FEDERAL COURT OF AUSTRALIA

Qantas Airways Limited v Edwards [2016] FCA 729

ORDERS

THE COURT ORDERS THAT:

1.    The appeal be dismissed, with costs.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

YATES J:

Introduction

1    This is an appeal from a decision of a delegate of the Registrar of Trade Marks, who dismissed the appellant’s opposition to the registration under the Trade Marks Act 1995 (Cth) (the Act) of the mark the subject of trade mark application 1356461 (the opposed mark). The respondent, Luke Edwards, is the applicant for the opposed mark.

2    The opposed mark is the following sign:

3    As can be seen, the opposed mark comprises a stylistic representation of part of a kangaroo set against a contrasting T-shirt element. The elements combine to show the kangaroo element as, in effect, a cut-out from the right-hand side of the T-shirt. The entry in the Australian Trade Marks Online Search System (ATMOSS) for the application describes the opposed mark as a kangaroo silhouette that indents a T-shirt.

4    The respondent applied for registration of the opposed mark on 16 April 2010 (the priority date) for the following goods in Class 25: clothing; footwear; headwear; shirts; and T-shirts (the respondent’s goods). The same mark has been registered in New Zealand (Number 831929) in respect of the same goods, with effect from 16 April 2010.

The hearing before the delegate

5    The appellant, Qantas Airways Limited, opposed the registration of the mark on 14 grounds. However, at the hearing before the delegate, it based its opposition on ss 42(b), 43, 44, 58 and 60 of the Act. For present purposes, it is only necessary to refer to the text of ss 44 and 60 of the Act.

6    Section 44(1) of the Act provides:

(1)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)    the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)    a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)    a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)    the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:        For deceptively similar see section 10.

Note 2:        For similar goods see subsection 14(1).

Note 3:        For priority date see section 12.

Note 4:    The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(Emphasis in original.)

7    The provisions to which s 44(1) of the Act are expressed to be subject (honest concurrent use (s 44(3) of the Act) and prior continuous use (s 44(4) of the Act) have no relevant application in the present appeal.

8    Section 60 of the Act provides:

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)    another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)    because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note:    For priority date see section 12.

(Emphasis in original.)

9    The grounds of opposition based on these provisions centred on the appellant’s registration of trade mark 711454:

and, in the case of the opposition based on s 60 of Act, also the mark:

10    The delegate referred to the first mark as “the 1984 Mark” because that was the date when use of the mark commenced. He referred to the second mark as “the 2007 Mark” because that is the date when the appellant adopted it. For reasons that will become apparent, I will use slightly different designations for these marks.

The decision of the delegate

11    The delegate was not satisfied that any of the grounds of opposition, as pursued at the hearing, had been established.

12    For its opposition based on s 44 of the Act, the appellant relied on the 1984 Mark for the required comparison. The 1984 Mark is registered for services in Classes 35 and 36. The appellant contended that it was only certain of the Class 35 services, namely “merchandising services”, that were “closely related” to the respondent’s goods.

13    The delegate construed “merchandising services” as the “trade or sale of goods … concerned with or relating to the promotion of goods and services”.

14    The delegate was satisfied that there is “some similarity” between the respondent’s goods and “merchandising services”, although he did not express a concluded view on that question because he was not satisfied that the opposed mark was substantially identical with or deceptively similar to the 1984 Mark in any event.

15    The delegate then considered the ground of opposition based on s 60 of the Act. The delegate noted the appellant’s first use of the device of a kangaroo as part of its branding in 1943, when it commenced flights between Sydney and London. The delegate found that, since then, the appellant’s principal trade mark has always featured a representation of a kangaroo, although the rendering of the device has been through several iterations culminating in the 1984 Mark and the 2007 Mark. The delegate noted that, although the 1984 Mark is registered with a triangular background, the 2007 Mark has no background as such. Nevertheless, on the evidence, the delegate found that the 2007 Mark is used almost exclusively in advertising and on the tails of the appellant’s aircraft, featuring a white kangaroo against a red triangular background.

16    The delegate also found that the differences between the 1984 Mark and the 2007 Mark, as used in this manner, are quite minimal and would escape the notice of most consumers.

17    The delegate accepted that, as a consequence of their use over several decades in relation to the appellant’s airline services and its associated merchandising and sponsorship activities, the 1984 Mark and the 2007 Mark “had the kind of reputation contemplated by s 60 of the Act as at the Priority Date”. In so finding, it would seem that the delegate also had in mind the appellant’s earlier iterations of the kangaroo device when referring to use “over several decades”.

18    However, notwithstanding that reputation, the delegate was not satisfied that the use of the opposed mark in relation to the respondent’s goods was likely to deceive or cause confusion amongst a significant or substantial number of consumers. The delegate said (at [46]):

… I believe the extensive and long standing reputation of the s 60 Marks, almost invariably used as the evidence shows with a white kangaroo on a red triangular background, would in this instance tend to lessen the likelihood of any significant confusion or deception.

(Emphasis in original.)

19    The delegate found that many traders, including those in Class 25 goods, had featured a kangaroo in their branding and trade marks to indicate a connection with Australia. The delegate said (at [47]):

… The Opponent is accordingly in no position to claim a monopoly in marks of this kind, and certainly not in connection with Class 25 goods in particular.

20    Further, in accordance with his findings in relation to s 44 of the Act, the delegate considered that there were differences in appearance between the opposed mark and the 1984 Mark and 2007 Mark, as used by the appellant.

21    The delegate concluded (at [50]):

To conclude, given the differences between the s 60 Marks and the Opposed Mark when considered as wholes, the fact that it is not uncommon for traders in Class 25 goods to include a representation of a kangaroo as part of their branding or trade marks, and the obvious differences between dealing in Class 25 goods and providing airline services, I am not satisfied use of the Opposed Mark for the Applicant’s Goods would be likely to deceive, or cause confusion amongst, a significant number of consumers. The Opponent has accordingly not established its ground of opposition under s 60.

22    The delegate then turned to consider the remaining grounds of opposition based on ss 42(b), 43 and 58 of the Act. It is not necessary for me to summarise the delegate’s reasons for rejecting the appellant’s opposition based on these provisions.

