IMAX Corporation v Village Roadshow Corporation Limited HC Auckland CIV 2005-404-3248
[2006] NZHC 1668
•29 March 2006
IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY
CIV.2005-404-3248
UNDER the Trade Marks Act 1953
IN THE MATTER OF an appeal from the decision of the Assistant
Commissioner of Trade Marks dated
23 May 2005
BETWEEN IMAX CORPORATION Appellant
ANDVILLAGE ROADSHOW CORPORATION LIMITED Respondent
Hearing: 5 December 2005
Appearances: Andrew Brown QC with Daisy Bell for Appellant
Clive Elliott with Jo Stafford for Respondent
Judgment: 29 March 2006
RESERVED JUDGMENT OF WILLIAMS J
This judgment was delivered by
Hon. Justice Williams on
29th March 2006 at 10:00am
pursuant to R 540(4) of the High Court Rules
……………………………..
Registrar/Deputy Registrar
Date: ……………………...
IMAX CORPORATION V VILLAGE ROADSHOW CORPORATION LIMITED HC AK CIV.2005-404-3248 [29 March 2006]
Issue
[1] The appellant, IMAX Corporation, is the registered proprietor of an existing
New Zealand trade mark, being the word mark “IMAX”. Its registration number is
263120, the application date was 6 June 1996, it was effective from 16 June 1996, and the mark is registered in Class 41 for:
Entertainment services provided through the medium of motion picture theatres; entertainment services provided through the medium of motion simulator rides; motion picture film editing and duplicating services.
(A monochrome copy of the registered mark is attached as a schedule to this judgment. Evidence showed its use in numerous coloured forms).
[2] On 19 March 2003, Village Roadshow Corporation, the respondent, applied under No. 675895 to register as a trade mark in Class 41 with the specification for its proposed use being :
Entertainment services, namely display and exhibition of cinematographic films including display and exhibition of cinematographic films on oversize cinema screens, the provision of similar facilities, provision of movie theatre facilities, provision of movie theatres featuring an oversize screen, provision of cinema facilities featuring an oversize screen, distribution of cinematographic films, television and radio entertainment.
(A monochrome copy of the proposed mark is also attached as a schedule to this judgment as is a coloured version of another of Village Roadshow’s registered marks).
[3] IMAX opposed Village Roadshow’s application but in a reserved decision delivered on 23 May 2005, an Assistant Commissioner of Trade Marks held it did not succeed in its opposition under the Trade Marks Act 1953, ss 16 and 17, and directed the application might proceed to registration.
[4] This judgment deals with IMAX’s appeal against that decision.
Facts
[5] IMAX’s opposition was based on evidence from its Senior Vice-President, Legal Affairs, a Ms Ruby.
[6] She said IMAX is a Canadian corporation founded in 1967 and has been primarily involved since that time in providing giant screen, large format and motion simulator entertainment, receiving numerous awards for its work including Oscars in
1986 and 1997 for its system’s technical achievements.
[7] It holds numerous trade mark registrations for its IMAX mark and variants throughout the world, including this country, and has operated IMAX theatres in more than 35 countries. Its trade marks include what Ms Ruby called its “family of marks”. Examples put in evidence were principally variations on the use of the IMAX mark, sometimes with different surroundings and backgrounds, sometimes differently laid out or in different colours, and sometimes in association with other descriptive words such as “entertainment centre”.
[8] The IMAX mark and those variations have been used in New Zealand in advertising, press releases and on merchandise. In particular, the first use of the IMAX mark in this country was when the appellant’s IMAX theatre opened on
29 July 1999 in the Hoyt’s cinema complex in Queen Street, Auckland. It operated from that site until it closed in April 2002. The cinema complex during that period was also called the IMAX Entertainment Centre and the appellant’s mark was prominently displayed throughout the complex over that time. A number of IMAX system films was shown over that period in the IMAX theatre with its screen said to be about seven storeys high.
[9] The IMAX mark was also used during this period, both by it and others, in advertising brochures as to entertainment currently available, newsletters to schools, promotional material and the like.
[10] Ms Ruby made the point that, overseas, whilst the present parties co-operate in some locations – a Village Roadshow subsidiary in Singapore has an agreement with IMAX to use its trade mark there – they are opponents in others – IMAX is
opposing Village Roadshow’s application for registration of its proposed mark in a number of countries, including Australia.
[11] The principal evidence for Village Roadshow came from its Company Secretary, Mr Driscoll, stationed in Australia. Starting during the 1980s with Multiplex cinema complexes, in the 1990s Village Roadshow diversified into radio and entertainment, including a theme park and co-production of feature length commercial motion pictures distributed in all international media. It has a co- production agreement with Warner Brothers pursuant to which, as at June 2004,
36 films had been released. Through subsidiaries, it distributes films for other producers, plus DVDs, compact disks and the like, and has a television production and distribution business operating, particularly in Australasia. It operates over
1,000 cinema screens in Australasia and elsewhere. The films it screens are focused on what the trade calls “blockbusters”, which it distributes through cinema, home entertainment and television.
[12] In New Zealand, it formed a partnership with Sky City Leisure Limited, a listed company, in 1991. The partnership has an interest in 13 New Zealand cinema complexes, including nine in the former Hoyt’s Cinema Complex in Auckland. It holds 10 trade mark registrations for its logo which, generally, include the words “Village Roadshow Pictures” or some variant or other descriptive material to the right of the layered “V” image reproduced in this judgment. Village Roadshow also maintains a website in New Zealand using its logo.
