[11] In this regard the third McHugh declaration exhibits printouts from a number of (mainly third party) websites wherein the Applicant’s Park is referred to as “WhiteWater World”, (rather than, say, “Whitewater World”), a matter emphasised by Mr Ziehlke in certain of his submissions, but which I have not considered of significance in these oppositions.

[12] Reproduced in part in Annexure H to the Gregg declaration.

adjective of or relating

white water

/ (say wuyt 'wawtuh)
noun 1. any stretch of water in which the surface is broken as in rapids or breakers, due to movement over a shallow bottom.
2. water in which air bubbles are suspended, indicating the presence of fish.

44.   Taking these definitions into account and taking into account what I consider to be the low inherent distinctiveness of the Opponents’ WATER WORLD mark as a whole, I am not persuaded by Mr Ziehlke’s written submission that:

…the words WHITEWATER WORLD have almost the same meaning as WATER WORLD in the context of water theme parks.  It is submitted that when a distinctive shared element exists between two marks and the meaning of the two marks is almost the same, there is a strong likelihood that this would denote a common trade source of the relevant services and that the marks would therefore be confused.

45.   To the extent that the WHITEWATER WORLD mark does convey a similar idea to that of the mark WATER WORLD in the context of water-based theme parks, it must be remembered that this would not of itself dictate a finding of deceptive similarity.  This is particularly so where the idea is itself a common one or entails a tinge of descriptiveness.  In concluding the trade mark “Rainmaster” was not deceptively similar to the registered mark “Rain King”, (where both marks were used or proposed for use in connection with water sprinklers), the High Court noted in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 (at 539):

[T]rade marks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do.  To refuse an application for registration on this ground would be to give the proprietor of a registered trade mark a complete monopoly of all words conveying the same idea as his trade mark.

46.   Rather, said the High Court, any similarity in the idea conveyed was something that might be taken into account when the marks being compared otherwise “really looked alike or sounded alike”.  In the present case I do not think it could be said WHITEWATER WORLD really looks like WATER WORLD.  The elements the two marks share notwithstanding, the marks are visually readily distinguishable in my opinion.

47.   Nor do the two marks sound alike when considered as wholes, as they must be.  As Mr Fitzpatrick mentioned, citing London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264, it is accepted that in comparing trade marks the first words or syllables of the marks are generally the most important for the purposes of distinguishing them. Neither the word “whitewater”, nor the syllable “white”, sounds like the initial element of the WATER WORLD mark. Moreover, as suggested by the Macquarie Dictionary Online entry quoted earlier, the word “whitewater” is likely to be pronounced with emphasis on the element WHITE, thereby reducing the stress one would place on the element WATER.  By contrast, the initial element WATER of the WATER WORLD mark would I believe be naturally stressed by most people.

48.   Mr Ziehlke raised the further argument that the WHITEWATER WORLD mark might convey the impression that the Applicant was offering an “extension” of the services for which the WATERWORLD trade mark was known.  He referred in this context to Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd [1999] ATMO 39, where the Hearing Officer concerned observed:

In the present case, the words JACKEROO WORLD in the opposed mark are likely to imply a connection with the opponent, by indicating an extension of a range of goods originally sold under the mark JACKAROO.  It should be noted, however, that in light of the findings in Tecmo Kabushiki Kaisha v Tokyo Denki Kabushiki Kaisha (t/a Tokyo Electric Co Ltd) (1995) AIPC 91-177, I am not prepared to accept that it would be sufficient for the applicant's mark to be considered as substantially identical or deceptively similar simply because the opponent's mark in its entirety has been enclosed in the opposed mark.

49.   I do not however see the Jackeroo World case as relevant to the circumstances before me, where both parties’ marks feature the element WORLD, where the element WORLD is seemingly very commonly employed by traders in Class 41 services and, as mentioned, where I consider the apparently descriptive words “whitewater” and “water” to be conceptually distinguishable.

50.   In arguing against a finding of deceptive similarity Mr Fitzpatrick also pointed to the lack of evidence of significant confusion between the parties’ respective marks, notwithstanding the Opponents’ evidence in reply was settled in September and October 2008, some two years after the Applicant’s Park commenced trading.  I note in this context that the Applicant’s evidence, (contained in the Gregg declaration of 12 February 2008), indicates very substantial advertising and promotion of its new park on and around its 5 December 2006 opening day and throughout 2007.  This included promotion through various websites (including the dedicated website advertisements placed in magazines and newspapers, wide radio and television exposure (via paid commercials, cross-promotions and news coverage), media releases and competitions, extensive advertising on busses and trains and on billboards and stations in Queensland and the distribution of approximately one million flyers or brochures via, inter alia, direct mail and through hotels and travel agents.  Mr Gregg also attests to very significant ticket sales both immediately prior to the opening of the park and in the 11 months or so following the opening.

51.   I mention in passing that exhibited with Mr Gregg’s declaration are the results of two surveys commissioned by the Applicant shortly after its park commenced trading.  Mr Fitzpatrick argued these showed the Applicant’s use and promotion of the WHITEWATER WORLD mark “had resulted in significant consumer recognition”.  The findings of the surveys are challenged in the Opponents’ evidence in reply.  While nothing critical turns on this, I confirm I have not attributed significant weight to the results of the surveys.  The first was an “exit poll” asking questions of 300 people as they left the Applicant’s Park, while the second survey was conducted online and involved only 600 people.  Apart from the small sample sizes, neither survey conforms with guidelines issued by the Federal Court[13] concerning survey evidence and I am not in any event satisfied of their probative value.  While I accept the WHITEWATER WORLD mark enjoyed wide exposure in Australia in 2006 and 2007 through the activities outlined above in paragraph 50, therefore, I do not belief the survey results take matters any further.

[13] Cf Federal Court Practice Note 11.  Nevertheless, strict adherence to this Practice Note is not of itself critical in proceedings before the Registrar.