The appeal

23    In this appeal, the appellant has confined its grounds of opposition to ss 44 and 60 of the Act.

24    The appellant relies on trade mark 711454 depicted at [9] above for the purposes of its s 44 objection. As I have noted, the delegate referred to this as the 1984 Mark. I will refer to it as the 1984 kangaroo/tail fin mark so as to distinguish it from another mark which the appellant first used in 1984—the 1984 kangaroo mark:

25    For its s 60 objection, the appellant relies on the 1984 kangaroo/tail fin mark and the 1984 kangaroo mark, together with each of the following marks:

26    The delegate referred to the first of these marks as the 2007 Mark. I will refer to it as the 2007 kangaroo mark. I will refer to the second mark as the 2007 kangaroo/tail fin mark.

27    Where it is not necessary to distinguish between them, I will refer to the 1984 kangaroo/tail fin mark and the 1984 kangaroo mark as the 1984 marks and the 2007 kangaroo/tail fin mark and the 2007 kangaroo mark as the 2007 marks.

The evidence

The appellant’s evidence

28    The appeal to this Court is a hearing de novo of the appellant’s opposition to the respondent’s application for registration of the opposed mark. I have been informed that the evidence before the Court in the appeal is not the same as the evidence that was before the delegate.

29    The evidence on which the appellant relies comprises:

    two affidavits of Tanya Lee Bulkin. Ms Bulkin is currently the Chief Marketing Officer of Qantas Loyalty. She was formerly the appellant’s Head of Brand, Planning and Member Marketing and, before that, its Head of Marketing. Ms Bulkin’s first affidavit makes reference to, and includes, a large number of exhibits;

    an affidavit of Justin Kevin Israel Dery, the Managing Director of Coverpoint Marketing Pty Limited (Coverpoint Marketing), a company responsible for the appellant’s merchandising and licensing program. This affidavit also makes reference to, and includes, a number of exhibits; and

    an affidavit of Paul Lindsay Blanket, a marketing and communications consultant engaged by the appellant as an independent expert. This affidavit also makes reference to, and includes, certain exhibits.

Ms Bulkin’s evidence

30    Ms Bulkin’s first affidavit includes a general overview of:

    the commencement of the appellant’s business in 1920, the commencement of its regular scheduled airmail and passenger services in 1922, and its first overseas flight in 1935;

    the appellant’s current international flight routes, its participation as a founding member of the oneworld Global Alliance, and the operation of the Qantas Frequent Flyer program; and

    the appellant’s involvement in community initiatives, artistic endeavours and sporting events.

31    Ms Bulkin’s first affidavit also includes a history of the appellant’s registered and unregistered trade marks, including various “kangaroo” devices, which have evolved considerably since the first kangaroo device was adopted by the appellant in 1944. This evolution culminated in the 1984 marks and the 2007 marks.

32    Ms Bulkin said that, in 1943, Qantas began offering flights between Sydney and London via an Indian Ocean route. It coined this service the “Kangaroo Service” or “Kangaroo Route”. The first kangaroo device used by the appellant was designed and developed in 1944 for this service. The device included a somewhat realistic depiction of a kangaroo in mid-hop set against a circular background element bearing the words QANTAS EMPIRE AIRWAYS and KANGAROO SERVICE. This device was painted underneath the cockpit of the appellant’s first Liberator aircraft, and was then used on all the appellant’s aircraft.

33    In 1947, this device was updated to a more stylised silhouetted kangaroo element with wings. This device was first used in 1947 on the side of the appellant’s newly introduced Lockheed L749 Constellation aircraft. Advertising of the appellant’s airline and air transport services, featuring this updated device, commenced shortly thereafter.

34    In 1984, the kangaroo device was again updated. The wings depicted on the kangaroo element were removed and the kangaroo element became the more slender, stylised representation depicted above. Further updating in 2007 resulted in the slant of the kangaroo being changed and a sleeker depiction being adopted.

35    Ms Bulkin’s first affidavit shows that the core services in respect of which the appellant has used these kangaroo devices are its transportation services. Relatedly, in more frequent times, the appellant has provided frequent flyer programs, freight services, courier services, travel insurance, rental cars, hotel bookings, hotel transfers, activities bookings, and the provision of in-flight meals using kangaroo devices and, more particularly, the 1984 marks and the 2007 marks. Copious examples have been provided in her evidence.

36    In this connection, and without seeking to be exhaustive, Ms Bulkin’s first affidavit refers to and illustrates the use of the appellant’s various kangaroo devices, but more particularly the 1984 marks and the 2007 marks:

    on the exterior and interior of aircraft. As at March 2010, the appellant had 52 planes flying internationally (including in and out of Australia) and 136 planes flying domestically in Australia, all of which displayed an iteration of the kangaroo devices. Of these, 102 planes displayed the 1984 kangaroo/tail fin mark and 86 planes displayed the 2007 kangaroo/tail fin mark;

    on meal/refreshment trays, table linen and utensils (principally, cups and cutlery) for food services on the appellant’s international and domestic flights;

    on headrest covers and disposable luggage tags used in connection with the appellant’s international and domestic flights;

    on stationery (letterhead and envelopes);

    in relation to the appellant’s Frequent Flyer program (including on membership cards);

    on so-called ancillary products provided to the appellant’s customers in-flight (such as drink coasters, boxes of matches (presumably when smoking was allowed), towelettes, toothpicks, key wallets, playing cards, razors, sleep masks, flight socks, amenities kits, and entertainments packs for children); and

    in general advertising of the appellant’s air transport services, including on the appellant’s website, in newspaper advertising (nationally), in television advertising (nationally), in internet advertising and in media releases.

37    Ms Bulkin’s first affidavit also refers to and illustrates the use of the appellant’s various kangaroo devices on licensed merchandise offered through the appellant’s Qantas Club, on its flights through the In-Flight Shop and through its on-line store, the Qantas Shop.

38    Merchandise offered through the Qantas Club has included passport holders and mobile phone covers on which the 1984 kangaroo/tail fin mark is embossed.

39    In-flight merchandise offered through the In-Flight Shop has included hats (the example in evidence is a hat bearing the 1984 kangaroo/tail fin mark with the name QANTAS appearing prominently under the mark), watches, fridge magnets, wallets and model planes.

