Here’s the decision at Jade.
And on AustLii.
Here is the decision: https://www.supremecourt.gov/opinions/16pdf/15-1293_1o13.pdf
Registration was sought for SILVER SERVICE in respect of various services in Class 39 relating to taxi services. Opposed on s 41 grounds. Opposition successful.
Hearing officer satisfied that “the term SILVER SERVICE is recognized as indicating a higher standard of taxi service such that the fee for this service is not part of the standard fee but is an additional charge on top of this fee“.
Evidence of use insufficient to show that the Applicant “has educated the market that the plain words SILVER SERVICE indicate a taxi related service provided by [it]“.
Survey evidence is often easy to criticise but very hard to exclude. Judges tend to take the view that it (often) has limited probative value but is relevant, and therefore (usually) admissible, despite its flaws.
In Frucor Beverages Limited v The Coca-Cola Company  FCA 298, Yates J considered an interlocutory application seeking to have two affidavits excluded from an appeal from a decision of the TMO upholding an opposition to the registration of the appellant’s colour mark in relation to energy drinks (Trade Mark Application No 1496541). The TMO had rejected the mark on s 41 grounds (incapable of distinguishing) as that provision stood prior to the changes introduced by the Raising the Bar legislation.
An issue on the appeal was whether the hearing officer had erred in finding that the appellant has not established the requirement of s 41(6)(a) of the TMA (distinctiveness in fact as a result of use).
The affidavits in question concerned two surveys carried out by a market research firm. The surveys were said to assess consumer association between the relevant pantone (376C) and the appellant’s energy drinks. The deponent expressed the opinion that the surveys showed a “high level of identification between Pantone 376C and Frucor’s energy drink.”
The admissibility of the affidavits was challenged on grounds of relevance and “because their probative value is substantially outweighed by the danger that the evidence given by them might cause or result in undue waste of time or by unfairly prejudicial to [the respondent]“: s 135 of the Evidence Act 1995 (Cth).
The relevance ground was based on three contentions:
(a) the surveys were conducted two and half years and three and a half years after the mark’s priority date and therefore could not be probative of the question of actual distinctiveness at the relevant date (for the purposes of the pre-RTB s 41(6)). The respondent relied on the Court’s doubting of the probative value of late survey evidence in Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 275 ALR 526 (Optical 88) at  and - and Apple Inc v Registrar of Trade Marks (2014) 227 FCR 511 at .
(b) the statistics produced by the surveys were “unremarkable” and the level of identification was overstated by the charts and tables in the report; and
(c) the surveys failed to show use of the mark “as a trade mark” – mere association is insufficient – it must be association in a trade mark sense. The respondent relied on the comments of the Full Court in Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97;  FCAFC 132.
Justice Yates noted that in Optical 88, Apple and Woolworths, despite the criticisms of it, the survey evidence was not excluded. Further, in the instant case, the deponent had sought to tie the results of the surveys to the relevant date. This was a feature that was absent in Optical 88 and Apple. His Honour was not persuaded that that the affidavits “should be rejected at the outset as lacking relevance on the basis that, as CCC contends, the surveys should be given no weight at all.”
After noting that there will be other evidence before him at the substantive hearing, his Honour said:
“The point of present significance is that I should proceed cautiously before concluding that, in advance of the hearing, when all of Frucor’s evidence will be before the Court, some part of that evidence should be rejected now as lacking relevance.”
Discretionary rejection: s 135 Evidence Act
To succeed in having evidence rejected pursuant to the statutory discretion provided by s 135 of the Evidence Act 1995 (Cth), an applicant must show that the evidence’s probative value is “substantially outweighed” by the danger that it might “be unfairly prejudicial to a party“, be “misleading or confusing” or “cause or result in undue waste of time.”
Justice Yates did not accept that any of these grounds were made out and so the discretion was not enlivened.
The application to have the affidavits excluded was dismissed with costs.
It will be interesting to see what Justice Yates says about the probative value of this evidence in the substantive decision.
Registration was sought for the mark ANIMAL HOUSE and the mark depicted below in respect of various services including night club services, music festivals etc.
It was opposed on ss 42(b), 60 and 62A grounds.
No grounds successful – mark to proceed to registration.
Opponent relied on reputation vesting in the 1978 film National Lampoon’s Animal House.
Hearing officer considered that the Opponent’s evidence on reputation was insufficient to “establish that the title of the Film had a reputation in Australia, as a trade mark, among a significant section of the relevant public as at the priority dates of the Trade Marks“. This was fatal to the s 60 ground and also meant that there was no basis for a finding that the use of the marks would be misleading or deceptive (which was the foundation of the s 42(b) ground).
