Yahoo Serious v Yahoo! Inc

[2001] ATMO 74

TRADE MARKS ACT 1995

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

Re:      Opposition by Yahoo Serious to registration of trade mark applications 709752 (Classes 9, 16, 35, 42), 714519 (41), 738791 (14, 18, 25, 28), 754964 (38), 760011 (36) – Yahoo! – filed in the name of Yahoo! Inc.

Background

1. Yahoo! Inc., a California Corporation, filed the above applications to register trade marks under the Trade Marks Act 1995 (‘the Act’).  Following assignments of the applications, they are now owned by Yahoo! Inc., a Delaware Corporation.  For convenience, I will refer to both the applicant and its predecessor as ‘the applicant’.  It is expedient to give details of the applications in tabular form:

App. Number	Filing Date Priority Claim	Trade Mark	Goods/Services
709752	03 June 1996 24 January 1996	YAHOO!	Computer software and hardware, videotapes, and sunglasses
			Printed matter, including books, magazines, and paper goods
			Advertising services
			Computer services and on-line computer services
714519	07 May 1996 07 August 1996	YAHOO!	Entertainment services including television programs
738791	10 July 1997 (No Claim)	YAHOO!	Precious metals and their alloys and goods in precious materials or coated therewith, not included in other classes; jewellery; luggage tags; precious stones; and horological and chronometric instruments
			Leather goods including leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags; bags; umbrellas, parasols, and walking sticks; backpacks, luggage, purses, and wallets
			Clothing, headwear, and footwear
			Toys, games, and sporting goods excluding sailboards
754964	13 February 1998 13 August 1997	YAHOO!	Communications services; telecommunications services; electronic mail services; telephony services; providing multiple-user access to computer networks for the transfer and dissemination of a wide range of information; electronic transmission of data, images, and documents; and providing online facilities for real-time interaction with other computer users
760011	20 April 1998 20 October 1997	YAHOO!	Insurance and financial services including credit card services

1. Following examination, the applications were advertised as accepted for registration in the Australian Official Journal of Trade Marks.  Mr Yahoo Serious, (‘the opponent’) has filed Notices of Opposition, (‘the Notices’) to the registration of the trade marks.  The details of the dates of advertisement and filing of the Notices are:

App. Number	Advertisement Date	Date Opposition filed
709752	14 August 1997	14 November 1997
714519	07 August 1997	07 November 1997
738791	05 March 1998	04 June 1998
754964	21 May 1998	20 August 1998
760011	11 June 1998	11 September 1998

The opponent has, therefore, filed the Notices within the time allowed by Trade Marks Regulation 5.1.

1. The opponent and applicant have served and filed their evidence in accordance with Part 5 to the Trade Mark Regulations.

2. As a delegate of the Registrar of Trade Marks, I heard the issues in Canberra on 15 June 2001.  Ms Angela Bowne of Counsel represented the opponent.  Julia Baird of Counsel represented the applicant.  Before detailing the submissions of Counsel, it is convenient to discuss the evidence.

The Evidence

1. The declarations filed by the parties may be summarised as follows:

Declarant	Known as	Date Made	Exhibits
Evidence in Support
Yahoo Serious	Serious 1	26 January 1999	Y1 – Y15
Evidence in Answer
Anne Helen Makrigiorgos	AHM	3 December 1999	AHM-1 – AHM-6
Declarant	Known as	Date Made	Exhibits
John Place	Place	29 November 1999	A – D
Evidence in Reply
Andros Chrysiliou	Chrysiliou	27 June 2000	CMM-1 – CMM-2
Yahoo Serious	Serious 2	27 June 2000	Y17 – Y22
Further Evidence (Applicant)
Darren Gocher	Gocher	4 August 2000
Further Evidence (Opponent)
Yahoo Serious	Serious 3	7 December 2000	Annexure A

1. The opponent, Mr Yahoo Serious, is an Australian movie actor, director and producer of some renown.  He is known for his whimsical movies, Young Einstein, Reckless Kelly and Mr Accident.  It is fair to say that the first movie is very well known, the second movie is comparatively well known and the third, Mr Accident, is not well known.  Although Mr Serious says that he emerged as a national identity in the mid nineteen eighties, the evidence shows that he became well known to Australians in 1989 with the release of Young Einstein.  Mr Serious wrote, produced, directed and starred in this motion picture which tells the story of a young Tasmanian Einstein who discovers the theory of relativity while putting the bubbles into beer.  The evidence shows that Mr Serious, and the film, received extensive publicity, not only in Australia but also throughout the world.  Mr Serious has appeared on the front cover of most major magazines and has been extensively interviewed on talk shows on radio and television both in Australia and overseas.