40    The Qantas Shop is accessed by the URL www.qantasshop.com.au. It has operated since at least 2002. Products such as luggage, watches, toys, model aircraft, books, jewellery and hats are available for purchase. The evidence is that “the majority of this merchandise displays Qantas branding”. Particular examples given in the evidence are a watch, a koala toy, a computer mouse, music CDs and a hat (once again, bearing the 1984 kangaroo/tail fin mark with the name QANTAS appearing prominently under the mark). Selected Qantas branded merchandise sold in-flight is also available for purchase at the Qantas Shop.

41    Ms Bulkin’s first affidavit includes a statement that model Qantas aircraft bearing kangaroo devices have been sold through the In-Flight Shop, the Qantas Shop and third party stores, including at airports and souvenir shops. Her first affidavit did not descend to any detail concerning these sales, although some examples of products were given. The name QANTAS was used prominently on these products.

42    On 15 March 2010, the appellant announced, on its website, the release of “a new premium range of travel luggage and accessories” made under licence by the travel luggage specialist Antler (trolley bags, roller cases, cabin rollers, laptop bags and garment carriers in a variety of styles and finishes) and by Design GO (TSA padlocks, luggage straps, baggage tags, ear plugs, a no-peg clothes line, international travel adaptors, travel pillows and money belts). Ms Bulkin’s evidence includes a statement that Qantas branded luggage has been sold on the Qantas Shop and via third party retailers but, once again, her evidence did not descend to any detail containing these sales, including when these sales were first made. As will be apparent, the announcement on 15 March 2010 was made shortly before the priority date in any event.

43    The appellant has used its various kangaroo devices in relation to the sponsorship of certain organisations and events, and on promotional merchandise. The example given by Ms Bulkin was the appellant’s support of the National Breast Cancer Foundation (specifically, Breast Cancer Month in October 2002 and Pink Ribbon Day in October 2006). The evidence of use in this regard is of the 1984 kangaroo/tail fin device with the names QANTAS or QANTASLINK. The other promotional merchandise referred to in this part of Ms Bulkin’s affidavit comprises various stick pins, promotional bags and document holders bearing some of the appellant’s kangaroo devices. These items were apparently deployed by the appellant at trade fairs and conferences.

44    The appellant licensed a firm, called Ambra, to use the 2007 kangaroo/tail fin mark on travel socks and stockings. The examples of the packaging for the stockings shows the mark with the name QANTAS and the words “Official hosiery supplier” appearing prominently thereunder. With regard to the travel socks, the words “OFFICIAL LICENSED PRODUCT” appear prominently above the mark and the name QANTAS appears prominently below the mark on the packaging. Ms Bulkin’s evidence is that these products were sold through a range of retail outlets, including Myer, Woolworths and the Undie Warehouse. The licence was apparently entered into on 6 April 2004 (there is no licence agreement in evidence). The only evidence of sales before the priority date is for stockings in 2009 and in the period January to March 2010 (82,169 and 24,441 units, respectively). There is no evidence of sales for socks before the priority date, beyond Ms Bulkin’s statement that the socks were sold.

45    Between 1987 and 1993, the 1984 kangaroo/tail fin mark was used on packaging for the Kolotex brand Sheer Relief pantihose product. The packaging of the product featured pictures of Qantas flight attendants in uniforms of the time. The packaging also featured the name QANTAS appearing prominently under the mark (on the front of the packaging) and next to the mark (on the back of the packaging).

46    Since at least 2006, the appellant has used the 1984 kangaroo mark and, since 2007, the 2007 kangaroo mark, on pyjamas provided in-flight to its Business Class passengers on international flights. In January 2010, the appellant commenced using the 2007 kangaroo mark on sleeper suits provided in-flight to its First Class passengers on international flights. There is evidence that the appellant uses the 2007 kangaroo mark on and in relation to socks provided in-flight to the appellant’s Premium Economy and Economy passengers on international flights. The example given is at 2 March 2011. This is after the priority date.

47    The appellant’s staff who work in “customer facing” roles (such as, in-flight staff, ground staff, baggage handlers and customer service staff) wear a uniform supplied by the appellant. Ms Bulkin referred to, and provided examples of, uniforms worn by in-flight staff since 1974. The uniforms included various kangaroo devices, including the 1984 marks and the 2007 marks, along with other Qantas indicia. The examples given show use of the 1984 marks and the 2007 marks on, variously, jackets, shirts, scarves, ties, jacket buttons, name badges, lapel badges and tie pins. The examples also include use of the 1984 kangaroo mark and the 2007 kangaroo mark on bags issued to in-flight staff. Ms Bulkin also provided examples of uniforms worn by ground staff displaying the 1984 kangaroo/tail fin mark and the 2007 kangaroo/tail fin mark, in each case with the name QANTAS.

48    In her first affidavit, Ms Bulkin gave examples of use of the 1984 kangaroo mark on sponsorship hats and T-shirts used in interactive athletics clinics run by Cathy Freeman in Weipa, Horn Island, Roma and Charleville in 2007. Ms Bulkin also gave examples of use of the 2007 kangaroo mark on sponsorship hats, T-shirts, aprons, gift bags, table centrepieces, trestle tables and bags. The T-shirts also included the 2007 kangaroo/tail fin mark in association with the name QANTAS: see Ex 1. It is not clear when these promotional activities took place or, indeed, what they were.

49    Ms Bulkin referred to the appellant’s sponsorship of the Australian Girls Choir (since 1998), the National Boys Choir of Australia (since 1998) and the Gondwana Choir (since 2009). Ms Bulkin’s evidence shows examples of the uniforms worn by the choirs, which include the use on shirts of the 2007 kangaroo/tail fin mark with the name QANTAS.

50    The appellant has been the Official Naming Rights Partner and Official Airline of the Wallabies since 2004. Qantas branding has appeared on clothing worn by team members. It is also used on selected items of supporter clothing, which is available for sale to the public. The examples given show player uniforms that include, variously, the 1984 kangaroo/tail fin mark and 2007 kangaroo/tail fin mark, in each case with the name QANTAS depicted prominently. It should be noted that the uniforms also include, separately and prominently, the depiction of a stylised wallaby. The playing jersey also includes a coat of arms, depicting a kangaroo and emu. These devices are not the appellant’s devices.