52.   Noting the WHITEWATER WORLD mark had received wide exposure by the time the Gregg declaration was made on 12 February 2008, Mr Fitzpatrick referred to cases including Solavoid Trade Mark [1977] RPC 1 (at [29]), Alex Pirie & Sons Ltd’s Appn (1993) 50 RPC 147 (at 160) and Conde Nast Publications Pty Ltd v Virginia Taylor (1998) 41 IPR 505 (at 509) indicating that, as Burchett J put it in Conde Nast, “later events may cast light upon the true position at an earlier date”.  His Honour went on to quote with approval from the judgment of Lord Tomlin (with whom Lord Russell of Killowen and Lord Wright agreed) in Alex Pirie that:

It is the user and not the registration which is liable to cause confusion, and the commercial user has not produced any proof of confusion. This fact cannot be regarded as unimportant even though allowance be made for difficulty of proof …

53.   That is not to say that the Opponents have not attempted to address the issue of confusion in their evidence.  Indeed, in his third declaration (made on 18 April 2007) Mr McHugh states:

I have arranged during the last week of January 2007 and the subsequent weeks of February 2007 for the telephone receptionist at the WET’N’WILD/WATER WORLD theme park to keep a daily log of all telephone calls in which there was apparent confusion expressed by potential consumers between the WET’N’WILD/WATER WORLD theme park and the WHITEWATER WORLD theme park.

54.   Mr McHugh exhibits to his declaration the “log of telephone calls of instances of confusion” during the period in question.  Fourteen calls are summarised in this log.  I agree with Mr Fitzpatrick, however, that at least ten of these summarised telephone calls do not on the face of it suggest the caller was confused or deceived in any relevant manner.  Enquiries such as “Are you the park that has Wiggles World?”, “Does Wet’n’Wild have a 2^nd day for free?” and “Do you offer free transport to the Wet’n’Wild?” (sic) are in this category.  Indeed, in my view at least six of the logged calls indicate the caller appeared well aware there were two water-based theme parks on the Gold Coast, with enquiries such as “Can [you] match the new park 2 days for 1 admission price?”, “Do [you] have the same offer as White Water World -2 days for 1 price?”, “Do [you] have the same 2 for 1 offer as White Water World?” and a request for a comparison of the “shaded areas of the 2 parks”.  For the Applicant, Mr Gregg further points out in his declaration that 14 telephone calls over several weeks, even if they all did demonstrate relevant confusion or deception, is likely to be a very small sample of the total number of calls received during the period monitored.  In this regard he mentions the Applicant’s two theme parks receive “in excess of 350 calls per day”.  I thus agree with Mr Fitzpatrick’s submission that, given the size of the respective businesses of the parties and the total number of visitors to their respective theme parks, the claimed instances of confusion indicated by the telephone log cannot be considered significant.  Nor in any event is it clear that the alleged confusion was actually the result of the Applicant’s use of the WHITEWATER WORLD trade mark.

55.   I note, too, that Mr Gregg annexes to his declaration a number of newspaper articles published during the months of May and June 2007 which report the Opponents’ Park had, for the first time ever, broken “the one million customer barrier” in a single financial year.  That is to say, notwithstanding the opening of the Applicant’s Park in December 2006 the number of people attending the Opponents’ Park in fact increased.  In an article published in the Gold Coast Bulletin on 24 May 2007 Mr Peet, the Opponents’ Park’s chief operating officer, is quoted as saying:

It truly is a surprise to all of us that we have achieved a million visitors to the water park…we’re extremely pleased with that.  Obviously we had new competition.

…

We wanted it clearly badged as ‘Wet’n’Wild, biggest and best’ and that strategy has worked exceptionally well for us.

…

Traditionally one would anticipate some deterioration of your attendances, but what has obviously happened is the addition of WhiteWater World has made people a lot more aware of the water park.

56.   In the Opponents’ evidence in reply Mr Peet does not deny the accuracy of the above quotes, but does “reject the assertion or implication that any maintenance or increase in the revenue of the WET’N’WILD/WATER WORLD theme park at the time of the launch of the WHITEWATER WORLD theme park indicates in any way that the names of the respective trade marks are not confused in the minds of consumers”.  Rather, he reasons that:

In response to the launch of WHITEWATER WORLD, my Company substantially increased its usual promotional expenditure during the peak business period, December 2006 to March 2007.  Together with the launch promotion of WHITEWATER WORLD, the total promotional expenditure in relation to water theme parks on the Gold Coast therefore increased substantially.  Under these circumstances, the total promotion may be likely to substantially increase generic consumer demand for Gold Coast water parks, at least at the time of the launch.

57.   I accept that the fact attendance at the Opponents’ Park increased in the months following the opening of the Applicant’s Park, to quote Mr Peet, “provides no evidence that there has not been substantial confusion in the minds of consumers between the two parks”.  On the other hand, nor to my mind does it necessarily suggest there was any relevant confusion or deception amongst a substantial number of the attendees concerned caused by the Applicant’s use of the WHITEWATER WORLD trade mark and as a result of the reputation of the Opponents’ Trade Marks.

58.   The Opponents also rely on a survey conducted on their behalf, the results of which are contained in the Goldsmith declaration, as evidence of relevant confusion or deception.  The survey was the subject of some discussion at the hearing and so I will briefly outline its methodology and findings.  Mr Goldsmith is a principal of Quantum Market Research (Aust) Pty Ltd, which he describes as “one of Australia’s leading providers of market research”, and the survey in question was conducted by telephone in September/October 2008 amongst 1000 participants.  Of these 1000 people exactly half lived in Sydney and half lived in Brisbane.  The 1000 people sampled were further selected such that there were equal numbers of males and females and equal numbers of people falling into the age groups 18-40 and 41-60.  The survey results were then “post-weighted to reflect the population profile of Brisbane and Sydney on the basis of age and gender”.  Mr Goldsmith states that in his opinion one can have “95% confidence” that “the approach adopted provides valid results”, with a margin of error of up to 3.1% for questions 1 and 3 (see below) which involved all 1000 respondents.