In relation to s 62A, the hearing officer accepted that the Applicant’s account of why he chose the mark (he had run a series of dance parties, the first of which had a Noah’s Ark theme where patrons were encouraged to dress-up as animals…) was “reasonable on its face and has not been refuted by the Opponent.”
A recent decision on the scope of trade mark attorney privilege (TMAP) confirms that the privilege afforded to TM attorneys is not as broad (theoretically, at least) as legal professional privilege.
The decision is here: Titan Enterprises (Qld) Pty Ltd v Cross  FCA 1275.
I know, privilege, right? Don’t get too excited. I’ll make it as painless as possible. Trust me.
OK – so here are the facts:
The Respondent (it was alleged) operated a website called BEWARE OF TITAN GARAGES which purported to catalogue a series of bad customer experiences with a business called Titan Garages and Sheds.
These are the Titan guys. Don’t mess with them.
Titan was unhappy about the website and initially sought to wrest the offending domain name (bewareoftitangarages.com – no longer active) from the Respondent via the WIPO domain name dispute process. That was unsuccessful and Titan subsequently issued proceedings in the Federal Court of Australia alleging trade mark infringement and breach of the Australian Consumer Law, among other things.
In the course of the FCA proceeding, a subpoena was issued to the firm of trade mark attorneys which had represented the Respondent in the WIPO proceeding. The subpoena sought, among other things, all records of instruction given by the Respondent or any other person, in that proceeding.
It should be noted that this case was unusual in that the Respondent did not appear in the FCA proceeding and could not be found. Part of the reason for the subpoena was to identify the Respondent and to determine the extent to which a second respondent had been involved in the development and promotion of the website.
The documents were produced to the Court but inspection by the Applicants was objected to (by the TM attorneys on behalf of their former client whom they were unable to contact) on the grounds that much of the content was subject to trade mark attorney privilege.
That objection was dismissed and full access to the unredacted documents was granted to the Applicants.
To understand the reasons for this decision, here’s a short refresher on legal professional privilege (a.k.a. client legal privilege):
LEGAL PROFESSIONAL PRIVILEGE
(1) Legal Advice Privilege
“Legal advice privilege” protects communications between the client and his or her legal adviser made for the dominant purpose of enabling the client to obtain, or the adviser to give, legal advice.
It protects oral or written communications between client and legal adviser (or real evidence – e.g. surveillance film) and documents prepared, which are confidential, and created for the dominant purpose of seeking or providing legal advice.
So, for example, it protects:
BUT it does not protect:
(2) Litigation privilege
“Litigation privilege” extends the protection to certain communications passing between the legal adviser or the client and third parties in relation to litigation that is actually taking place or was in the contemplation of the client, and is not restricted to communications made for the purpose of obtaining legal advice.
It is restricted to documents concerning proceedings in a court of law. The privilege “operates to secure a fair civil or criminal trial within our adversarial system of justice”: AWB Ltd v Cole (2006) 232 ALR 743 at  per Young J. In Grant v Downs (1976) 135 CLR 674, Stephen Mason and Murphy JJ noted that there are “powerful considerations which suggest that [litigation privilege] should be confined within strict limits.” (at 685).
Litigation privilege only applies to judicial or quasi-judicial proceedings. It does not extend, for example, to commissions of inquiry. Nor does it extend to matters before the Administrative Appeals Tribunal: Ingot Capital Investments Pty Ltd v Macquarie Equity Capital Markets Ltd (2006) 67 NSWLR 91. See also Three Rivers District Council v Bank of England (No 6)  1 AC 610. (Though there is some conflicting authority on this).
The question as to whether litigation privilege extends to matters before the WIPO Arbitration and Mediation Center had not been judicially considered but it would seem very unlikely that it does.
Similarly, it seems unlikely that litigation privilege would extend to matters before the Trade Marks Office or the Patents Office.
TRADE MARK ATTORNEY PRIVILEGE
Unlike LPP, TMAP does not exist at common law. It is created by s 229 of the Trade Marks Act 1995 (Cth) and is expressly confined to communications between trade mark attorneys and their clients in the course of providing “intellectual property advice”.
“Intellectual property advice” is defined in s 229 as being advice in relation to patents, trade marks, designs, plant breeder’s rights or any related matters.