[13] It said its trade mark application was described erroneously by IMAX as “VMAX” because it has deliberately used its corporate layered “V” logo in order to distinguish its mark from others, including IMAX’s. That mark has been used in Australia since 2002 as a brand which “involves watching the latest blockbuster movies on a larger-than-usual screen”. It says it has been planning to use its mark in this country since 2002 to brand its “large screen cinema services” in this country with associated brochures, tickets and the like.
[14] Mr Driscoll said IMAX holds no domain name registrations in New Zealand under its name nor is the IMAX mark currently being used in this country.
[15] The Hoyt’s cinema complex opened in 1999 containing the IMAX cinema screen and 12 others operated by Village Sky City cinemas but in 2003, Village Sky City took over the IMAX theatre and re-branded it. All references to IMAX have since been removed.
[16] Mr Driscoll said there are approximately 79 pending and registered trade marks using the word “Max” in Class 9 and about 24 in Class 41. He said the word “Max” is widely used in the cinema industry. Mr Driscoll concluded:
The and “IMAX” trade marks are used in different markets. The Applicant is a leading distributor and exhibitor of blockbuster films and films issued for general release. The Opponent focuses primarily on documentaries and films specifically created for the “IMAX” medium. … The applicant contends that there is little prospect of the and IMAX goods and services being confused.
The Applicant contends that the “IMAX” and trade marks are sufficiently distinguishable because of the significance of the Village Roadshow corporate logo in the Applicant’s trade mark.
[17] IMAX’s response was, first, to put in three declarations from members of the public who were asked in December 2004 where the Auckland IMAX theatre was located. All nominated the former site. Secondly, in a declaration Ms Ruby disputed the evidence about IMAX’s lack of domain names in New Zealand – its high level domain names are accessible from this country – and disputed the marks were used in different markets. Village Roadshow’s proposed use of the VMAX mark was in respect of “oversized cinema screens” which, she suggested, was the same market as that in which IMAX has goodwill for its mark. She pointed to a number of the “blockbuster” films co-produced by Village Roadshow as having been shown at IMAX theatres world-wide. She also said that IMAX theatres in Australasia and elsewhere are often in cinema complexes where conventional films are shown. She said that “irrespective of the design of the stacked V logo, the VMAX mark is pronounced “VMAX” and would be referred to as such by the consuming public”, thus leading to possible confusion.
Relevant Statutory Provisions
[18] To set this matter in context, it is helpful to record the provisions of ss 16 and
17 as they relevantly read :
16. Prohibition of registration of deceptive, etc., matter
(1)It shall not be lawful to register as a trade mark or part of a trade mark any scandalous matter or any matter the use of which would be likely to deceive or cause confusion or would be contrary to law or morality or would otherwise be disentitled to protection in a Court of justice.
…
17. Prohibition of registration of identical and similar trade marks
(1)Subject to subsection (5) of this section, no trade mark shall be registered in respect of any goods if it is identical with or similar to a trade mark belonging to a different proprietor and already on the register in respect of—
(a) The same goods; or
(b) Similar goods; or
(c) Services that are similar to such goods,—
if use of the first-mentioned trade mark is likely to deceive or cause confusion.
(2)Subject to subsection (5) of this section, no trade mark shall be registered in respect of any goods if the trade mark (or an essential element) is identical or similar to or a translation of a trade mark which is well-known in New Zealand (whether through advertising or otherwise)—
(a) As respects those goods or any similar goods; or
(b)As respects any other goods if use of the first-mentioned trade mark would be taken as indicating a connection in the course of trade between those other goods and the proprietor of the well-known trade mark, and would be likely to prejudice the interests of such proprietor,—
where use of the first-mentioned trade mark would be likely to deceive or cause confusion.
(3)Subject to subsection (5) of this section, no trade mark shall be registered in respect of any services if it is identical with or similar to a trade mark belonging to a different proprietor and already on the register in respect of—
(a) The same services; or
(b) Similar services; or
(c) Goods that are similar to such services,—
if use of the first-mentioned trade mark is likely to deceive or cause confusion.
(4)Subject to subsection (5) of this section, no trade mark shall be registered in respect of any services if the trade mark (or an essential element) is identical or similar to or a translation of a trade mark which is well-known in New Zealand (whether through advertising or otherwise)—
(a) As respects those services or any similar services; or
(b) As respects any other services if use of the first-mentioned trade mark would be taken as indicating a connection in the course of trade between those other services and the proprietor of the well-known trade mark, and would be likely to prejudice the interests of such proprietor,—
where use of the first-mentioned trade mark would be likely to deceive or cause confusion.
(5)In the case of honest concurrent use, or of other special circumstances which in the opinion of the Court or the Commissioner make it proper so to do, the Court or the Commissioner may permit the registration of trade marks that are identical or similar to each other as aforesaid by more than one proprietor subject to such conditions and limitations, if any, as the Court or the Commissioner, as the case may be, think it right to impose.