59.   A maximum of four questions were asked of the participants, namely:

Q1: Have you ever heard of WHITEWATER WORLD theme park on the Gold Coast?

Q2: [If so], When did you first hear of the WHITEWATER WORLD theme park?

Q3: Have you ever visited WHITEWATER WORLD theme park on the Gold Coast?

Q4: [If so], When did you first visit the WHITEWATER WORLD theme park?

60.   On the face of it the answers given indicate significant awareness of the WHITEWATER WORLD theme park at the time, with 71% of respondents claiming to know of it, of whom 17% (or 12% of all respondents) claimed to have actually visited the Applicant’s Park.  However, the follow-up answers given to questions 2 and 4 by these particular respondents, submitted Mr Ziehlke, suggest otherwise.

61.   In particular, of the 71% claiming to be aware of the Applicant’s Park only 69% (that is, 49% of the total sample of 1000) said they first became aware within the preceding 3 years.  Of the remaining 31%, 17% (or 12% of the total sample) said they first became aware between 3 and 8 years previously and 14% (10% of the total sample) said they first became aware of it more than 8 years previously.

62.   Similarly, of the 17% of all respondents who claimed to have visited the Applicant’s Park only 44% (7% of the total sample) said they did so in the preceding 3 years.  Of the remaining 56% (9% of the total sample), 24% (4% of the total sample) said they first visited between 3 and 8 years previously and 32% (5% of the total sample) said they first visited more than 8 years previously.

63.   Mr Ziehlke pointed out that since the Applicant’s Park had only traded since late 2006 and the survey was taken in late 2008, those respondents saying they had first become aware of, or visited, the park more than 3 years previously were obviously mistaken in their belief.  He reasoned that these people must be confusing the theme park named WHITEWATER WORLD with some other theme park on the Gold Coast and that the most obvious candidate was the Opponents’ Park since it “has been the only major water theme park on the Gold Coast since 1981”.

64.   Although only 22% of all 1000 people surveyed claimed to have become aware of the Applicant’s Park more than 3 years previously[14] (and thus appear to be confusing the Applicant’s Park with another theme park on or near the Gold Coast), Mr Ziehlke noted that the Opponents did not need to show that a majority of the Target Market was likely to be confused or deceived.  He referred in this context to Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300, where Kitto J said[15] that any “substantial” number of the relevant class of persons must “at least be caused to wonder” whether there was not a common trade source.  Other decisions have used the phrase “significant number” and all the cases emphasise that the size of the relevant class must also be taken into account.  In the present case, as mentioned, the Target Market includes children, young adults, and parents or even grandparents who might accompany younger children, that is a broad cross-section of the population as a whole.

[14] This 22% must, presumably, also include the 9% of all 1000 people surveyed who claimed to have actually visited the Applicant’s Park more than 3 years previously.

[15] In relation to the words “likely to deceive” contained in s.114 of the Trade Marks Act, 1905.

65.   For the Applicant, Mr Fitzpatrick cautioned against placing significant weight on the survey results as establishing relevant confusion.  He attacked the survey as not conforming with Federal Court Practice Note 11 in a number of respects and as containing a number of deficiencies.  Critically, he said, the assessment that the survey respondents were asked to make was not an assessment that reflected in any way the use of the parties’ marks in the marketplace.  He argued that the fact that some 22% of respondents were apparently mistaken as to when they first became aware of the Applicant’s Park “provides no basis for an assertion that any of the opposed marks are deceptively similar to any of the opponents’ marks, or that any risk of deception or confusion based on any reputation in the opponents’ marks, is made out”.  For one thing, he said, such an inference incorrectly assumes that people’s recollections of when certain events in the past took place are generally accurate.  He stressed too that Mr Goldsmith’s final conclusion in interpreting the survey results, namely that:

It would seem there is clear evidence of confusion of the identity of WhiteWater World in the minds of the populations of Brisbane and Sydney

“provides no basis to support any relevant ground of opposition pressed by the opponents”.

66.   I agree with Mr Fitzpatrick one needs to be careful not to place too much weight on the survey results.  The fact that 22% of those surveyed may be confused regarding “the identity of WhiteWater World”, even if this be considered a significant or a substantial number within the Target Market, does not to my mind necessarily indicate the apparent confusion was due to the reputation of the Opponents’ WATER WORLD trade mark.  Respondents were initially asked whether they had ever heard of “WHITEWATER WORLD theme park on the Gold Coast” and it might simply be the case that some of the respondents were aware that there were several theme parks on or near the Gold Coast, at least one of which they believed had a “whitewater” related theme, and assumed therefore that they could accurately answer in the affirmative.  Respondents could on the face of it reach this conclusion without having any recollection at all of the Opponents’ WATER WORLD trade mark, even if they in fact had the Opponents’ Park in mind.  Some respondents may even have had the Opponents’ SEA WORLD theme park located near the Gold Coast in mind when answering.  Such speculation does not appear unreasonable given the obviously descriptive allusion contained within the Applicant’s WHITEWATER WORLD trade mark and I accordingly consider the survey results as a whole inconclusive.

67.   As mentioned earlier, Mr Ziehlke also emphasized in his submissions that in assessing deceptive similarity the nature and kind of customer must be borne in mind.  In particular, he noted that large theme parks such as those operated by the parties involve substantial investment and need to draw a significant part of their customer base from interstate and overseas.  As he put it in his written submissions, the risk of deception or confusion was thus “increased by virtue of the fact that the purchase decision to visit such theme parks is made at infrequent intervals and the commitment to purchase may be made by consumers who are physically distant from the theme park”.  In this regard Mr Carroll indicates in his declaration that on average only 16.1% of total visitors to the Opponents’ Park originate from the Gold Coast area itself, with the balance coming from other areas of Queensland, from interstate or from overseas.  He notes that:

As a result, theme park tickets are generally arranged through travel agents, wholesalers and other organizations, or purchased on-line.  In such situations, tickets purchased to the Opponents’ Park can also be part of a multi-theme park pass.