So, TMAP only extends to the equivalent of the advice arm of legal professional privilege. The statute does not confer any privilege that is equivalent to litigation privilege – and if you’re not sure that that’s really what parliament intended, you only need to look at the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising The Bar) Bill 2011 which made some changes to the privilege afforded to patent attorneys and trade mark attorneys. It stated:
“it is inappropriate to extend attorney-client privilege to include ‘litigation’ privilege: this should be the sole preserve of lawyers”.
While there have been several decisions concerning the scope of patent attorney privilege (which, like TMAP, is wholly a creature of statute), trade mark attorney privilege per se had not been judicially considered prior to the Titan decision.
Justice Logan made the following comments about the scope of TMAP which, in light of the above review of the law, are not controversial:
The point is not to miss the caveat. Communications constituting intellectual property advice are covered – so are documents created for that purpose.
Justice Logan accepted that his construction of s 229 might not reflect current practice but said:
“it is for Parliament, not the courts, to make a value judgment as to whether the scope of s 229 privilege ought to be extended”
He also acknowledged that it may sometimes be difficult to determine whether a particular communication is for the purposes of providing intellectual property advice or not – for example:
“it is not controversial that advice as to whether the rights associated with a registered trade mark confer rights in respect of an Internet domain name fall within the definition of “intellectual property advice” in s 229(3).“
And so, too, would advice as to whether the contents of a statutory declaration for use in an arbitral proceeding were sufficient to demonstrate that those rights extended to an Internet domain name – either by virtue of paragraph (b) or (e) of the s 229(3) definition.
But the mere drafting of that statutory declaration by a registered trade mark attorney would not attract s 229 privilege.
Likewise, advice as to what submission ought to be made to demonstrate that a trade mark right extended to a domain name would seem to fall within the scope of the privilege, whereas the mere drafting of such a submission (for example on express instructions and without any element of advice from the TM attorney) would not.
The comments of the Court require careful consideration by trade mark and patent attorneys – not because they change the law but because they emphasise a fact that is easily forgotton: attorney privilege is not equivalent to legal professional privilege because it has no “litigation privilege” arm.
Importantly, to the extent that privilege may wish to be asserted over particular communications, it is essential that those communications are framed as intellectual property advice. The mere taking of witness statements, filing of documents, preparation of evidence will not be privileged unless it constitutes communications for the purpose of giving or receiving intellectual property advice.
The judgment leaves open the question of whether communications between trade mark attorneys (and patent attorneys) and third parties – including experts – are privileged. On the basis of the comments of Justice Logan and the Explanatory Memorandum, one would tend to conclude that they are not.
Ratio for Logan J’s decision
Finally, it is important to understand the ratio for Logan J’s conclusion that inspection of the unredacted documents should be permitted.
The reason for his decision was that the affidavit material filed by the Respondents was insufficiently focussed and specific to support a claim of privilege. That’s it. Nothing further. There is nothing controversial about that finding at all. It is well-established that if affidavit evidence in support of a claim of privilege does not rise above mere assertion, it will be insufficient to establish the claim.
And, I should add, there were unusual aspects of this case that help to explain why the affidavit evidence was insufficient. In particular, the trade mark attorney firm was unable to contact the Respondent (their former client) in order to obtain instructions from him as to whether the claim for privilege was maintained.
Disclaimer: the author was junior counsel for Titan in the proceeding before Logan J.
Applicant’s mark: MONSTERS UNIVERSITY
Relevant classes: 25 (clothing, footwear, headgear etc), 29 (fresh & dried foods), 30 (various processed foods).
Opponent’s marks: MONSTER and MONSTER ENERGY – registered and used in various classes including in relation to carbonated soft drinks.
Grounds of opposition: ss 42(b) and 60 – grounds not established – mark to proceed to registration.
Hearing Officer McDonagh set out the following lengthy passage from Cars on Demand IP Pty Ltd v Cars on Demand Limited  ATMO 87:
A finding of deceptive similarity in wholly contained trade marks is not automatic and may depend on a number of factors. These include:
(a) The extent to which the shared element has retained its identity as an essential feature of the trade marks (See: Bulova Accutron Trade Mark  RPC 102 (Ch D).
(b) The distinctiveness of the common element/s and the distinctiveness of additional element/s. If the additional element changes the idea of the trade mark, this may point towards a finding that the marks are not deceptively similar.
(c) The nature of the additional element(s) – if the additional element(s) is/are particularly distinctive then the marks will most likely not be deceptively similar, even though they share a common element. And vice versa – if the additional element has a low level of distinctiveness then the marks are more likely to be deceptively similar (See: Application by Coles Myer Ltd, (1993) 26 IPR 577, BRATS: BONZA BRATS)
(d) The meaning behind the trade marks – where an additional element changes the meaning of the trade mark or the concept behind it then the trade marks are less likely to be deceptively similar.