Assistant Commissioner’s decision
[19] After reviewing the application with the opposition and the evidence, the Assistant Commissioner summarised s 17(3) noting the onus on Village Roadshow to demonstrate its mark did not breach the section as at the relevant date, 19 March
2003. The relevant person was held to be the (at 8) “general public interested in the entertainment industry”.
[20] The Assistant Commissioner then noted Village Roadshow’s concession that registration of IMAX’s mark in Class 41 was (ibid) “in relation to similar services covered by this application”, leaving her only to consider whether the marks were similar and whether use of Village Roadshow’s mark was likely to deceive or cause confusion.
[21] After referring to well-known authority, the Assistant Commissioner held
(at 8-9) :
Summarised, the rules for comparison of word marks are as follows :
1.I must consider the marks as a whole; a side-by-side comparison is inappropriate.
2. I must consider the look and sound of the marks.
3.I must consider the relevant goods or services and the prospective purchaser.
4. I must consider the idea of the marks.
5. I must bear in mind imperfect recollection.
6.I must consider all the surrounding circumstances and apply the fair and notional test.
Deception and confusion do not have the same meaning. As Richardson J
said in Pioneer Hi-Bred [Corn Company v Hy-Line Chicks Pty Ltd [1978]
2 NZLR 50] at 62 :
“Deceived” implies the creation of an incorrect belief or mental impression and causing “Confusion” may go no further than perplexing or mixing up the minds of the purchasing public.
In determining whether there is a likelihood of deception or confusion I must apply the overall comparison test set out by Parker J in Pianotist [Company’s Application (1906) RPC 774] at 777 :
“You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of these trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.”
[22] She then summarised the submissions and held (at 10) “the two marks IMAX and are not the same or similar and there is no likelihood of deception or confusion”. Her reasons included (ibid.) that the common element “MAX” was “descriptive of big; maximum, to the MAX”. She regarded the wide use of the word descriptively in other marks as significant (at 11) “because this evidence shows max is commonly used simply because of its connotation with large or big”, so would be “given less weight by consumers because it is so common”.
[23] Posing the question whether the two marks were nevertheless similar, the
Assistant Commissioner held (at 11):
They are not. The marks do not look or sound the same, and it is significant that each mark begins in a completely different way. The letters “V” and “I” are easily distinguishable both visually and orally. Moreover, I am satisfied the applicant’s evidence establishes extensive use of the stylised “V” in New Zealand. The relevant section of the general public is thereby familiar with the “V” and associates it with the applicant. If people are familiar with the stylised “V” any overall similarity is reduced.
I find that the applicant’s mark is clearly and easily distinguished from the opponent’s mark. Deception or confusion is unlikely. I am satisfied a consumer will associate the applicant’s mark with the applicant, not the opponent.
That being so, the opposition pursuant to section 17(3) fails.
[24] Turning to s 16 and after citing subs (1), she held that principles similar to s 17 applied. There was an initial onus on IMAX to establish that at the relevant date it had a reputation through such use in the New Zealand market of its IMAX mark to lead to the possibility that Village Roadshow’s mark, if used in the same market, would deceive or cause confusion.
[25] After referring to relevant authority, the Assistant Commissioner held (at 12) that use of the IMAX mark in New Zealand in the IMAX cinema and the Queen Street complex from 1999 to 2002 “meant that there was substantial exposure of the opponent’s mark therein for that period” including on IMAX films. That led to her decide (at 13):
I am satisfied the opponent’s evidence establishes an awareness in its mark in Auckland. Perhaps there was some knowledge of the mark outside Auckland, but this evidence on its own does not establish a substantial number of relevant people living elsewhere in the country were aware of the mark.
However, when I consider the totality of the opponent’s evidence and apply the Ivy League [Council of Ivy Group Presidents trading as The Ivy League v Pacific Dunlop (Asia) Limited, HC WN, AP42/00 3/10/00, John Hansen J] principles I am persuaded that the opponent’s general reputation in its mark is such that there was an awareness of it amongst those members of the public interested in the entertainment industry throughout New Zealand.
Reputation is established. That being so the onus now falls on the applicant to show there is no likelihood of deception or confusion if the two marks are used in relation to the same services.
For the reasons stated in my consideration of section 17(3) I find that the two marks IMAX and are not similar. It follows then that as the two marks are easily distinguishable it is unlikely that the applicant’s use of would deceive a substantial number of people in the relevant market, or cause them to think there is a connection in the course of trade between them.
[26] The Assistant Commissioner then dealt with IMAX’s submission that registration of Village Roadshow’s mark would be contrary to law as breaching the Fair Trading Act 1986 ss 8, 10 and 11 by enabling Village Roadshow to engage in conduct that is “liable to mislead the public”. Because the marks were not the same, she held (at 14) that “use by the applicant of its mark is not, in these circumstances, conduct that could mislead the public”.
[27] Finally, she turned to s 17(2)(4) noting the onus on IMAX of establishing that its mark was well-known in New Zealand as at March 2003. She held it was well- known in New Zealand at that date but then found Village Roadshow’s use of the mark would be (at 14) :
Unlikely to cause confusion, to indicate a connection in the course of trade between its services and those of the opponent, for I consider (for the reasons stated herein) the two marks are not the same.
Submissions
[28] Mr Andrew Brown QC, senior counsel for IMAX, submitted that if Village Roadshow’s proposed use in the application proceeded, it would conflict with IMAX’s mark. At the outset and throughout his submissions he stressed Village Roadshow’s triple use in its application of the phrase “oversized cinema screens”. A refrain to which he repeatedly returned was what he submitted was not merely the similarity but the identity, or near identity, of the services both parties provide or intend to provide in the entertainment industry, namely the showing of films on large or over-large cinema screens.