68.   Mr Carroll also includes a summary of the type of tickets purchased by attendees of the Opponents’ Park for the year ending June 2007 (which he says is “broadly typical of past years”) and points out that “only 26.5% of visitors…paid the full price, which would apply if a ticket were purchased on-site”.  He indicates that the balance of tickets sold comprised “Special Passes” (37.9%), “Wholesale” (13.7%), “Groups” (7%), “Educational” 4.7%, “Incentives” (7.3%) and “Other” (2.9%).

69.   I am not however persuaded that the fact the majority of tickets are sold via the Internet or via intermediaries such as travel agents or hotels would necessarily increase the likelihood of deception or confusion between the opposed mark and any of the Opponents’ Trade Marks.  The website through which tickets to the Opponents’ Park are sold (accessed via the URL provides abundant information about the water park itself and in principle would allow potential purchasers the opportunity to familiarise themselves at their leisure with the particular facilities and services offered before the decision to purchase tickets was made.  It is likewise with the Applicant’s website (accessed via the URL I am conscious, too, that a single standard entry ticket to either parties’ water park costs in the order of $50 and that when the purchase of multiple tickets for families or groups (even with applicable discounts) and the cost of refreshments and meals within the parks themselves are taken into account this would to many people be a relatively significant purchasing decision.

70.   Nor is it apparent to me why having ticket sales mediated by travel professionals, effectively agents of the Opponents (and/or of the Applicant, as the case may be) and presumably equipped with relevant information and literature, would heighten the risk of deception or confusion amongst potential purchasers.  As for the purchase of “multi-theme park passes”, which the evidence indicates are offered by both parties[16], I believe the opportunity to buy such tickets would on the face of it reduce the likelihood of deception or confusion given the parties’ other theme parks on or near the Gold Coast are themselves apparently very well established.

[16] For WHITEWATER WORLD and DREAMWORLD in the case of the Applicant and for WET’N’WILD (WATER WORLD), SEA WORLD and/or WARNER BROS. MOVIE WORLD in the case of the Opponents.

71.   To summarise, I accept that the Opponents’ use of the words “Water World” as contained within the Logo mark and the Narrative mark, when considered objectively, might reasonably be seen as use as a trade mark in their own right, and that both the Logo and Narrative marks have enjoyed substantial exposure in Australia since 1997.  However, I am not satisfied that the opposed trade mark is, on the face of it, deceptively similar to the WATER WORLD trade mark when the standard tests for comparison of trade marks are applied.

72.   Nor am I satisfied that the trade mark WATER WORLD had such a reputation in its own right as at the Relevant Date that the Applicant’s use of the WHITEWATER WORLD trade mark was likely to cause relevant deception or confusion.  There is essentially no evidence before me that the Opponents have ever promoted their services by reference to WATER WORLD as a separate trade mark independently of its use within the Logo and Narrative marks.  Nor is there any evidence that consumers themselves use these words to refer to the Opponents’ Park.

73.   How the Logo or Narrative marks are or might be used in an abbreviated form, such as in speech, is to my mind particularly significant in this regard.  When considering how the trade mark  (which contains the words “The Circuit Sports Café”)

might be referred to informally, for example, the Full Federal Court said in Sports Café Ltd v Registrar of Trade Marks (1998) 42 IPR 552 (at 557):

It is relevant to consider, as his Honour did, how the cited mark might be used informally, especially in speech. ``The Circuit Sports Cafe'’ is a rather unwieldy expression. Given the Australian tendency to shorten expressions, particularly when referring to places of popular resort or entertainment, it is likely to be abbreviated in vernacular speech. If shortening does occur, it seems the more likely abbreviation would be ``The Circuit'’, rather than ``The Sports Cafe'’.

74.   Here the evidence before me indicates that when people[17] refer to the Opponents’ Park informally, or in a less “unwieldy” manner than using the entire collocation WET’N’WILD WATER WORLD, they use the words “Wet’n’Wild” rather than the words “Water World”.  I have already remarked that in the “Fact Sheet” reproduced in paragraph 24 above the words “Wet’n’Wild” are used independently of the Logo or Narrative marks some seven times to refer to the Opponents’ Park, but there are many other examples in the evidence, several of which are detailed by the Applicant in the Gregg declaration.  In his third declaration the Chief Financial Officer of the Opponents’ Park, Mr McHugh himself, says when referring to the cluster of theme parks on the Gold Coast:

However, each of the parks, SEA WORLD, WARNER BROS. MOVIE WORLD, WET’N’WILD, and DREAMWORLD have unique themes which differentiate the parks, except for WHITEWATER WORLD which is built around the water park theme like WET’N’WILD.  (My emphasis)

[17] Including the Opponents themselves.

This is no more than what might be expected in my view.  Not only do the words “water world” come after the words “wet’n’wild” in the Narrative mark, or below them and in smaller point size in the case of the Logo mark, but they were not in use at all for the first 13 years of the park’s existence.  In particular, the Opponents’ Park traded under the name WET’N’WILD WATER PARK for over 10 years before the name WET’N’WILD WATER WORLD was adopted in 1997 and the practice of commonly referring to the water park as simply “WET’N’WILD”, apparent from promotional brochures of the time included in the Opponents’ evidence, would presumably have become entrenched during those years.

75.   When all the foregoing matters are weighed up and when I consider the parties’ marks as wholes and attempt to assess their likely effect or impression in the minds of relevant consumers, I am not satisfied deception or confusion amongst a significant or substantial number of the Target Market is likely.  I do not on balance believe there is a real tangible danger of a substantial number of persons being left in doubt or caused to wonder whether the parties’ services dealt with under their respective trade marks come from the same source.  I thus find that the Opponents have not established their s.60 ground based on the reputation of the trade mark WATER WORLD in its own right.