51    The appellant has supported Football Federation Australia and was the Official Partner, Official Sponsor, Official Airline and Naming Rights Sponsor of the Socceroos during 2010. Ms Bulkin gave the example of a Socceroos’ training T-shirt bearing the 2007 kangaroo/tail fin mark with the name QANTAS depicted prominently. She also provided an example of an advertisement for the competition (20 March to 30 April 2010) run by the appellant for tickets to the FIFA World Cup. The advertisement includes the 2007 kangaroo/tail fin mark with the name QANTAS depicted prominently. The advertisement also refers to “the Qantas Socceroos”.

52    In her first affidavit, Ms Bulkin gave examples of Qantas branding at the 2010 Australian Grand Prix which was held on 28 March 2010. This branding included use of the 2007 kangaroo/tail fin mark with the name QANTAS depicted prominently. In certain years, the appellant sponsored Grand Prix Grid Girls as Qantas brand ambassadors at the Australian Grand Prix. The uniforms of these ambassadors bore the 1984 kangaroo mark (in 2001 and 2005) and the 2007 kangaroo/tail fin mark (in 2010). In the latter example, the kangaroo/tail fin mark is used with the name QANTAS depicted prominently.

53    In her first affidavit, Ms Bulkin also gave evidence concerning recognition of the Qantas brand. In 2009 and 2010, the Qantas brand was ranked 6th and 7th in the Top 10 World Best Airline brands (based on the Skytrax World Airline Awards). Ms Bulkin also said that the appellant undertakes brand tracking and brand awareness surveys. Specifically, she referred to surveys undertaken by Ipsos ASI on behalf of the appellant. She produced the following documents (the Ipsos ASI documents):

    a presentation by Ipsos ASI outlining the nature of the services it was proposing to provide to the appellant;

    a questionnaire that was used by Ipsos ASI for the surveys it conducted for the appellant;

    a summary of the results of the survey conducted by Ipsos ASI for the appellant in the period January to April 2010 in relation to consumers who travel domestically;

    a summary of the results of the survey conducted by Ipsos ASI for the appellant in the period October to December 2009 in relation to consumers who travel internationally; and

    a summary of the results of the survey conducted by Ipsos ASI for the appellant in the period January to April 2010 in relation to consumers who travel internationally.

54    It is important to note that these surveys were not directed to the kangaroo devices as such or to any other trade indicium of the appellant, apart from the Qantas brand itself. In this connection, the surveys were directed to ascertaining the perception of Qantas as an airline by those who were surveyed. Indeed, the surveys make no mention of, or ask any question about, the kangaroo devices in general, or any of the 1984 marks and 2007 marks in particular. I will return to this when summarising Mr Blanket’s evidence below.

55    Ms Bulkin’s second affidavit corrected some errors in her first affidavit. It is not necessary for me to detail the corrections.

56    Ms Bulkin was cross-examined. There is nothing in her cross-examination which requires particular mention in these reasons.

Mr Dery’s evidence

57    As I have noted, Mr Dery is the Managing Director of Coverpoint Marketing. Coverpoint Marketing manages and develops corporate and consumer licensing and mechandising programs for Australian and international brands. Mr Dery said that, on 29 February 2008, Coverpoint Marketing entered into an agreement to “manage, develop and grow the Qantas merchandising and licensing program”.

58    Mr Dery gave evidence that, in 2009 and 2010, Coverpoint Marketing worked with a third party licensee, Cooee Brands, to develop a line of Qantas-branded merchandise to be sold through retail outlets. These products included a rugby ball, a soccer ball, retro magnets, a plush diary, a plush aviator bear, a plush koala and a boomerang. Although there appears to have been an approach by Cooee Brands to elicit customer interest for this merchandise, there is no direct evidence of any sales having been made before the priority date. The highest that Mr Dery could put the matter was to express his belief that “retailers ordered the merchandise from Cooee Brands in or around April 2010 in order for it to be in stores and being sold by June 2010”.

59    Mr Dery also gave evidence of a project in 2004 to design and sell a line of Qantas apparel. However, Qantas did not proceed with this project.

Mr Blanket’s evidence

60    Mr Blanket is a lecturer in advertising and marketing at the Macquarie Graduate School of Management. He holds undergraduate and postgraduate degrees in Commerce (Marketing) from the University of New South Wales. He is a Fellow of the Australian Marketing Institute. He is a Certified Practising Marketer.

61    Mr Blanket is also the principal of First Impressions Pty Ltd (First Impressions) which, since 1987, has provided marketing, advertising and promotional consulting services to government and industry. Prior to his involvement with First Impressions, Mr Blanket was a Group Account Director at the advertising agency Foote, Cone & Belding. Prior to that, Mr Blanket was employed as a Marketing Assistant at Unilver Australia Pty Limited and in 1980 was the Group Product Manager at Streets Ice Cream.

62    Mr Blanket gave evidence of his opinion of the appellant’s brand. This included the name QANTAS and (what Mr Blanket referred to as) “the flying kangaroo logo”. Initially, Mr Blanket did not identify any specific rendering of this logo. Rather, he relied on a generalised description. In this connection, he said that:

    the kangaroo is in profile;

    the shape and positioning of the kangaroo implies swift movement rather than a kangaroo which is standing still;

    the tail is up in the air, which implies that the kangaroo is moving fast; and

    the shape of the kangaroo is more graphically stylised than traditional kangaroo designs which are more realistic.

63    Mr Blanket was then shown a number of kangaroo devices used by the appellant, including the 1984 marks and the 2007 marks. He was then asked to comment on those devices.

64    Mr Blanket commented that, since the appellant’s adoption of the kangaroo device in 1947, the core elements of the device have remained constant in each subsequent iteration—namely, “a graphically stylised kangaroo in profile, with its tail up, which is slender and shaped to imply swift movement”.