[29] He made the point that IMAX’s objection was based on both a prior registered trade mark (s 17(3)) and there being a prior well-known trade mark (s 17(4)). Section 16 prohibited registration of a mark likely to deceive or cause
confusion, being contrary to law or otherwise disentitled to protection. That section was not to protect against competition but to protect the public interest (Pioneer Hi- Bred Corn at 54, 58, 63). Section 16 applies to both goods and services and confusion or deception can arise through prior use of an earlier mark, even of an unregistered mark. By contrast, he submitted, ss 17(1) (3) prohibit registration of a trade mark identical with, or similar to, one already on the register in respect of similar goods or services if use of the mark was likely to deceive or cause confusion in respect of goods or services. Section 17(2)(4), however, prohibit registration of a mark identical or similar to a trade mark well-known in New Zealand in respect of goods or services where use of the mark applied for would be likely to deceive or cause confusion, that arising irrespective of whether the prior well-known mark is registered.
[30] In relation to the s 16 appeal, Mr Brown relied on the detailed discussion of that provision (and s 17) by Richardson J in the well-known section of his judgment in Pioneer Hi-Bred Corn where, tailored to this appeal, the learned Judge held (at
61-63):
Clearly s 16 has a wider scope than s 17. Whereas s 17 is concerned with the comparison between two rival marks relating to the same goods or description of goods of which one is already on the Register, s 16 is not so limited. It extends to cases where the public is likely to be deceived or confused merely by the mark in question. …
There are several propositions which seem to me to be clearly settled. I take them substantially from the judgments of Romer J in Jellinek’s Application (1946) 63 RPC 59, 78 and of Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 594-596.
(1)The onus is on the applicant for registration of the trade mark to establish that the proposed mark does not offend against s 16; and that onus is discharged on the balance of probabilities (Polaroid Corporation v Hannaford & Burton Ltd [1975] 1 NZLR 566).
(2)On an application for registration the rights of the parties are to be determined as at the date of the application. The evidence as to likelihood of deception or confusion must relate to the position at that time.
(3) The concern is with the possible future use of the mark in respect of goods coming within the specification applied for.
…
(4)The section is not concerned with the particular mode of presentation of the product adopted or proposed to be adopted by the applicant, but with the use of the mark in any manner which may be regarded as a fair and proper use of it
…
(5)In considering the likelihood of deception or confusion all the surrounding circumstances have to be taken into consideration, including the circumstances in which the applicant's mark may be used, the market in which his goods may be bought and sold and the character of those involved in that market.
(6)But, it is the use of the mark in New Zealand that has to be considered …
(7)… the persons whose states of mind are material are the prospective or potential purchasers of goods of the kind to which the applicant may apply his mark and others involved in the purchase transactions.
(8)For a mark to offend against s 16 it is not necessary to prove that there is a commercial probability of deception leading to a passing off or infringement action. … It is sufficient if the result of the registration of the mark will be that persons to whom the mark is addressed are likely to be deceived or confused. "Deceived" implies the creation of an incorrect belief or mental impression and causing "confusion" may go no further than perplexing or mixing up the minds of the purchasing public. … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.
(9)The test of likelihood of deception or confusion does not require that all persons in the market are likely to be deceived or confused. But it is not sufficient that someone in the market is likely to be deceived or confused. A balance has to be struck. …
(10)Where goods are sold or may be sold to the general public for consumption or domestic use, the judge or officer making the decision is entitled to take into account his own experience and his own reactions as a member of the public, as well as evidence from other members of the public, when considering whether buyers would be likely to be deceived or confused by use of a trade mark. …
It was accepted … that, while the onus of establishing absence of a likelihood to deceive or cause confusion was on the applicant for registration, it was necessary for the opponent to establish a sufficiently substantial reputation in the New Zealand market to lead to the possibility
that goods covered by the proposed trade mark would be identified with the opponent. …
…the object of s 16 is not to protect competitors and potential competitors of the applicant so, the likelihood of damage to the trade of the opponent is not a relevant consideration under s 16 … The object is to protect the public interest by refusing to accord monopoly rights to a mark, the use of which is likely to deceive or confuse those in the market for the goods. The concern is with the protection of the relevant New Zealand buying public, not with the protection of the applicant's competitors. …
[31] Noting the Assistant Commissioner’s finding that IMAX had discharged the initial evidential onus of establishing the requisite awareness of its IMAX mark in New Zealand at the relevant date, Mr Brown submitted the next step was to consider both marks, the reputation of the opponent’s mark, not limited to the goods and services for which it was known, and the goods and services for which the applicant uses or intends to use the mark. The actual goods or services applied for alongside the reputation of the opponent’s mark and the goods and services for which it is known were particularly important. He submitted the Assistant Commissioner erred by making no reference to the direct overlap in the services for which IMAX has used its mark and those covered by Village Roadshow’s application. He submitted it was abundantly clear from the application that Village Roadshow intends to use its mark on oversize screens or large cinemas, pointing to the specification as support and Mr Driscoll’s evidence. He submitted that Village Roadshow’s application covered the same services as those for which the IMAX mark is known in New Zealand as a result of the IMAX cinema and internationally but noted no reference to that appears in the decision. The Assistant Commissioner only referred to similarity.