(b) The trade mark WET’N’WILD WATER WORLD

76.   As mentioned, in addition to his submissions regarding the claimed deceptive similarity of WHITEWATER WORLD to the trade mark WATER WORLD per se Mr Ziehlke also argued the opposed mark was deceptively similar to the Narrative mark as a whole.  He further submitted the reputation of the Narrative mark as at the Relevant Date was such that use of the opposed mark was likely to cause deception or confusion sufficient to offend against s.60.

77.   I have already indicated my view that the WHITEWATER WORLD mark is not deceptively similar to the trade mark WATER WORLD when the standard tests for comparison of trade marks are applied and when the relatively low level of inherent distinctiveness of both marks is taken into account.  For essentially the same reasons nor am I satisfied that under the standard tests for comparison the WHITEWATER WORLD mark is deceptively similar to the mark WET’N’WILD WATER WORLD as a whole.  Indeed, on the face of it the opposed mark is less similar to the Narrative mark than to WATER WORLD alone given the presence of the initial element “WET’N’WILD in the former mark.  Here I agree with Mr Fitzpatrick that since the initial elements of the respective marks do not look or sound alike this further helps to distinguish the marks both visually and aurally.

78.   Mr Ziehlke’s written submission on this issue was that:

The marks WET’N’WILD WATER WORLD and WHITEWATER WORLD both contain the words WATER WORLD.  The additional element in the mark WHITEWATER WORLD is the term WHITE.  It is submitted that this term is generic in the context of water theme parks, especially in that it denotes the colour of agitated water.  It is submitted that this generic word WHITE is not particularly distinctive in distinguishing the two marks.

79.   I do not accept that the word “white” is generic in the context of water theme parks but, even if it were, its presence as the initial element of the opposed mark cannot just be overlooked.  Nor, as I have said, can the relatively distinctive (and clearly different) initial element WET’N’WILD of the Narrative mark be overlooked when the respective marks are compared as wholes.  What can in my view be discounted to a large extent as generic in the context of theme parks generally, as indicated earlier, is the common final element WORLD actually shared by the parties’ marks.

80.   While I accept that the Narrative mark has enjoyed wide public exposure since 1997 in connection with the Opponents’ Park and thus might in principle lay claim to the kind of reputation contemplated by s.60, I am not satisfied that its reputation was such, or its manner of use by the Opponents was such, that the Applicant’s use of the WHITE WATER WORLD mark for the Services was likely to result in relevant deception or confusion.  I accordingly find that the Opponents have not established their s.60 ground based on the WET’N’WILD WATER WORLD mark as a whole.

(c) The trade mark WHITE WATER

81.   The third claimed trade mark relied upon by the Opponents is the mark WHITE WATER.  As Mr McHugh explains in his second declaration, when the Opponents’ Park first opened in 1984:

it operated a system of four water slides which were collectively called WHITE WATER FLUMES.

…

In September 1994, a mountain structure was created above the existing WHITE WATER FLUMES system and, as a consequence, the structure was named WHITE WATER MOUNTAIN.  This ride has continued to operate at the Park up to the present day.

…

From 1984 to the present day, the [Opponents’] Park has continually operated a ride or system of rides bearing names with the prefix WHITE WATER or WHITEWATER and arguably generic suffixes such as FLUMES and MOUNTAIN.

82.   Exhibits GM-1 to GM-9 to Mr McHugh’s second declaration are copies of 10 examples of the claimed trade marks WHITE WATER FLUMES and/or WHITE WATER MOUNTAIN in use on promotional brochures and park maps issued during the years 1991 to 2006 and Exhibit GM-10 consists of pages from the Opponents’ website ( downloaded in February 2007[18] in which both are mentioned.  Mr McHugh says that it is “not possible to separate out…the revenue and promotional figures of the [Opponents’] Park [as a whole] specifically attributable to rides with names which include the word WHITEWATER”, but given “that the area of the Park devoted to WHITEWATER rides (sic) has consistently been at least 10% of the area of the Park” he believes it is therefore reasonable to estimate the attributable portion at 10% of the figures for the park as a whole.

[18] Mr McHugh confirms both claimed trade marks were referenced in similar manner on the Opponents’ website going back to 2001.

83.   The only other significant evidence supporting the Opponents’ claimed use of WHITE WATER FLUMES or WHITE WATER MOUNTAIN as trade marks, or of their claimed resulting reputation in the word “whitewater” as at the Relevant Date, is contained in the Swan declaration.  Ms Swan reports the results of two on-line searches she conducted in October 2006 and January 2007 respectively, one for articles appearing in Australian publications and the other for any websites, which “referred directly to the words WHITE WATER as included in the names of theme park rides at the Opponents’ [Park]”.  For the years 1993 to mid-2006 inclusive the number of published articles located was 24 and as at January 2007 there were apparently some 137 websites identified.

84.   It is not in contention that, as Mr McHugh put it, “From 1984 to the present day, the [Opponents’] Park has continually operated a ride or system of rides bearing names with the prefix WHITE WATER or WHITEWATER and arguably generic suffixes such as FLUMES and MOUNTAIN”.  I would not however characterise the words “flumes” or “mountain” in this context as “arguably generic”.  Rather, they are to my mind entirely descriptive.  The meaning of the collocation “white water mountain” in the context of a water-based theme park is in my view self-evident.  So, too, is the meaning of “white water flumes”, given the Macquarie Dictionary Online defines “flume” as:

noun 1.  US a deep narrow defile, especially one containing a mountain torrent.
2.  US an artificial channel or trough for conducting water, as one in which logs, etc., are transported.
3.  Also, flume chute, flume slide. → water slide.

85.   As pointed out for the Applicant by Mr Gregg in his declaration and highlighted by Mr Fitzpatrick in his submissions, the examples of use Mr McHugh provides in Exhibits GM-1 to GM-10 are all essentially descriptive or not very far removed therefrom at best.  By way of example, one of the brochures forming Exhibit GM-9, which Mr McHugh says was “current in 2006”, uses the claimed marks in the following manner:

Whitewater Adventures[19]

Brave White Water Mountain with four white water flume rides and two challenging adrenaline-pumping two-person rides, Terror Canyon I and Terror Canyon II!