(e) The placement, within the trade mark, of the common and non-distinctive elements, including size of text and any other elements may provide a different context and consequently alter the overall impression of the trade mark.
(f) When both the common element and additional element are distinctive – each case will turn on its own facts. See BAREFOOT: BAREFOOT RADLER. E & J Gallo Winery v Lion Nathan Australia Pty Ltd  FCA 934 at 63 per Flick J.
(g) Consideration must be given to the surrounding context of the goods and services, such as methods of sale and common trade techniques. Are customers purchasing goods by name? How are the goods presented? Who are the consumers? (General or specialist?).
The hearing officer considered that in the application of these principles in this case led to the conclusion that the marks were unlikely to be confused. This was particularly so due to the close association of the Opponent’s marks with sporting teams: “if consumers are involved with a sporting team, event or individual to the extent that they associate and purchase the Opponent’s Goods sold under the Opponent’s Trade Marks because of that association and further seek out goods in Classes 25, 29 or 30 to purchase on the basis of those trade marks, it is less likely that they will confuse the Trade Mark with the Opponent’s Trade Marks.”
The section 42 ground failed for the same reason as the s 60 ground: “In the present matter the Opponent has failed to establish a ground of opposition under section 60 of the Act. As the test for misleading or deceptive conduct under section 18 of the Australian Consumer Law (‘ACL’) is a more stringent test (at the standard ‘mislead or deceive’) than that for ‘deception or confusion’ under section 60, I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to section 18 of the ACL.”
In the latest instalment of the Aristocrat trade marks litigation, the Full Court has held that in order to conduct the side-by-side test prescribed by Justice Windeyer in Shell v Esso for the purposes of determining whether marks are substantially identical, it is not necessary for actual examples of the respondent’s use to be in evidence. (For a short refresher on Shell v Esso, see here.) Rather, the Court might be satisfied by other evidence as to the nature of the respondent’s mark and its use.
The Aristocrat parties were the registered owners of several trade marks incorporating the word ARISTOCRAT including three word marks for that word alone registered in relation to, amongst other things, gaming machines.
Justice Jacobson, at first instance, found that the respondents entered into 11 transactions with their South American customers for the supply of 56 gaming machines. These machines carried “fake Aristocrat compliance plates” and “counterfeit gaming software“.
The Aristocrat parties, however, were unable “to produce a single machine containing a counterfeit compliance plate or a counterfeit game“. Justice Jacobson considered that this failure made it “impossible to conduct the tests stated by Windeyer J in Shell. I cannot conduct a side by side comparison.”
His Honour therefore dismissed the trade mark infringement claim.
The Full Court considered, however, that the inference that the fake compliance plates bore the word ARISTOCRAT was “irresistible“. It said:
“Once it is concluded, as it must be, that each of the fake Aristocrat compliance plates bore the word “Aristocrat” the test of substantial identity was plainly satisfied.”
The appeal was allowed.
This conclusion sits uncomfortably, however, with some other decisions on substantial identity. It is well established that the inclusion of the whole of a registered mark within another mark does not inevitably lead to a finding of substantial identity. WOOLWORTHS METRO, for example, was not considered to be deceptively similar to the prior mark METRO: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365.
Without the ability to consider the use of the mark in its context, it seems difficult to reach a conclusion as to whether the mark used was substantially identical with the registered mark. The use (even “as a trade mark“) of a particular word will not always infringe a registered mark consisting of that word.
It is uncommon for examples of a respondent’s impugned use not to be in evidence. It seems likely that the Full Court’s decision in this case will be confined to its unusual circumstances. In particular, to circumstances where (a) the allegedly infringing use cannot be inspected; and (b) where there is an “irresistible” inference that the respondent’s use was of a mark which is substantially identical to the applicant’s registered mark.
Full Court’s decision is here.
Another common problem with TMO evidence is lack of detail.
Detail is important. Too often it is omitted in the preparation of evidence. Without it, evidence can be attacked as incomplete, ambiguous or entirely irrelevant.
Unfortunately, it is not uncommon for parties to seek to prove reputation (or use) merely by reference to sales or advertising figures. This is insufficient. The evidence must show a nexus between the sales or advertising expenditure and the mark in which reputation in claimed.