[32] Section 16 did not require proof of actual confusion. Likelihood of confusion or deception sufficed, with the test for confusion being lower than for deception: cause to wonder whether the goods are those of the opponent or are associated was enough. Mr Brown discussed the evidence on this topic, relying, naturally, on Ms Ruby’s assertions as to likely confusion or association through use of the two marks. He was disparaging of Mr Driscoll’s evidence that the two marks are and will be used in different markets, referring back to the specification, Village Roadshow’s description of its business and the three declarations of members of the public. All that and Village Roadshow’s use of the same complex as that in which
the IMAX cinema had operated, led, Mr Brown suggested, to strong likelihood of confusion.
[33] Mr Brown was similarly critical of Village Roadshow’s evidence as to other marks pending and registered in Class 41 using the word “max” because s 16 requires consideration of the likelihood of confusion or deception amongst consumers in the market based on actual use and awareness of the IMAX mark. No evidence, he noted, had been adduced as to awareness in the New Zealand market of the use of any other mark incorporating the word, particularly in relation to oversize cinema screen services. That led, he suggested, the Assistant Commissioner into further error in her conclusion that it was significant that the word “max” is commonly used because of its connotation with large or big. Since the opposition is based on prior reputation or the prior mark being well-known, the key issue, he suggested, was whether there were other marks in use in New Zealand for the relevant services utilizing the word “max”. There was no such evidence in this case. Mr Brown submitted the use by the two parties of the identical suffix is what will lead consumers to wonder whether there is a connection, particularly given IMAX’s prominent and unique use of oversize cinema screens.
[34] Mr Brown submitted the Assistant Commissioner’s s 16 consideration was flawed in relation to other factors bearing on confusion. They included the fact that Village Roadshow was likely to use the same cinema as that formerly used for IMAX, IMAX operating its IMAX oversize screen in conjunction with Hoyts at the same site up until 2002, and what he suggested was the likelihood that those who used Village Roadshow’s proposed mark in print or orally would refer to it as “VMAX”. That was particularly important, Mr Brown submitted, when the test of imperfect recollection was taken into account and led the Assistant Commissioner again into error when she concluded that:
Those listening to the mark are also likely to have seen the mark (through advertising and/or at the cinema). This will affect how the mark will be perceived aurally.
[35] There was no evidence, Mr Brown submitted, of that.
[36] Mr Brown also submitted that Village Roadshow failed to discharge the onus of showing registration of its proposed mark would not be contrary to law as offending against the Fair Trading Act 1986. The VMAX mark, as he expressed it, would be “liable” to mislead the public within the dictionary definition of that term.
[37] Overall, Mr Brown submitted:
that on these facts and as at the relevant date, there is a likelihood of confusion between the marks in the sense that members of the public will simply assume that VMAX logo branded cinematograph services on a oversize screen are connected with the well-known IMAX brand of such services or that the VMAX logo is a sub-brand of or has some licence or an association with IMAX. Some are likely to consider or believe that VMAX logo is a new name for the well-known IMAX brand. This is so given:
• The reputation which IMAX has in New Zealand for large format or oversize screen facilities as at the relevant date resulting from the operation of the Auckland large format cinema, the IMAX Entertainment Centre and the promotion given to it, as well as its worldwide use and reputation, which has become known in New Zealand.
• The direct overlap of the actual oversize or large screen cinema services provided under IMAX and intended to be provided under the VMAX logo.
• The fact that IMAX services were provided in one of the cinemas likely to be used by the applicant.
[38] Mr Brown accepted the Assistant Commissioner’s view that “well-known” is a higher threshold than the initial evidential onus on an opponent to show awareness of its mark. She found IMAX’s mark was well-known in New Zealand at the relevant date but, according to Mr Brown, erred in holding that Village Roadshow’s use of its mark would be unlikely to cause confusion or deception. She did no more than compare the marks, found them easily distinguished, and omitted reference to the identical nature of the services for which IMAX was well-known. She thus overlooked a statutory requirement. Her conclusions as regards s 17(4) were essentially identical to those under s 16.
[39] Under s 17(3), Mr Brown referred to the standard test under s 17(1)(3) as to whether the Court was satisfied there was a reasonable likelihood of deception or confusion amongst a substantial number of persons if Village Roadshow’s logo was
used in a normal and fair manner for the services for which it was registered, assuming IMAX’s use of its mark in the same manner for the services listed in its registration.
[40] Mr Brown emphasised that under s 17(3), normal and fair use to be considered is notional use in respect of both marks by contrast with ss 16 and 17(4) where the test is actual use or reputation of the IMAX mark. Similarity of the marks was to be assessed by taking the look and sound of the words, their nature, the type of customer likely to purchase the goods and services, all the surrounding circumstances and to consider the likely result if both marks are used in the normal way as a trade mark for the goods and services of their respective owners.
[41] While the Assistant Commissioner compared the marks as a whole and considered their look and sound, he submitted she fell into error, first, by failing to discuss that the services respectively in issue were, in his submission, identical, secondly, by failing to consider the imperfect recollection test and, thirdly, by failing to consider the oral use of Village Roadshow’s mark which, he again submitted, would be pronounced “VMAX”.