[19] I mention that the words “Whitewater Adventures” are in a slightly larger point size than the words below them on the brochure and appear to be simply a descriptive heading.  They do not appear elsewhere in the Opponents’ evidence and were not the subject of any submission by Mr Ziehlke.

86.   Essentially descriptive phrases such as “white water mountain” or “white water flumes” would need considerably more than simple bolding or capitalization before, objectively speaking, they or the word “whitewater” they contain might reasonably be considered to be functioning as trade marks.  I do not believe the small number of articles and websites located by Ms Swan to be of any significance in this regard.  Nor do I believe Mr McHugh’s reasoning in attributing 10% of the park’s total revenue to the Opponents’ whitewater rides and, by implication, suggesting those rides’ names had reputations as trade marks sufficient to trigger s.60, has any merit.

87.   In summary, I do not believe the phrases “white water mountain” or “white water flumes” as used by the Opponents are inherently capable of distinguishing their water slide rides from those of similar water theme parks and I do not believe their manner of use by the Opponents, albeit over many years, has been such as to have rendered the word “whitewater” distinctive.  It is thus unnecessary to consider what reputation might be attributable to them or whether the opposed WHITEWATER WORLD mark is deceptively similar.

(d) “Bridging over” of the trade marks WHITE WATER, WATER WORLD and WET’N’WILD WATER WORLD

88.   Finally with respect to s.60, Mr Ziehlke made the following submission:

It has been submitted that the mark WHITEWATER WORLD is deceptively similar under the terms of Section 60 of the Act to each of the Opponents’ marks WATER WORLD, WHITEWATER and WET’N’WILD WATER WORLD. In addition it is submitted that the Applicant’s mark WHITEWATER WORLD “bridges over” the Opponents’ marks WATER WORLD, WHITEWATER and WET’N’WILD WATER WORLD to create confusion in the minds of the consumers as to the true origins of the relevant services.

89.   As regards “bridging over” of trade marks generally, Mr Ziehlke referred to Freestone NA v Caterpillar Tractor Co. (1985) AIPC 95-237, in which the mark CAT-TRACKS was refused registration on the basis of the opponent’s reputation in the marks CAT and TRAXCAVATOR for similar goods, and to the UK case of Taylors Drug Co Ltd’s Application (1923) 40 RPC 193, where the mark GERMOCEA was refused on the basis of the trade marks GERMOLENE and HERMOCEA which had been registered and used for similar goods by two different parties.

90.   I am unable to accept this submission.  I have already found that the WHITEWATER WORLD trade mark is not deceptively similar to either of the marks WATER WORLD or WET’N’WILD WATER WORLD individually, either on the standard tests for comparison of trade marks discussed earlier or once reputation is taken into account.  In the case of the Opponents’ claimed trade mark WHITEWATER, I am not satisfied that its manner of use over the years demonstrates it is functioning as a trade mark for relevant services at all.  Even if it were, I am not satisfied such a descriptive term in the context of that use had acquired a reputation capable of conflating with those of the WATER WORLD and WET’N’WILD WATER WORLD marks to the degree postulated by the Opponents.

Section 42(b)

91. As mentioned, Mr Ziehlke submitted use of the opposed trade mark would be contrary to law under section 42(b) of the Act because it would offend against ss.52 and 53 of the TPA and would in addition constitute the tort of passing off. The relevant TPA sections deal respectively with misleading or deceptive conduct and with the making of false or misleading representations (insofar as relevant to Mr Ziehlke’s submissions) are reproduced below:

s.52       Misleading or deceptive conduct

(1)  A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

(2)  Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1).

s.53 False or misleading representations

A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:

(c)  represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;

(d)  represent that the corporation has a sponsorship, approval or affiliation it does not have.

92.   Mr Ziehlke explicitly recognized in his submission that the above provisions and the tort of passing off require a likelihood of deception amongst the Target Market as to the true origin of the Services or their connection to the Opponents, rather than mere confusion or simply being caused to wonder as is the case with s.60.  The deception need not have been intended, of course, and such is not alleged here.  Mr Ziehlke submitted nevertheless that:

the deceptive similarity of the [opposed mark] as compared with the Opponents’ marks, the extensive reputation of the Opponents’ marks and the likelihood of confusion between the respective marks provides an accumulation of the evidence such that it provides a “likelihood of deception” amongst consumers as to the true origin of the services under the respective marks.

93. I have already found the opposed trade mark is not deceptively similar to any of the Opponents’ Trade Marks in terms of s.60 of the Act. There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct, (or by extension conduct amounting to the making of false representations), than is the case with trade marks likely to deceive or cause confusion under s.60. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 1a IPR 684, by way of example, Gibbs, CJ noted with respect to s.52 of the TPA (at 688):

In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

94. I consider the reasoning set out earlier in rejecting the Opponents’ case based on s.60 of the Act is no less applicable to their claims that the Applicant’s use of the WHITEWATER WORLD trade mark would also amount to passing off or would breach ss.52 or 53 of the TPA. Given the descriptive characters of both parties’ marks in the context of water-based theme parks and given the lack of evidence of actual deception I am not satisfied that the reputation of the Opponents’ Trade Marks, whether considered individually or in terms of their collective reputation, was such that use of the WHITEWATER WORLD trade mark would constitute passing off, would be likely to mislead or deceive, or would amount to the representations complained of. I thus find that the Opponent has not established its ground under section 42(b).