For sales figures, this will include evidence of how use of the mark was involved in the sale. For consumer goods, this might be simple because the trade mark is often clearly marked on the product itself. But even in those circumstances, proof of sales alone will not always be enough. In Hills Industries Ltd v Bitek Pty Ltd, Lander J considered that sales of more than $20 million and advertising expenditure of nearly $400,000, in circumstances where the trade mark appeared on every product sold, “does not prove any reputation at all.” His Honour considered the evidence “may tend to prove that the goods sold under the mark are very marketable goods.”
For goods that do not carry the trade mark and for services, proving reputation is even more problematic. Evidence of sales is important but it must always demonstrate a nexus between the sales and the use of the relevant mark.
Evidence of advertising can also be problematic if insufficient detail is included. It is certainly not enough to merely provide the delegate with a photocopy of an advertisement. Essential additional detail includes evidence of where the advertisement was published, when it was published, the typical readership of the relevant publication and its circulation.
The following short exchange took place between Gageler J and senior counsel for Cantarella (the appellant) in the course of oral submissions in Cantarella v Modena Trading on Tuesday:
GAGELER J: The difficulty I have is his Honour in paragraph 28 in the last sentence states a test which is the test upon which Mr Jackman relies and applied by the Full Court, his Honour then in paragraph 107, in the last sentence, appears to state then a different test, which is what he in fact applied in his judgment.
MR BANNON: We respectfully submit it is exactly the same test.
His Honour is here referring to the judgment at first instance. Here’s what Emmett J said in the cited sentences:
 … The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one that other traders are likely, in the ordinary course of their businesses, and without any improper motive, to desire to use upon or in connection with their goods (FH Faulding & Co Limited v Imperial Chemical Industries of Australia & New Zealand Limited  HCA 72; (1965) 112 CLR 537 at 555).
 … The test must lie in the probability of ordinary persons understanding the words, in their application to the goods, as describing, indicating or calling to mind either their nature or some attribute they possess (Mark Foy’s at 195).
These do not seem to me to be exactly the same test. The latter would permit the registration of words or phrases which are not yet ordinarily understood by most consumers – even if traders understood their meaning or significance and would be likely to use those words (or have actually used them) in relation to their own goods or services.
So, under the latter test, words such as sushi or kim chi or burrito or tapas would all have been registrable in Australia, in relation to the goods they describe, until the general public was sufficiently educated as to their meaning.
This doesn’t seem right. In my view, these words were incapable of distinguishing the goods they describe even before they passed into common usage in English. This is because they were words which are (and always were) likely to be used, in good faith, by other traders in the goods of the relevant kind (to paraphrase Kitto J’s test from Clark Equipment).
Bill Bryson calls the adoption of words from other languages “one of the glories of English”. At least half of the common words of our language are from non-Anglo-Saxon stock. Many are adopted from Italy. Of those, many relate to food or drink; consider spaghetti, lasagne, pizza, cappucino, espresso, affogato. Wikipedia lists hundreds of them. The word “spaghetti”, for example, seems to have first appeared in American cookbooks in the late 19th century. Other foreign words that, according to the Oxford English Dictionary, have entered our language in the last three decades are tarka dal (a creamy Indian lentil dish, 1984), popiah (a type of Singaporean or Malaysian spring roll, 1986) and izakaya (a type of Japanese bar which also serves food, 1987).
Of course, none of these words are inherently adapted to distinguish those foods or drinks.
Sushi‘s first recorded use in English was in the 1890s. Early users of that word, however, felt the need to explain what it is. Now, of course, it is virtually ubiquitous.
There are currently three Australian registered trade marks which include the words kim chi. The words alone, however, are not registered. Nor could they be. They are plainly descriptive of, and therefore not inherently adapted to distinguish, a particular Korean dish of fermented vegetables. By the way, for some great kim chi recipes, see here – but it’s really so 2013.
So, are ORO and CINQUE STELLE like KIM CHI and SUSHI? Well, not exactly: they are not the foreign nouns for the particular good. Rather, they are foreign laudatory terms that might be used in the description of the relevant goods.
Nevertheless, they are not invented words and they are words which other coffee traders might, in good faith, desire to use in relation to coffee. In my view, that is sufficient to support their removal from the register. This may not be the case, for example, for Russian or Japanese or Gaelic words of the same meaning. Each case will depend on its own facts. The close association between Italy and coffee in this country, the fact that Italian is the second most commonly spoken language and the use of the words in fact made by other traders are all relevant in this case.
To permit their monopolisation by one trader is to unduly restrict the words available to other traders for the description of their goods and services. Words which, for their ordinary signification (that is, not their brand signification), other traders might desire (in good faith) to use in relation to the relevant goods, should not be registrable.