[42] For Village Roadshow, Mr Elliott, its leading counsel, accepted the goods and services of both parties were similar but submitted they were not confusingly so when prominent features of the marks were compared. A degree of similarity was acceptable (The European Ltd v The Economist Newspaper Ltd [1998] FSR 283,
288). Even on first impressions (Re Smith Hayden & Co Ltd’s Application (1946) 63
RPC 97, 102) IMAX’s mark was wholly in letters and consisted of one word with two syllables by contrast with Village Roadshow’s stylised device and the single word “max”. “Max” was not, he submitted, an invented word but an ordinary descriptive term commonly used in speech and in commerce by other companies. He went so far as to suggest that “max” was so widely used it could possibly never become distinctive but was merely a term in common parlance. He submitted the authorities show that where there is a common feature in competing marks, the enquiry should be directed to the different features (Re Broadhead’s Application (1950) 65 RPC 209, 215) and that “where a mark is largely descriptive ‘small differences may suffice’ to avoid confusion” (Office Cleaning Services v
Westminster Window & General Cleaning (1946) 63 RPC 30, 43, cited in Reed Executive PLC v Reed Business Information Ltd [2004] RPC 767, 792, para [84]). Mr Elliott submitted there was nothing else likely to suggest a connection between the proprietors of the marks and that, given the widespread and long standing use of Village Roadshow’s stylised “V” device, the proposed mark would clearly be identified with the respondent thus lessening any chance of confusion or deception. He submitted that the marks neither meant nor sounded the same, a submission he supported with a detailed comparison of the two, and accordingly the opponent could not succeed even if the goods were similar or identical (Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, 425, para 40).
[43] Mr Elliott firmly submitted the parties’ services differed and no substantial number of consumers were likely to be confused between IMAX’s giant screen documentaries and Village Roadshow’s “blockbusters”, pointing to lack of evidence of confusion or deception. He relied on the remarks of Jacob LJ in Reed (at 791, para 82) that in this area:
Further conceptional over-elaboration is apt to obscure this and is accordingly unhelpful. It may be observed that both approaches guard against too ‘nanny’ a view of protection – to confuse only the careless or stupid is not enough.
[44] Mr Elliott made the point that the examination section of IPONZ and the Assistant Commissioner regarded the marks as sufficiently different. Substantial weight should be placed on those views.
[45] Mr Brown’s reply made the point that Woolworths dealt with the Trade
Marks Act 1995 (C’th) which is substantially different from the Trade Marks Act
1953, not least in reversal of the onus of proof. He also submitted that Village Roadshow’s submissions failed to make the correct distinction between the different statutory grounds of opposition under ss 16 and 17. Section 17(4) is not covered by the Smith Hayden formulation given it was enacted following New Zealand’s accession to the Agreement on Trade-Related Aspects of Intellectual Property Rights, Art 16(2) and thence from Art 6(Bis) of the Paris Convention.
[46] Mr Brown’s reply submitted Village Roadshow’s stance was wrong and inconsistent with the statutory requirements in stating it was only if there was a resemblance between the marks that the Court needed to consider the likelihood of confusion or deception in the goods and services to which the marks are to be applied. Inter-dependence was key.
[47] Mr Brown again disputed Village Roadshow’s submissions that the parties’ services differed significantly. He suggested there was “no discernible difference between giant and oversize screen cinema services” and pointed to evidence of IMAX showing “blockbuster” films at its IMAX theatres. Even if the services no more than overlapped, it was still a criterion to be assessed in conjunction with the similarity and overall circumstances.
[48] He further disputed the suggestion that the logo plus “max” would not cause members of the public to wonder whether there was an association between Village Roadshow and IMAX. He reiterated his submissions about aural and print use of the proposed mark.
Discussion and decision
[49] It is convenient to deal first with s 17(3). It and the criteria to be applied have previously been set out, as have the Assistant Commissioner’s decisions.
[50] Similarity of the services of both parties having been conceded, the first question is whether Village Roadshow has shown the marks, one of which is on the register, are dissimilar. Applying the criteria mentioned, the Assistant Commissioner held they were. Has she been shown to be in error, either by this Court giving “great weight to the Commissioner’s conclusions” (New Zealand Breweries Ltd v Heineken’s Bier Browerij Maatschappij NV [1964] NZLR 115, 117, cited with approval by the Privy Council in Hannaford & Burton Ltd v Polaroid Corporation [1976] 2 NZLR 14, 16), or whether deference is unneeded as this is not an issue where the Assistant Commissioner’s experience is directly in point (VB Distributors Ltd v Matsushita Electric Industrial Co. Ltd (1999) 9 TCLR 349,
355, para [32])? The Court may utilize its own experience (Pioneer Hi-Bred at 63).
[51] Whichever test is adopted, the appropriate conclusion is that the Assistant Commissioner’s view on this topic, the tests for which she correctly summarized, has not been shown to be wrong. In addition to, or as a gloss on, her reasons it is to be noted that IMAX’s mark is a four letter mark, all in upper case, and used in different colours, with different backgrounds and in different combinations. Village Roadshow’s proposed mark is its registered layered “V” stylised logo, but in this case with the word “max” alongside. The logo is coloured. The word “max” is all in lower case and in all the variants in evidence showing Village Roadshow’s other marks, black or white lettering seems usually used. The appropriate conclusion, seen as a whole, is that the two marks have not been shown to be the same and not been shown to be similar, still less confusingly so. Or, to put it in the context of an appeal, the Assistant Commissioner’s conclusions have not been shown to be erroneous.