65    Mr Blanket expressed the following views:

… I believe that as at 16 April 2010 the 1968, 1984 and 2007 versions of the flying kangaroo logos … had gained a strong reputation in Australia. I believe that the 1984 and 2007 flying kangaroo logos, as at 16 April 2010, had an extremely high brand awareness in Australia and I expect that awareness of the brand would have been higher than for any other airline. …

66    Mr Blanket said that this belief was based on his experience in marketing, including in relation to his own projects relating to the travel industry, and his own observations of the market. He also expressed his belief as one based on his own knowledge and observation of “the level of advertising conducted by Qantas… and the level of interaction and experience members of the public have with Qantas as a major supplier of airline services in this country”. Mr Blanket’s explanation did not descend to any greater detail or reveal his reasoning process. Absent such reasoning, his evidence in this regard really stands no higher than a statement of his impression, albeit expressed through the eyes of one engaged in marketing.

67    Mr Blanket also said:

… I believe that the Qantas flying kangaroo logo (and in particular the 1984 and 2007 Qantas flying kangaroo logos) was at 16 April 2010 (and remains) such a ubiquitous and recognisable trade mark that there would have been only a very small proportion of the Australian population that would not recognise it and associate it with Qantas. …

68    Once again, Mr Blanket did not descend to any greater detail or reveal his reasoning. He simply expressed it as one “[b]ased on my experience in marketing in Australia”.

69    Mr Blanket was provided with the Ipsos ASI documents. He referred to certain findings summarised by Ipsos ASI with respect to consumer awareness of the Qantas brand. He said that the summarised awareness rankings reinforced his belief that, as at 16 April 2010, Qantas was one of Australia’s most recognisable brands. He then expressed his belief “that this would also have extended to the flying kangaroo logo”. He gave no reason for this belief.

70    Mr Blanket was also provided with a document that was said to record the appellant’s “marketing spend” for the 2003 to 2010 financial years for the Qantas business. He was asked to assume that “this marketing spend was associated with promotion of the entire Qantas brand including the flying kangaroo logo”. Mr Blanket was also provided with a document that was said to record the number of passengers carried on Qantas and QantasLink flights in the 2006 to 2010 financial years. He was instructed to assume that “all of these flights were operated under the Qantas brand including the flying kangaroo logo”. Further, Mr Blanket was provided with a document that was said to record the appellant’s revenue generated “under the Qantas brands” for the 2006 to 2010 financial years. He was instructed to assume that “all goods and services that were provided by the Qantas brands which were a material source of revenue for the Qantas brands were provided under the kangaroo device, and as such, the revenue the Qantas brands generated can be directly attributed to the flying kangaroo logo”. As events transpired, these assumptions were not proved in the evidence. Nevertheless, in relation to them, Mr Blanket said:

These facts confirm in my mind that as at 16 April 2010, Qantas and its flying kangaroo logo had one of the highest levels of brand exposure and brand awareness in Australia of any Australian brand and reinforced its pre-eminence in the Australian tourism market at that time.

71    Mr Blanket then turned to consider the question of brand extension—which he described as the practice by which an existing brand’s established name and graphic used in relation to one category of product or service, are adapted for use in relation to a new category of product or service. Mr Blanket said that the objective of brand extension is to trade off the position and heritage of the “core” brand while providing “a more individual sub-brand that will allow for … entry into a new market …”. He gave the example of “Virgin’s transition from an airline to also include such services as financial services and telecommunications”.

72    Mr Blanket said that brand extension had become a common practice in “the travel industry in Australia” over the last 30 years. He expressed the opinion that “brand extension was alive and well in the travel industry in Australia as at 16 April 2010 and Australian consumers were aware of and exposed to brand extension in that industry”. He also said that “Australian consumers readily accepted brand extension as a tool for assisting in product or service choice”.

73    Mr Blanket was asked by the appellant’s solicitors to give his opinion, as at 16 April 2010, as to what “ordinary persons in Australia” would be likely to regard as “the visual and other similarities (if any) and/or differences (if any)” on seeing the 1984 kangaroo/tail fin mark used in relation to, amongst other things, advertising, marketing and merchandising services, and the opposed mark used in relation to clothing, footwear, headwear, shirts and T-shirts. Mr Blanket gave an opinion on those matters.

74    Mr Blanket was then asked to express an opinion as to whether there was “any real tangible risk” of persons being caused to wonder whether clothing, footwear, headwear, shirts and T-shirts bearing the opposed mark came from the same source as the services provided under the 1984 kangaroo/tail fin mark (relevantly advertising, marketing and merchandising services) or vice versa. Mr Blanket said they would. He said there was a high likelihood. His reasons for that opinion were the similarities between the two marks (he said the similarities were stronger than the dissimilarities); consumer awareness of brand extension within the airline and travel industry; the use of “augmented” logos and imagery to make clothing items more fashionable; and consumer awareness that graphic designs of brands can evolve over time.

75    The use of “augmented” logos and imagery requires further explanation. Mr Blanket said that manufacturers of clothing will add visual appeal to a “standard” logo graphic by enlarging it; adding different colours or graphic images to the logo; and altering part or the whole of the logo design. Mr Blanket said that if consumers were faced with a T-shirt made in the design of the opposed mark, they would be “likely to believe that the kangaroo represented would be from or licensed by Qantas”. By this I understand Mr Blanket to be referring to a purported use of the opposed mark in which the T-shirt element is subordinated to the shape of the goods themselves (as a T-shirt).

76    It is convenient to record, now, my conclusion concerning this example. Such use would not be of the opposed mark. Alternatively, it would not be a normal and fair use of the opposed mark. This is because, in this scenario, the T-shirt element of the combination relinquishes its trade mark significance. It becomes, simply, the shape of the goods themselves, leaving the kangaroo element as the only component that could possibly have trade mark significance. The kangaroo element, alone, is not the mark for which the respondent seeks registration. Further, the opposed application is not for the opposed mark as a shape mark. Thus, as a matter of analysis, Mr Blanket’s example raises a false comparison.

77    Mr Blanket was then asked to assume that the 1984 marks and the 2007 marks had been used by the appellant in relation to a range of goods and services, including those surveyed in Ms Bulkin’s affidavit (described at [36]-[52] above). He was asked to state whether, in his opinion, because of the reputation of the 1984 marks and 2007 marks as at 16 April 2010, there was “a real tangible risk” that, as at that date, ordinary persons in Australia who saw the opposed mark being used in the course of trade in relation to clothing, footwear, headwear, shirts and T-shirts, would be caused to wonder whether those goods came from the same source as the goods and services bearing either the 1984 marks or the 2007 marks, or vice versa.

