When a sign is part of the common heritage … or not?

When a sign is part of the common heritage … or not?

When a sign is part of the common heritage … or not?

Opposition by Mantra IP Pty Ltd to registration of trade mark applications filed in the name of Carmeline Assey1

Mantra IP Pty Ltd (“Mantra”) successfully opposed registration of the trade mark applications CARMEN Q1 3504 and CARMEN Q1 603 under section 60 of the Trade Marks Act 1995 (Cth) (“TMA”) on the basis that it (and its business associates) had a prior reputation in the marks Q1 and Q1 RESORT & SPA such that the use of the Applicant’s marks would be likely to deceive or cause confusion.

This article by DCC’s Elizabeth Godfrey originally appeared in Volume 24, No. 5 of the Australian Intellectual Property Bulletin and is reproduced here with permission.

However, in an earlier Trade Marks Office decision2 also involving Mantra (but as the applicant to register three trade marks comprised solely of the sign Q1 (“the Spagnuolo decision”)), Hearing Officer Murray rejected Mantra’s applications for the sign Q1 under section 43 of the TMA. In Hearing Officer Murray’s view the sign Q1 had a geographical connotation and because of that connotation, use of the sign would potentially cause deception and confusion.3 Interestingly, Mantra successfully relied on the same marks rejected in the Spagnuolo decision (and three other marks) in this decision to establish the requisite reputation under section 60 of the TMA.

Background

Ms Assey (“the Applicant”) applied to register CARMEN Q1 3504 and CARMEN Q1 603 as trade marks in relation to real estate management and leasing and accommodation services.4 The digits in the applications represented two apartment numbers she owned. “Q1” was said to indicate the location of the apartments (in the Q1 Building located in the Gold Coast). The Q1 Building contains several businesses and over 500 luxury apartments.

Mantra and/or Sunleisure Hotels and Resorts Pty Ltd (“Sunleisure”) owned the following trade marks:

Trade Mark Corresponding application /
registration number
898834, 898835*
Q1 1228706, 1228707, 1228708 5
Q1 RESORT & SPA    1248464, 1248465, 1248468 6

(“the designated marks”)
*registered

The section 60 opposition ground

Reputation in Australia

Hearing Officer Williams found that Mantra had established a considerable reputation in the designated marks at the relevant date. The reputation was established despite “some vagueness”7 as to the company or companies in whom that reputation vested. Absent any evidence in answer, the extent of Mantra’s reputation was unchallenged.

As to the Spagnuolo decision, Hearing Officer Williams commented that:

At [30] Ms Murray dealt with the argument that the sign Q1 was perhaps part of the common heritage and thus able to be legitimately used as an indicator of location. She … conclude[d] that the sign Q1 was within a borderline category, wherein the name of “a plaza or other public space adjoining a building” had, because of the manner of its usage, become part of the common heritage. That category was referred to by Reeves J, in Mantra Group Pty Ltd v Tailly Pty Ltd8 in obiter remarks. Reeves J did so on the basis of further obiter comments, …which referred, somewhat tentatively, to the possible function of the words “Chifley Plaza” [as opposed to “Chifley Tower”] as part of the common heritage. Ms Murray reached a similar conclusion about the sign Q1 … [and] ultimately refused to register Mantra’s applications [under s43 of the TMA], basing this on the potentially misleading connotation of the sign Q1 [emphasis added]

In rejecting Mantra’s application for the Q1 sign under section 43 of the TMA, Hearing Officer Murray stated, that “[t]he Q1 sign is the only name of a building which, by virtue of its multifaceted identity, has… ‘become part of the common heritage.’9. As such it could not function as a trade mark and was indeed “utterly unfit for registration as a trade mark.”10

Hearing Officer Williams accepted that:

The usage made by [Mantra] [of the designated marks] is quite consistent with the incontrovertible fact that the Q1 Building is a place. There is no evidence on this point, but I accept that Q1 is officially, as well as publicly, recognised as the name of that building. … Ms Assey has not … serve[d] evidence in answer … I am therefore not able to say … that the function of the sign Q1 is predominantly an indication of the location …11

However, in contrast to Hearing Officer Murray’s view, he concluded that:

… [The evidence showed that] whatever geographical connotation it may have, the sign Q1 has been used by Mantra IP and Sunleisure as a trade mark in respect of the services provided by Sunleisure through the Q1 Resort and Spa and thus developed a concomitant reputation.