[52] Even if members of the public transliterate Village Roadshow’s proposed stylised logo and the word “max” and see it, write it, or pronounce it as “VMAX”, the two remain dissimilar when seen as written or heard as a whole. If those writing about Village Roadshow’s productions transliterate its mark as “VMAX”, it is noteworthy that, should they do so, they will not in fact be using what will be its mark. It is easy for persons to write the appellant’s mark as “IMAX” but it seems more likely they will write the respondent’s mark, if it proceeds, as “Village Roadshow Max”, than “VMAX”.
[53] True, there is some overlap of the services provided in the cinema and other entertainment markets at the relevant date by IMAX or proposed by Village Roadshow but, first, IMAX’s specification earlier cited does not mention the seven storey screen on which its system was displayed in showing largely documentary films over the 2½ years of the IMAX theatre’s operation in the Queen Street complex in Auckland. IMAX’s system is unique in size and content. Village Roadshow’s productions differ in both. Secondly, while Village Roadshow’s specification may emphasise its intention to use its logo on “oversized cinema screens”, as remarked during argument, the evidence does not materially assist in defining what is “oversized” in a cinema and, as a matter of practicality, the average
cinema-goer is unlikely to analyse screen size with great exactitude when all they want to see is the film.
[54] There is a certain force in IMAX’s submission that a proportion of cinema- goers - mainly in Auckland, but perhaps in the rest of the country as well - may recall the IMAX theatre in Queen Street, Auckland, but little force in the suggestion they may be caused to wonder whether there is an association between the appellant and the respondent if they, in the future, attend the same cinema complex to see a Village Roadshow film bearing the proposed mark. Imperfect recollection could, it is conceivable, lead to that view but on a fair and notional test it seems unlikely that the largely differing products of the two parties are likely to cause confusion in that regard, particularly when each has or will doubtless emphasise its logo in its advertising and promotional material, to say nothing of the film itself. That is particularly the case when both registered marks are well-known, though without the “max” in relation to the respondent’s products under consideration.
[55] The Assistant Commissioner also reached the view that deception or confusion were unlikely having correctly directed herself as to the tests to be applied. Even at the relevant date, that has not been shown to be incorrect. Though of limited relevance, that would be less the case now, four years after the IMAX theatre ceased operation in Auckland.
[56] While both parties’ products are films, the evidence shows significant dissimilarity in subject matter: “blockbusters” versus, for the most part, documentaries. While both present their products in cinemas and on screens, it may be an over-generalisation to suggest they are similar because both offer entertainment packages, still less that they both show films. People attend cinemas to see a particular film. They identify it by name. They may select it for various reasons including the type of film, the actors, the story, perhaps even the director. But there is little in the evidence to suggest their selection would be influenced by it being an IMAX or Village Roadshow product, still less that members of the public would be confused between the two on that account.
[57] Returning more directly to the decision under appeal, the Assistant Commissioner, it was conceded, correctly directed herself as to the criteria for comparison of word marks and compared the marks as a whole and decided they were insufficiently similar to bar registration under s 17(3).
[58] Relying on Smith Hayden and Pianotist, Mr Brown emphasised that the normal and fair use to be considered under s 17(3) is notional use in respect of both marks, a wider test than the actual use or reputation to be considered under ss 16 and
17(4). He was critical of the Assistant Commissioner’s omission to discuss the respective services in issue, imperfect recollection and oral use of the mark.
[59] However, in this Court’s view, whatever test is applied, the submissions do not disturb the conclusion the Assistant Commissioner has not been shown to be in error in her approach to s 17(1) (3). She had extensively discussed the services in issue earlier in her decision. There was therefore no need to repeat those passages. She had similarly discussed imperfect recollection and oral use of the marks elsewhere in her judgment. It would have been repetitious to repeat those passages.
Turning to s 17(4), there was, of course, no challenge to the Assistant Commissioner’s finding that IMAX’s mark was well-known in New Zealand as a result of its use in this country and, more particularly, its operation of the IMAX cinema for about 2½ years in Auckland. It was accepted that the Assistant Commissioner correctly directed herself as to the higher threshold for the concept of well-known and the onus of proof. However, as mentioned and largely for the reasons earlier detailed, she found Village Roadshow’s use of the mark would be unlikely to cause confusion or indicate connection in the course of trade between its services and those of IMAX because the marks were not the same.
[60] Mr Brown was, nonetheless, critical of the Assistant Commissioner’s decision on the likelihood of confusion or deception because, again, he said it was based purely on comparison of the marks without reference to the services for which IMAX is well-known, namely its oversize cinema projection services. By contrast, Village Roadshow’s application was for proposed use. He was also critical of the
Assistant Commissioner’s lack of express attention to the likelihood of confusion or deception under s 17(4).
[61] But, for much the same reasons as apply to s 17(3), this Court is unpersuaded. The Assistant Commissioner may not have repeated reference to the discussion elsewhere in her judgment on the likelihood of confusion or deception but repetition was unnecessary. Though it may have been prudent had she referred back to the discussion elsewhere in her judgment there was no necessity for her so to do. Certainly no inference can be drawn that she did not have those earlier passages in mind.
Section 16 requires consideration of both marks plus the reputation and actual use of IMAX’s mark including the services for which it is well-known and the goods and services on which Village Roadshow intends to use its mark (Pioneer Hi-Bred (supra) propositions (4) (5) (7) and (8)). In relation to s 16, the onus was on IMAX to establish its New Zealand reputation for its IMAX mark was such as to lead to the possibility that Village Roadshow’s proposed mark, if used in the same area of commerce, was likely to deceive or cause confusion.