2. Opposition to Application 1113607 DREAMWORLD’S WHITEWATER WORLD in Classes 25 & 35

95.   Application Number:  1113607

Trade Mark:  DREAMWORLD’S WHITEWATER WORLD

Priority Date:       12 May 2006

Goods:Class: 25 Clothing including swimwear; clothing and fashion accessories in this class being scarves, belts; footwear including parts of footwear; headgear

Class: 35

Advertising services, market research services, and promotional services in this class

96.   The parties served and filed Evidence in Support, Evidence in Answer and Evidence in Reply relating to the opposition to application 1113607 as set out below:

Evidence in Support

▪ Statutory Declaration by Elizabeth Swann made 28 March 2007, with Exhibits ES-1 to ES-4

▪ “First” Statutory Declaration by Graham McHugh made 4 April 2007, with Exhibits GEM-1 to GEM-5

▪ “Second” Statutory Declaration by Graham McHugh made 4 April 2007, with Exhibits GM-1 to GM-10

▪ “Third” Statutory Declaration by Graham McHugh made 4 April 2007, with Exhibits G1 to G6

Evidence in Answer

▪ Statutory Declaration by Stephen Gregg made 12 February 2008, with Annexures A-L and Exhibits SG-1 to SG-83

Evidence in Reply

▪ Statutory Declaration by Stephen Peet made 19 September 2008

▪ Statutory Declaration by Michelle Gai Gorton made 29 September 2008, with Annexures A to E

▪ Statutory Declaration by Adrian Kenneth Goldsmith made 27 October 2008, with Exhibits AG-1 to AG-3

▪ Statutory Declaration by Timothy Patrick Carrroll made 27 October 2008

97. The Opponents pressed the identical grounds under ss.42(b) and 60 of the Act in relation to application 1113607 as were pressed against application 1113596 WHITEWATER WORLD discussed earlier. Likewise, Mr Ziehlke made essentially corresponding submissions, pointing to the Opponents’ long use of the marks WATER WORLD and WET’N’WILD WATER WORLD and of the claimed trade mark WHITEWATER as establishing the critical reputation required to underpin the Opponents’ case. I do not believe it is necessary to repeat those submissions here, for the reasons set out below.

98.   The essential (and significant) differences between opposed application 1113596 WHITEWATER WORLD and opposed application 1113607 DREAMWORLD’S WHITEWATER WORLD are that application 1113607 covers goods in Class 25 and services in Class 35, rather than theme park related services in Class 45 or hospitality related services in Class 43, and that the opposed mark features the additional initial element DREAMWORLD’S.  These differences would on the face of it make it all the more difficult for the Opponents to establish their opposition grounds.

99.   With respect to the different goods and services covered by the later application, I firstly note that the evidence of use of the marks relied upon by the Opponents almost exclusively concentrates on the provision of entertainment services through the Opponents’ Theme Park and to a lesser extent on the provision of food and refreshments through outlets contained within the park.  There is no specific or significant evidence of the sale or promotion of Class 25 goods, whether through outlets situated within the park itself or elsewhere.  There is moreover no evidence that the Opponents have ever provided services (for others) in the nature of the “Advertising services, market research services, and promotional services in this class” in Class 35 covered by application 1113607.  While this of itself might not in principle be fatal to the Opponents’ case, this is not the only difficulty the Opponents face.

100.  I have already explained in connection with application 1113596 that in view, inter alia, of the low inherent distinctiveness in the context of water-based theme parks of both the Applicant’s WHITEWATER WORLD mark and the marks relied upon by the Opponents, I did not consider WHITEWATER WORLD alone to be deceptively similar to any of the Opponents’ Trade Marks either individually or collectively.  Indeed, as explained, I am not satisfied the Opponents’ claimed mark WHITEWATER, as used in the collocations “white water mountain” and “white water flumes” for names of water slide rides within the Opponents’ Park, is functioning as a trade mark at all.

101.  In the case of application 1113607 the addition of the initial element DREAMWORLD’S further distinguishes the opposed mark from the Opponents’ Trade Marks visually, aurally and conceptually.  The Opponents certainly do not suggest that they have ever used the name or mark DREAMWORLD, or one allegedly similar thereto, for any goods or services.  In fact, as mentioned, the Applicant is the registered owner of more than 20 registrations dating from 1973 for the trade mark DREAMWORLD covering a wide range of goods and services.  Of particular relevance to opposed application 1113607 are the Applicant’s registrations 268187 DREAMWORLD covering all goods in Class 25 and 400067 DREAMWORLD (which dates from 1983) covering “Services in this Class relating to advertising and conducting the business concerned with parks, amusement centres and other like entertainment and recreational activities” in Class 35.  The Applicant also owns registration 980671 DREAMWORLD & Device, which dates from 2003 and covers goods and services in classes 9, 14, 16, 21, 24, 25, 26, 28, 32, 35, 38, 41 and 43.  While there is no direct evidence before me of details of the Applicant’s use of the DREAMWORLD trade mark per se[20], the evidence does indicate the Applicant had continuously operated a major theme park on the Gold Coast under the name “Dreamworld” for some 25 years by the time application 1113607 was filed.

[20] There is of course direct evidence of use of the marks subject of applications 1113607 and 1133755 since around September 2006 in connection with the Applicant’s Park at the centre of the present oppositions.

102.  Moreover, the Applicant’s Park is located immediately next door to its “Dreamworld” theme park, (to the extent that the two parks even share a common entry point), and this fact would on the face of it further reduce the risk of relevant confusion or deception amongst visitors who might have had exposure to the Opponents’ similar goods and services.

103.  In summary, I find the Opponents have not established either of the grounds they pressed in their opposition to application 1113607.