He noted that Spagnuolo decision had been appealed and Mantra’s applications were “still pending.”12 He also consider that different issues would arise in the present case where Mantra was the Opponent and the trade marks merely included, rather than comprised, the sign Q1.

Risk of Deception or Confusion Occurring

Given Mantra’s reputation in the designated marks, the sign Q1 could not form part of the Applicant’s trade marks without causing deception or confusion.

The numerals 603 and 3504 represented apartment numbers within the Q1 building. However, relying on the presence of the primary element CARMEN, the Applicant asserted that the trade marks were sufficiently distinguishable from the designated marks so as to negate any likely confusion. However, “[d]espite the obvious visual and conceptual differences between the trade marks and the designated marks”13, Hearing Officer Williams considered that the Applicant’s use of her marks would cause significant confusion. He considered that two trade marks can share a common element without the slightest risk of deception or confusion, even when the common element is intended to function as a trade mark. He also acknowledged that deception or confusion was less likely in proportion to the descriptive import of the element in common. However, this would be a question of fact in each case and reliance on “descriptiveness” is not always sufficient”.14

Hearing Officer Williams commented that many will realise that the Applicant’s trade marks do not indicate a connection with Mantra. He also accepted that it was the Applicant’s intention that the sign Q1 should “not perform a trade mark function”. However, to her detriment, the Applicant had not constructed her trade marks in such a way that would “particularly stress the descriptive function”, for example, her trade marks were not in the form “CARMEN’S APARTMENT 603 AT THE Q1”.

Conclusion

Section 60 clearly requires reputation in a prior trade mark. It is difficult to reconcile this decision with the Spagnuolo decision where three of the prior trade marks relied on to establish the requisite reputation were previously found to be “utterly unfit for registration”.15 The conclusion may have been different if Mantra’s evidence had been contested. For the next instalment, we await the Federal Court’s decision in the appeal against the Spagnuolo decision.

Endnotes

  1. Re: Opposition by Mantra IP Pty Ltd to registration of trade mark applications 1281317 and 1281318 (classes 36, 43) – CARMEN Q1 3504. CARMEN Q1 603 – filed in the name of Carmeline Assey – the Assey decision.
  2. Re: Opposition by Danilo Spagnuolo to registration of trade mark applications 1228706(36), 1228707(39) and 1228708(35, 43) – Q1 – in the name of Mantra IP Pty Ltd.
  3. Paragraph 43 – the Spagnuolo decision
  4. in classes 36 and 43, respectively
  5. These pending applications were those opposed in the Spagnuolo decision.
  6. Each of these marks are currently opposed by the Q1 Building’s Body Corporate, Q1 CTS 34498 BODY CORPORATE, Mr Assey & Mr Spagnuolo.
  7. Paragraph 11 – Assey decision
  8. Mantra Group Pty Ltd v Tailly Pty Ltd (2010) 83 FCR 450
  9. Paragraph 43 – the Spagnuolo decision
  10. Paragraph 43 – the Spagnuolo decision quoting Re Trade Mark “Orlwoola” (1909) 26 RPC 850 (C.A.).
  11. Paragraph 17 – Assey decision
  12. Paragraph 16 – Assey decision
  13. Paragraph 24 – Assey decision
  14. Caterpillar Loader Hire (Holdings) Pty Ltd & ors v Caterpillar Tractor Co (1983) 48 ALR 511
  15. Paragraph 43 – Spagnuolo decision.