78    Mr Blanket expressed the opinion that, as at 16 April 2010, it was “highly likely” that ordinary persons in Australia would be so caused to wonder. He said that his reasons for that opinion were the same as those I have summarised at [74] above. In addition, he said that, given the extent of the appellant’s brand extensions to a large number of different types of goods and services covering travel related and non-travel related items, consumers were used to seeing the 1984 marks and the 2007 marks on such items and would therefore be likely to perceive the opposed mark as a further instance of brand extension by the appellant.

79    The respondent objected to the reception of Mr Blanket’s affidavit in its entirety. The respondent submitted that the issue raised in the appeal is one of trade mark confusion and “the issue of confusion is a question of fact to be decided by the court”. The respondent submitted that Mr Blanket’s opinion was not one based on any investigation or survey of the public’s perceptions that he had carried out. The respondent argued that Mr Blanket only relied on his experience in giving his opinions.

80    The respondent sought to rely on the Full Court’s observations in Australian Postal Corporation v Digital Post Australia Pty Ltd (2013) 105 IPR 1; [2013] FCAFC 153 at [27]-[32] to support his objection. I do not think, however, that the Full Court’s observations in that case assist the respondent’s objection. Indeed, at [28], the Full Court observed that the expert’s opinion in that case was based on his experience and expert knowledge on branding. The Full Court said that this was a proper basis on which expert evidence could be admitted (and was admitted in that case).

81    At the hearing, both parties accepted that, rather than dealing with the respondent’s objection at that time, I should admit Mr Blanket’s affidavit provisionally, and deal with the respondent’s objection in these reasons. I should add that Mr Blanket was not required for cross-examination. Thus, the parties were not disadvantaged by this course.

82    I am not persuaded that Mr Blanket’s affidavit is inadmissible. On its face, it contains (what seems to be) unobjectionable statements about marketing practices, as well as expressions of opinion (to which objection is apparently taken) which might be said to be based, substantially, on specialised knowledge deriving from Mr Blanket’s training, study and experience in marketing. I will admit Mr Blanket’s affidavit evidence unconditionally. However, the weight that I should attribute to certain of the opinions expressed by Mr Blanket is another matter altogether: see, in that connection, the observations in Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 234 FCR 549; [2002] FCAFC 157 at [87]-[89].

83    The difficulty with opinion evidence of this kind is that, even if, at one level, it can be said to be an opinion substantially based on the witness’ specialised knowledge, derived through training, study or experience, it is, nonetheless, an opinion which is, at its core, informed by, and arrived at on the basis of, the witness’ personal evaluation and impression of the similarities and dissimilarities of the allegedly conflicting marks. The making of evaluative judgments of this kind is, quintessentially, the function of the tribunal of fact, not that of the witness. Nevertheless, evidence of an opinion is not inadmissible only because it is about a fact in issue or an ultimate issue, or a matter of common knowledge: s 80 of the Evidence Act 1995 (Cth).

84    In the present case, there are a number of difficulties with Mr Blanket’s affidavit evidence which materially affect the weight that attaches to some of the opinions he expresses, as I will now explain.

85    First, Mr Blanket’s opinions noted at [65] and [67] above are bare opinions. His recourse to generalised statements about his experience and personal observations provide little support for them. As I have said, his evidence in this regard really stands no higher than a statement of his impression. Moreover, I have Ms Bulkin’s factually-based evidence. I am able to draw my own conclusions on how, in what context and to what extent the various kangaroo devices have been used by the appellant (including, in particular, the 1984 marks and the 2007 marks), to thereby determine the nature and extent of the reputation that attaches to them.

86    Secondly, I do not accept that the broad conclusions derived by Ipsos ASI from the surveys undertaken with respect to the Qantas brand can be translated to “the flying kangaroo logo” as Mr Blanket has claimed. As I have noted (at [54] above), the surveys carried out by Ipsos ASI were not directed to the kangaroo devices as such or to any other trade indicia of the appellant apart from the Qantas brand and the perceptions of those surveyed of Qantas as an airline. Mr Blanket’s statement that the Ipsos ASI’s findings with respect to the Qantas brand “would also extend to the flying kangaroo logo” is one that cannot be sustained. Mr Blanket’s statement is, with respect, simply no more than his say-so.

87    Thirdly, Mr Blanket’s opinions based on the appellant’s “marketing spend”, number of passengers carried, and revenue earned, concern matters about which I am capable of reaching my own conclusions based on the same evidence. My own conclusions, however, will not be encumbered by the tendentious assumptions Mr Blanket was asked to make in expressing his opinions in this regard. I hasten to stress that these assumptions were not self-imposed by Mr Blanket. They are assumptions he was instructed to make. He cannot therefore be criticised for the form of the assumptions or for giving an opinion based on them. In any event, as I have noted at [70] above, these assumptions were not proved by the appellant.

88    Fourthly, Mr Blanket’s opinions on what “ordinary persons in Australia” would be likely to regard as the visual similarities and dissimilarities between the 1984 kangaroo/tail fin mark and the opposed mark are, similarly, matters for my own determination, based on my own inspection of the marks and applying the well-understood principles of trade mark comparison.

89    The same observation can be made with respect to the opinions I have noted at [74] and [78] above. As I have explained, these opinions are rooted in a personal evaluation and impression of the similarities and dissimilarities of the allegedly conflicting marks and Mr Blanket’s own understanding of the facts. Moreover, his opinions are based in part on the scenario he posited on how the opposed mark might be used as an “augmented” logo. As I have sought to explain, this scenario does not involve use, or at least normal and fair use, of the opposed mark. It simply raises a false comparison which was then used by Mr Blanket as a step in arriving at his own opinion.

90    In oral submissions, the appellant placed reliance on the fact that Mr Blanket was not cross-examined. But it does not follow from the fact that Mr Blanket was not cross-examined that the cogency of his opinions, as expressed in his affidavit, were thereby enhanced.