3. Opposition to Application 1133755 in Classes 9, 14, 16, 21, 24, 28, 30 & 35

104.  Application Number:  1133755

Trade Mark:  

Priority Date:       6 September 2006

Goods:Class: 9 Clocks, radios incorporating clocks, alarm clocks; computer hardware including keyboards and mouse pads; cameras and camera equipment including disposable cameras; DVDs (digital versatile discs) including covers, bags and cases for DVDs; protective clothing in this class including swimming jackets (including kids flotation devices), snorkelling apparatus and equipment; sunglasses and spectacles, anti-glare glasses, anti-glare visors, anti-dazzle shades, goggles and visors, parts, fittings and accessories for the aforegoing goods, including frames, cases, chains, cords and straps and lanyards for the aforegoing goods; magnets including decorative fridge magnets; mobile phones and mobile phone accessories, covers, cases, clips, lanyards and neckchains; lanyards for security cards and identification cards

Class: 14

Jewellery including earrings, necklaces, amulets, brooches, rings, costume jewellery, charms, trinkets (jewellery), ornaments in this class, ornamental pins, cuff links; watches and clocks and parts thereof, jewellery cases, boxes and pouches in this class; key rings, key chains, key tags and key fobs in this class

Class: 16

Printed matter including printed publications; travel guides and tour guides; books and booklets, brochures, catalogues, leaflets and magazines; packaging and packaging materials in this class; wrapping in this class; bags in this class including merchandise bags; paper towels; tissues; toilet paper; paper table linen and table covers; serviettes, napkins; coasters in this class; stationery; memo pads; note pads; exercise books; school books; colouring books; colouring boards; writing instruments; pencil cases and other cases for writing instruments; erasers; calendars; posters; banners; business card holders; cards including greeting cards, postcards, collector cards and trading cards; autograph albums; photographs and prints; photograph albums; folders for photographs and prints, stands for photographs and prints, pictures (framed or unframed); stamps; stickers including bumper stickers and transfers, removable tattoos; flags; puzzles in this class; non-textile labels; novelty items and souvenirs made predominantly of paper in this class

Class: 21

Drinking vessels such as cups, glasses and mugs; drink tubes; glassware, porcelain and earthenware; insulated flasks; bottle holders; bottle holders of insulating materials; bottles and cans; bottle openers; cup holders; trays in this class; combs and sponges; brushes in this class; glassware, porcelain and earthenware not included in other classes

Class: 24

Textiles and textile goods, not included in other classes; manchester including bed linen, bed and table covers; towels including beach towels

Class: 28

Toys, games and playthings, remote control toys and devices in this class; board games; coin operated games; including jigsaw puzzles; targets; yo yos; spinning tops and other spinning toys, flying discs and saucers, playing cards; dolls, action and play figures, dress up articles, puppets, plush toys, soft toys, toy masks; balloons and balloon weights; novelty items in this class

Class: 30

Confectionery including lollypops, candy, sweets, ice-cream, liquorice, lozenges; chocolate including chocolate coated nuts, cocoa-based beverages

Class: 35

Retailing and wholesaling services including retailing and wholesaling of food products and beverages; loyalty programs; loyalty card programs; discount card schemes; incentive schemes, advertising and promotional services in this class including consumer loyalty programs

105.  The parties served and filed Evidence in Support, Evidence in Answer and Evidence in Reply relating to the opposition to application 1133755 as set out below:

Evidence in Support

▪ Statutory Declaration by Elizabeth Swann made 5 December 2007, with Exhibits ES-1 to ES-4

▪ “First” Statutory Declaration by Graham McHugh made 6 February 2008, with Exhibits GEM-1 to GEM-5

▪ “Second” Statutory Declaration by Graham McHugh made 6 February 2008, with Exhibits GM-1 to GM-10

▪ “Third” Statutory Declaration by Graham McHugh made 6 February 2008, with Exhibits G1 to G6

Evidence in Answer

▪ Statutory Declaration by Stephen Gregg made 11 June 2008, with Annexures A-L and Exhibits SG-1 to SG-74

Evidence in Reply

▪ Statutory Declaration by Stephen Peet made 19 September 2008

▪ Statutory Declaration by Michelle Gai Gorton made 29 September 2008, with Annexures A to E

▪ Statutory Declaration by Adrian Kenneth Goldsmith made 27 October 2008, with Exhibits AG-1 to AG-3

▪ Statutory Declaration by Timothy Patrick Carrroll made 6 November 2008

106. In the case of application 1133755 the Opponents pressed the identical grounds under ss.42(b) and 60 of the Act as were pressed against applications 1113596 and 1113607 discussed above. Again Mr Ziehlke made essentially corresponding submissions.

107.  Unlike the earlier applications, application 1133755 covers a wide range of goods in seven classes in addition to services in Class 35.  Although specified in wide terms, the goods covered are obviously intended to include souvenir items and snacks of the usual sort found at entertainment venues.

108.  As regards these goods, I again note the evidence of use of the marks relied upon by the Opponents almost exclusively concentrates on the provision of entertainment services through the Opponents’ Theme Park and to a lesser extent on the provision of food and refreshments through outlets contained within the park.  There is no specific or significant evidence of the sale or promotion of goods in Classes 9, 14, 16, 21, 24 or 28, whether through outlets situated within the park itself or elsewhere.

109.  I mention that the Applicant is the owner of longstanding registrations 400070, 268171, 268170, 268176, 268178 and 400069 for the trade mark DREAMWORLD covering all goods in Classes 9, 14, 16, 24, 28 and 30 respectively.  As previously mentioned, it also owns registration 980671 DREAMWORLD & Device in Classes 9, 14, 16, 21, 24, 25, 26, 28, 32, 35, 38, 41 and 43.

110.  That said, I do not believe it is necessary to further reiterate my above reasoning in connection with application 1113607.  I have reached the identical conclusion with respect to application 1133755 as with application 1113607 and for the same reasons.  I mention that there is no claim by the Opponents that the opposed logo per se is objectionable; merely that the words WHITEWATER BY DREAMWORLD contained within it are so.  If anything, therefore, the various other elements which constitute the logo such as the two dog-like figures, the shield and the “rising sun” image help to further distinguish this trade mark from those relied upon by the Opponents.

111.  In summary, I find the Opponents have not established either of the grounds pressed in their opposition to application 1133755.

Decision

112. Section 55 of the Act provides:

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.

I have found the Opponents have not established either of the grounds they pressed pursuant to sections 42(b) and 60 of the Act in respect of any of the opposed trade marks. The trade mark applications may therefore 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.

Costs

113.  Both parties sought an award of costs.  As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995, with costs for the second and third of the three oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.

Michael Kirov

Hearing Officer

Trade Marks Hearings

23 December 2009

noun 1. any stretch
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