[62] Mr Brown stressed in his submissions the absence from the Assistant Commissioner’s decision of any passages dealing expressly with the overlap between IMAX’s former and present services and Village Roadshow’s proposed use. He submitted they were the same as a result of IMAX’s operation of the oversize cinema and its other promotions and reputation.
[63] Emphasising that the test for likelihood of confusion is lower than that for deception, Mr Brown, in dealing with the evidence in detail, suggested the Assistant Commissioner’s view that the word “max” was in common parlance is almost wholly irrelevant since there was no evidence of the use of such a mark in New Zealand on oversize cinema screen services. The other marks discussed in the evidence using the word “max” in relation to cinemas were all for proposed uses. Having two marks with the suffix “max”, when taken in association with IMAX’s well-known mark, was precisely what would lead relevant consumers to wonder
about a connection between IMAX’s services and those proposed by Village
Roadshow, particularly when seen against the test of imperfect recollection.
[64] In relation to this discussion, the evidence from the three members of the public is of little assistance in demonstrating awareness of IMAX’s reputation and marks in the entertainment industry throughout the country. There were, after all, only three of them. The evidence does not disclose how the survey was conducted. It does not even disclose how the members of the public were selected, what questions were asked – though they seem to have been of a leading nature - the circumstances of the interview, or any of the other material which must be complied with for public survey evidence to be admissible (Auckland Regional Authority v Mutual Rental Cars (Auckland Airport) Ltd [1987] 2 NZLR 647, 657-9).
[65] However, again, irrespective of the test applied, this Court’s view is that the Assistant Commissioner has not been shown to have fallen into error. She outlined and then applied the appropriate tests. She reached conclusions which were plainly open on the evidence. In particular, she took the marks as a whole without dissecting them into prefix and suffix and while there is a certain force in Mr Brown’s submissions that IMAX’s mark may be the only mark using the suffix “max” known in New Zealand in relation to oversize cinema screens, the Assistant Commissioner was entitled to balance against that what she regarded as the currency of the word “max”. Its current argotic use is not new. It is probably a contraction of
“maxi” a word which has been used for over 40 years (Oxford English Dictionary 2nd
Ed. Vol IX p 495-496) which is itself a contraction of the Latin word “maximum”. The most to which IMAX can point is that, at the relevant date, there would have been some general awareness of it and its products and of the IMAX cinema in Queen Street. That goes little distance towards demonstrating deception of a substantial number of New Zealand cinema-goers nation-wide, all likely to conclude there may be a connection in the course of trade between Village Roadshow and IMAX.
[66] No case has been made out on this ground to disturb the Assistant
Commissioner’s finding.
[67] Mr Brown also relied on the “contrary to law” provision in s 16 and the definition of “liable to mislead” under the Fair Trading Act 1986 s 11 appearing in Sound Plus Ltd v Commerce Commission [1991] 3 NZLR 329, 333 where Anderson J held that “liable to “ in s 11 “connotes a potential which is less restricted in scope than likelihood or probability”. Mr Brown submitted Village Roadshow’s application, if granted, would be liable to mislead the public as the nature of the services provided, again harking back to his repeated submissions on Village Roadshow’s intention to use its mark for oversize screen and IMAX’s operation of its giant screens up to 2002.
[68] In this regard, the Assistant Commissioner reached the conclusion that the ground of opposition was not made out for the same reasons as led to her other conclusions and again, whichever test is applied, this Court’s view is that no error on the part of the Assistant Commissioner has been disclosed in that regard.
Result
[69] Standing back and looking at the matter overall, in essence IMAX’s objection
- and, now, its appeal – are based on what it asserted is the virtual identity of Village Roadshow‘s proposed mark with its own well-known registered mark, with both being used in the same market, its public recognition being principally based on its operation of the IMAX cinema in Auckland for some 2½ years associated with the use of its mark in other forms throughout the country. The objection failed because the Assistant Commissioner took the view that, though the services offered and proposed to be offered were conceded to be similar, IMAX’s registered mark and Village Roadshow’s proposed mark were not, when assessed against the statutory provisions and criteria discussed in this judgment and as appearing in the various cases. While the Assistant Commissioner’s judgment may have been more discursive, for the reasons set out herein this Court takes the view that no basis has been made out to interfere with the Assistant Commissioner’s decision.
[70] The appeal is accordingly rejected.
[71] If the parties are unable to agree on costs, memoranda may be filed with that from the respondent within 35 days of delivery of this judgment and that from the applicant within 42 days.
………………………………..
WILLIAMS J
Solicitors:
A J Park Law (J B Hackett), P O Box 565 Auckland
(Email: john[email protected]) Phillips Fox (Jo Stafford), P O Box 160 Auckland
(Email: jo[email protected])
Copy for:
Andrew H Brown QC, P O Box 2815 Shortland Street, Auckland
(Email: [email protected] / daisy[email protected]m) Clive L Elliott, P O Box 4338 Shortland Street, Auckland
(Email: [email protected])
K B F Hastie, Assistant Commissioner of Trade Marks. Luisa Lefao-Setoga, Case Officer, High Court Auckland
(Email: Luisa[email protected])
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