The respondent’s evidence

91    The evidence on which the respondent relies in the appeal comprises:

    an affidavit made by the respondent which refers to, and includes, a number of documentary and physical exhibits;

    an affidavit of David Sloman, a legal searcher;

    an affidavit of Harold Alan Littler, the respondent’s solicitor, referring to, and including, a number of exhibits; and

    an affidavit of Kenneth John McInnes, a registered trade mark attorney.

Mr Edwards’ evidence

92    In his affidavit, Mr Edwards gave an account of the development of the opposed mark, which was created by a United Kingdom designer/illustrator, Anna Godwin.

93    Prior to the development of the opposed mark, Mr Edwards acquired, on 8 July 2008, trade mark 744540, which comprises the word ROO in stylised lettering, with a stylised kangaroo head contrastingly located within and between the letters “OO” (the ROO mark). The ROO mark is registered for clothing, footwear and headgear in Class 25.

94    In about November 2009, Mr Edwards decided to adopt the brand name ROO-T. He considered that this brand name fitted in with his overall marketing strategy and the ROO theme; complemented his ownership of the ROO mark; and “was a clever abbreviation” of words “kangaroo” and “T-shirt”. This name was registered as trade mark 1331452 for clothing, footwear and headwear in Class 25, with effect from 15 November 2009.

95    The development of the opposed mark commenced in early March 2010, when Mr Edwards gave his instructions to Ms Godwin. Mr Edwards said that his instructions included the fact that he wanted the logo to be “fun, fresh, sporty, playful, free and cheeky”.

96    Mr Edwards conducts an online store through which he sells various types of clothing, apparel and electronic accessories. Mr Edwards gave evidence that he sells T-shirts bearing the opposed mark through retail outlets. He first commenced to do so at some time between 13 March 2010 and 14 April 2010. However, the evidence shows that only one sale (one T-shirt) was made before the priority date.

97    Since 2012, Mr Edwards has sold goods through a distributor, Iconic Distributors Pty Ltd, to retail outlets in locations in Brisbane, the Gold Coast, Cairns, Sydney, Melbourne and Perth. The goods include T-shirts bearing the opposed mark. Mr Edwards gave evidence that, since wholesaling and retailing goods bearing the opposed mark, he has never:

    had a complaint from a retail or wholesale customer that the customer thought the goods bearing the opposed mark were the appellant’s goods when the customer purchased them;

    been asked by any wholesale or retail customer whether the goods were or may be the appellant’s goods; or

    become aware of confusion by any retail or wholesale customer between the respondent’s goods bearing the opposed mark and goods bearing the appellant’s marks.

98    However, in giving this evidence, Mr Edwards did not state the quantity of the goods he has sold bearing the opposed mark.

99    Mr Edwards said that he has seen, online and in retail outlets, numerous examples of clothing and accessories (including T-shirts, sports shirts, hats and other accessories) bearing images of kangaroos in various positions.

Mr Sloman’s evidence

100    Mr Sloman’s affidavit was directed to a particular search for an advertisement. His affidavit deals with a very peripheral matter and need not be discussed further.

Mr Littler’s evidence

101    Mr Littler’s affidavit was directed to the search results of various trade marks registered by the appellant. It is not necessary for me to discuss his affidavit further.

Mr McInnes’ evidence

102    Mr McInnes conducted a search on ATMOSS for pending and registered trade marks in Class 25, with the part image of a kangaroo. He exhibited the results (523 pages) to his affidavit.

103    By way of summary, the search shows a great variety of stylised representations of kangaroos, including in silhouette form, in different positions and attitudes. Many of these depict a kangaroo in motion, including what Mr Blanket described as “swift movement”. Often the stylised representations are combined with other device elements and/or a name or other description. A large number of the stylised representations show the kangaroo element in profile, facing to the (kangaroo’s) left, as in the opposed mark and in the 1984 marks and 2007 marks. Interestingly, the Crown in right of the Commonwealth of Australia, as represented by the Royal Australian Air Force, has a registration for clothing, footwear and headgear in Class 25 (trade mark 1173143) for a stylised, silhouetted kangaroo, in motion, within a circular device. It should be said that the kangaroo in this mark is not as stylised as the kangaroo in the 1984 marks or the 2007 marks; the kangaroo also faces in the opposite direction. There are, however, other examples of highly stylised kangaroo elements, including one registration that incorporates a kangaroo element that is very similar to the kangaroo element in the 2007 marks.

The ground of opposition based on s 44(1)

Introduction

104    As I have noted, this ground of opposition is based on the appellant’s registration of the 1984 kangaroo/tail fin mark. This mark is registered in respect of, amongst other things, “advertising, marketing and merchandising …” services in Class 35 (the appellant’s services). The appellant’s case is that, when regard is had to the respondent’s goods, these services are “closely related services” for the purposes of s 44(1)(a)(i) of the Act. The appellant says, further, that the opposed mark is deceptively similar to the 1984 kangaroo/tail fin mark. The appellant then argues that, as the priority date of the 1984 kangaroo/tail fin mark is earlier than the priority date of the opposed mark, s 44(1) of the Act is made out as a ground of opposition (see s 57 of the Act) and registration of the opposed mark should be refused.

105    There are two matters in contention. First, are the appellant’s services “closely related services” to the respondent’s goods? Secondly, and in any event, is the opposed mark deceptively similar to the 1984 kangaroo/tail fin mark?

Closely related services

106    The notions of “closely related services” in the context of goods and, correspondingly, “closely related goods” in the context of services, derive from amendments introduced into the Trade Marks Act 1955 (Cth) (the 1955 Act) by the Trade Marks Amendment Act 1978 (Cth) which provided, principally, for the registration of trade marks in relation to services.

107    Writing in 1979, the then Registrar of Trade Marks and Designs, Mr F J Smith, said with respect to the amendments made to s 33 of the 1955 Act:

More extensive amendments have been necessary, particularly in those sections where allowance must be made for the possibility of conflict between a “goods mark” and a “service mark”. For example, the Act extends the grounds for prohibition of registration of identical and deceptively similar trade marks set down in s. 33 of the principal Act. The amended section allows for the added possibility of conflict between marks used in relation to the same services or services of the same description, and of conflict between marks used in relation to services and to closely related goods, and vice versa.