2. Reckless Kelly, which was written, directed and produced by Mr Serious told the story of the last of the bushranger Kellies who held up automatic teller machines.

3. The applicant is an Internet based company.  The Internet is a 'network of networks' which link public and private computers throughout the world.  The World Wide Web (‘the Web’) is a client/server system of hyperlinked data-bases that provide information, education and entertainment services to computer users at work, home, public library or at educational facilities.  Users access the information on the Web through software known as ‘web browsers’.  In 1999, it was estimated that 3.5 million Australians had access to the Internet.

4. In early 1994, the applicant’s founders, David Filo and Chihyuan “Jerry” Yang (‘Filo’ and ‘Jerry’) were graduate students of Stanford University.  Filo and Jerry surfed the Web and kept a list of interesting sites they found on the Web.  They developed software to create a directory which categorised and linked the list of sites and also enabled users to search the directory.  Filo and Jerry initially called this Web directory “Jerry and David’s Guide to the World Wide Web”.  However, Filo did not like to see his name on anything.  At that time, says Mr Place, it was popular in the computer industry to name products beginning with the wording, “Yet Another…”, for example, he says, there was a Unix software program called YACC (Yet Another Computer Compiler).  Accordingly, Filo and Jerry decided to look for a suitable acronym starting with the letters ‘YA...’ and hit upon the word YAHOO for Yet Another Hierarchical Officious Oracle.  Filo and Jerry also liked the word ‘yahoo’ because it is in common parlance as an exclamation of joy (such as one might utter on finding a sought-for site on the Web) and had the dictionary definition of an uncouth or crude person as derived from Jonathon Swift’s novel Gulliver’s Travels.

10.  On 18 January 1995, the applicant registered the domain name YAHOO.COM with Networks Solutions, Inc and it has provided its services from that address since on or about that date.

11.  As I understand the Place declaration, the applicant’s services have, since 1995, progressively extended and offer ‘third party’ content to users so that a person using the applicant’s Web site may tailor information on sports, news, scores, weather forecasts and stock quotes for themselves.  The applicant also offers services to members including shopping, auctions, classifieds, e-mail, clubs, calendar, message boards and chat-rooms.

12.  In addition to the ‘.com’ Web site, the applicant has Web sites using ‘yahoo’ as domain names specific to various countries, for example, at yahoo.com.au; yahoo.com.nz; yahoo.co.jp; yahoo.fr; yahoo.co.kr; yahoo.dk; yahoo.de; yahoo.no; yahoo.se; and, yahoo.ca.

13.  The activity, or usage, of directory and search engine sites such as those of the applicant is measured in ‘page views’.  A ‘page view’ is a page of electronic information displayed in response to a user request.  Visits from Australian users to yahoo.com.au; yahoo.com.nz; and, yahoo.com are currently 120,000,000 per month.  Measured worldwide, the applicant’s network averaged 105,000,000 unique visitors per month and 8,800,000,000 page views per month in the third quarter of 1999.  At that time, the applicant had 80,000,000 registered members availing themselves of the above-mentioned shopping, auctions, classifieds, e-mail, clubs, calendar, message-board and chat-room services.  In 1997, the applicant had approximately 175,000 registered Australian members.  It currently has approximately 2,000,000 Australian members.  In 1999, over two million websites contained a hypertext link to the yahoo.com website.

14.  The applicant derives most of its income from advertising.  I note that the income to the applicant derived from advertising was, in 1997, over $100,000,000 (Australian) per year and is now several times greater.  The applicant’s market capitalisation was, in 1999, 41 billion dollars.

15.  Mr Serious instances several examples of confusion between him and the applicant.  The most concrete of these are of misdirected mail, intended for the applicant, which were delivered to him.  Photocopies of these envelopes are included in Mr Serious’s evidence.  The other instances are recounts of the remarks of friends or acquaintances noting their perceptions of the similarities of the names of Mr Serious and the applicant.  While I believe a number of people have made comment to Mr Serious, these instances obviously cannot be given great weight, as they are hearsay.

16.  Mr Serious also evidences an approach by the credit card company Visa, or an advertising company connected with Visa, seeking his attendance at the launch of a venture involving both Visa and the applicant.

17.  Other instances drawn to my attention by Mr Serious lie in newspaper or magazine articles about the applicant and its activities.  The headlines in these articles make some play on the commonality of the word ‘yahoo’ in the names of Mr Serious and the applicant and are varieties of the form: “Its Yahoo!  Seriously!”  I will say now that I do not believe that this is evidence of confusion between the parties – rather, such word plays rely on the differences between the parties for their effect, so is apparent that the perpetrators distinguish between Mr Serious and the applicant, and expect that others will too.

18.  A number of exhibits to the applicant’s evidence provide dictionary definitions of the word ‘yahoo’.

The Submissions

19. Ms Baird presented submissions opposing registration of the trade marks in terms of sections 41, 43, 58 and 60 of the Act. Ms Bowne’s argument is simply stated – she relies on the fact that, with the exception of section 43, whatever the relevance of the above sections, the indicia involved should both be trade marks. Ms Bowne submitted that, whereas it is apparent that the applicant’s sign is a trade mark and is used as such, Mr Serious has, by the evidence, never used his name as a trade mark. As a fallback argument, Ms Bowne submitted that, should Mr Serious be using his name as a trade mark, the indicia are not deceptively similar.

Reasons

20.  What is a trade mark? If I am to apply the criteria under the sections relied on by Ms Baird at the hearing, it is logical to first consider the argument put by Ms Bowne. Section 17 of the Act states:

17  What is a trade mark?

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

Note:For sign see section 6.

‘Sign’ is defined within section 6 of the Act:

sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

The definition of a sign is an inclusive, rather than an exclusive listing.  Thus, a sign might also be an indicium that is not included within the above definition.  However, as the words ‘Yahoo Serious’ are a name, (and are also a combination of words) they qualify as a sign.

21. It is apparent that, to qualify as a trade mark, a sign should be, in terms of section 17:

·    used or intended to be used by a person to distinguish goods or services;

·    in the course of trade;

·    from goods or services so dealt with or provided by any other person.

The evidence shows that Mr Serious does not use his name, Yahoo Serious, or his forename, to distinguish goods or services.  It is true that he writes, directs and produces motion picture films in which he stars; however, it is not apparent in the evidence that either of the words ‘Yahoo Serious’, or the word ‘Yahoo’ are used as a trade mark in relation to the films.  The closest that I can find in the evidence to use of any sign that might be as a trade mark is the repeated use of the words, a ‘Serious Production’ or ‘Serious Entertainment’ on promotional material associated with the motion pictures.  However, this use is obviously of no assistance to Mr Serious as the opposed trade mark is the word YAHOO! and I therefore do not have to decide whether this use of the word SERIOUS is as a trade mark.

It would seem to me, from the evidence presented and not from Counsel’s submissions, that Mr Serious believes that, as he is well-known, there are some inherent trade mark rights in his name. However, without use, or a demonstrated intention to use, the name as a trade mark, as defined by section 17 of the Act, these inherent rights do not exist.

22. I therefore dismiss the opposition in terms of 41, 58 and 60 of the Act. I make the further observation of the ground under section 41 that it is mistakenly founded as it relies on, or looks to, a use of a trade mark by another person to assess the fitness of the trade mark for which registration is sought whereas the proper test looks at the inherent properties of the sign itself. Such a use of section 41 may effectively treat common-law uses of trade marks by traders other than the applicant as bars to registration.

23.  Similarity of the signs. Although I have found that the oppositions under sections 60 and 58 must fail as the sign on which Mr Serious relies is not a trade mark, I will note now,should I be wrong in the above finding, that I do not consider that the signs involved meet either the minimum requirement for establishing an opposition under section 58, that the marks be substantially identical, nor under section 60 that they be (at least) deceptively similar. I will only address the deceptive similarity of the signs as, if they are not deceptively similar, they cannot be substantially identical.

As stated by Windeyer J in Shell Company Of Australia Ltd v Esso Standard Oil (Australia) Ltd 1B IPR 523, the test for deceptive similarity of trade marks is to be considered in the following way:

The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.  To quote Lord Radcliffe again (de Cordova v Vick Chemical Co (1951) 68 RPC 103; at 106; 1B IPR 496; at 499):

The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him…  It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

And in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641; at 658, Dixon and McTiernan JJ said:

In deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.

24.  The impressions of the signs which are carried away are different.  The sign YAHOO SERIOUS relies for its effect on the inherent tension explicit in the juxtaposition of two conflicting ideas – on the one side silliness and foolery and on the other side gravity and earnestness.  This tension, or dynamic, is not present in the applicant’s sign.  The exclamation mark within the applicant’s sign makes it likely that word will be seen in its denotation of being an exclamation of joy or elation.  Thus, the impressions carried away in relation to either sign are, I consider, to be significantly different.

25.  If Mr Serious had been able to point to some trade mark use of the sign YAHOO SERIOUS, I would not have found that the signs in question are deceptively similar.

26.  Section 43.  This section allows:

43  Trade mark likely to deceive or cause confusion

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

Hearing Officer Forno, in Down To Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632, made the following observations, at pages 664-5:

“Connotation” is a new term in trade mark legislation and as such has not yet been interpreted by the courts.  The following are two dictionary definitions which define the ordinary meaning:

Macquarie Dictionary :

1. the act or fact of connoting. 2. that which is connoted; secondary implied or associated meanings (as distinguished from denotation): for example the word “bum” has connotations of vulgarity.

Oxford English Dictionary :

1. The signifying in addition; inclusion of something in the meaning of a word besides what it primarily denotes; implication.

Therefore it can be said that the word connotation refers to that which is implied in a trade mark — in addition to its essential or primary meaning. A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark. The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion. Considerations under s 43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public. For example, deception or confusion could arise in regard to the character of the services, or the implied endorsement or licence of services by a person or organisation.

27.  The word ‘yahoo’ is a dictionary word; the various dictionary definitions supplied by the applicant may be summarised as indicating that the word means ‘a loutish, rough, rowdy or coarse brute or oaf’ and is the name given by Jonathon Swift to an imaginary race of brutes which have the form of men.  It also means ‘an exclamation of enthusiasm, exultation or delight’.

28.  I do not think that it could be rationally argued that any of the above meanings could give rise to a connotation that would be likely to deceive or cause confusion.  However, it is Mr Serious’s position that the word ‘yahoo’ is so well-known as his forename that this, in itself, gives rise to a connotation, and that therefore members of the public when encountering this word will assume some connection with Mr Serious and thus be confused or deceived. 

29.  I do not think that this is so.  I think that the evidence shows that, at, or by the time of, the priority date of the earliest of these opposed applications, the public was used to the existence of both Mr Serious and the applicant and was, if confused by the commonality of the word ‘yahoo’ to both signs, used to distinguishing between them.  I believe that the headlines, to which I have previously referred, in the newspaper and magazine articles which talk of the applicant demonstrate this well.  The headline ‘YAHOO!  SERIOUSLY’ will only work if the reader knows of both Mr Serious and the applicant and distinguishes between them.  The journalists, or sub-editors, who have used these headlines, obviously believe that this is so.

30.  There is no evidence that Mr Serious has exploited his name via sponsorships or product endorsements; or, that he has engaged in marketing products under his name.  Indeed, there appears to be a suggestion in the evidence that this has been a deliberate decision on his part.  The absence of evidence of such exploitation of his name, and resolute absence of any moves towards such exploitation, makes it difficult for Mr Serious to argue that there could be any public expectation of this.

31.  I do not believe that I can accept the evidence of misdirected mail as being evidence of confusion or deception.  To be relevant, the evidence of postal confusion should, I consider, be from within the relevant market and be of a commercial nature.  The postal evidence is not shown to be from purchasers or potential purchasers of any goods or services supplied under the applicant’s name who seek them from Mr Serious and, hence, they are not apparently in the category of being misdirected orders.  The postal items have simply been delivered to the wrong person, a phenomenon that most people have encountered.

32. Accordingly, Mr Serious has not established his opposition in terms of section 43 of the Act.

Decisions

33.  Mr Serious has not succeeded in his oppositions to registration of applications 709752, 714519, 738791, 754964 and 760011 under any of the grounds on which it was argued.  Accordingly, I dismiss the oppositions and direct that, should no appeals be filed against my decisions within the prescribed time, the applications may proceed to registration.

Costs

34.  Costs may follow the event.  I note that there has been one suite of evidence served and filed in relation to the five matters and that perusal and preparation of declarations by the parties, and Counsels’ preparation, has been, effectively, for the one matter.  However, the Notices of Opposition were all received and perused individually as the advertisements of acceptance all occurred on different dates.  The applicant is therefore entitled to claim Item 3 of Schedule 8 of the Regulations in respect of each of the applications and the balance of the relevant items in relation to one application.

Ian Thompson
Hearing Officer

13 August 2001