See, Smith FJ, “The Trade Marks Amendment Act 1978” (1979) 53 ALJ 118, 119.

108    Section 33(1) and (2) of the 1955 Act are the predecessors of s 44(1) and (2) of the present Act and, upon amendment, were in broadly similar terms.

109    In his paper (at 119), Mr Smith gave the following examples of where conflict between competing marks for goods and services might arise:

It is evident that in certain cases there is likely to be confusion if similar trade marks are used by different proprietors, one for services and the other for goods. So for example, the use of identical or deceptively similar marks in respect of prepared foods and in respect of a take-away food service would suggest that both the goods and the service might be attributed to the same source. Motor vehicles and a vehicle hire service, cosmetics and beauty salon services, insecticides and pest eradication services are other examples. These are all likely to fall within the concept of “closely related goods and services” as it will occur in ss. 23, 33 and 36 of the amended Act.

110    Speaking of the required relationship between the goods and services, Mr Smith said (at 120):

… It will be an exercise of the Registrar’s judgment and ultimately of his discretion whether goods and services are closely related. The relationship would have to be close, not merely a tenuous or remote connection. Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect of those services and goods more likely.

111    In Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020 (Woolworths), French J (with whom Tamberlin J agreed) said (at [37]):

… The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. …

112    His Honour also said in this connection that “closely related” was of wider import than “similar”.

113    Woolworths was a case arising under s 44(2) of the Act. Thus, the question was whether, in the case of a mark for services, there was conflict with a previously registered mark for “closely related goods”. His Honour gave (at [38]) the following illustrations where goods and services might be “closely related”:

Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. …

114    His Honour also made reference to Caterpillar Loader Hire (Holdings)Pty Ltd v Caterpillar Tractor Co (1983) 77 FLR 139; [1983] FCA 143 (Caterpillar) in which Lockhart J said (at 150):

… It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.

115    Significantly, in Woolworths, French J (at [38]) also said that the range of relationships between goods and services which may support the designation “closely related” will be “limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting marks which attach to them”. This observation might suggest that his Honour had in mind that, in a case arising under s 44 of the Act, the determination of whether the goods and services are “closely related” will be informed by the determination of whether the competing marks are, in fact, deceptively similar. However, at [38] his Honour continued by stating that “[t]he relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” (emphasis added). It was in this context that his Honour gave the examples quoted at [113] above and referred to the examples given by Lockhart J in Caterpillar. This part of his Honour’s reasoning suggests that the question of whether goods and services are “closely related” is a discrete question within the injunction against registration provided by s 44 of the Act.

116    This understanding is supported by the following passage in [39] of his Honour’s reasons:

… Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of s 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second: “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.” This approach is not greatly assisted by the language of s 10 which, like s 6(3) of the 1955 Act, defines deceptive similarity solely in terms of the degree of resemblance of the trade marks in question and whether that degree of resemblance is “likely” to deceive or cause confusion. But that definition must, in the context of s 44, be applied to the case of “closely related” goods and services.

117    His Honour concluded at [40]:

In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.

118    The practical judgment to which his Honour referred in the last passage is, quite clearly, the judgment involved in determining whether the two marks are deceptively similarity. The passage marks his Honour’s acceptance that the question of deceptive similarity between allegedly conflicting marks will be informed, in part, by the closeness of the relationship between the goods and services in respect of which the marks severally are, or are sought to be, registered. I do not accept that his Honour was there directing attention to the judgment involved in determining whether given goods and services are “closely related” as such.

119    I mention these matters because the appellant submitted that the question of whether, for the purposes of s 44(1) of the Act, the services of the prior registered mark are “closely related” to the goods in respect of which registered is sought is “intimately bound up with the question of whether the two marks are substantially identical or deceptively similar”. Whilst I accept that part of French J’s analysis in Woolworths at [37]-[40] might be read in that way, I do not think, on balance, that this is what his Honour was saying. Rather, I think that, particularly in [40] of his reasons, his Honour was addressing the calculus for determining, within the context of a s 44 objection, the question of deceptive similarity, not the question of whether goods or services are “closely related”. This was the point of his Honour saying that “it will not always be necessary to dissect that judgment”—that is, whether the resemblance between the marks renders them deceptively similar—“into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services”. As his Honour then explains, this is because the Registrar or the Court might be satisfied, in the given case, that, on comparison, the marks are so dissimilar that deception or confusion is unlikely to arise, regardless of the closeness of the relationship between the goods and services.

120    The matter can be tested in this way. Take the case of a mark registered for communication services. Can it be suggested seriously that an application for the very same mark in respect of, say, veterinarian supplies, has the consequence for s 44 of the Act that the communication services and veterinarian supplies are “closely related” because the marks are identical? Other examples abound.

121    The appellant argued its case on the basis that, when considering whether the services in respect of which the 1984 kangaroo/tail fin mark are registered are “closely related” to the respondent’s goods, it is sufficient to confine attention to “merchandising” services. The appellant submitted that “merchandising” is concerned with or related to the promotion or sale of goods and services and may include, and “even primarily embrace, the selling or giving away of goods in connection with the promotion of a business’ principal services”. The appellant submitted that merchandising may also include the use of a brand or image from one product or service to sell another. The appellant argued that services like these are often provided by means of goods such as clothing and headwear.

122    In this connection, the appellant directed attention to the observation of the Hearing Officer in Smith v Car2go GmbH (2013) 104 IPR 359; [2013] ATMO 103 at [49] that goods such as clothing, headgear and footwear are commonly used by businesses as promotional merchandise and that deception or confusion may arise by virtue of the mistaken belief that such items are promoting the business of the opponent. In that case, the opponent’s prior conflicting registrations included one for services somewhat oddly specified as “Promotion (advertising) of business” in Class 35. The Hearing Officer was persuaded that the s 44 objection was made out in respect of, amongst other things, an application for registration in respect of clothing, headgear and footwear in Class 25.

123    Based on everyday observation, I am prepared to accept, as a very general proposition, that clothing and headgear are typically used as promotional items. I am less accepting of the proposition that footwear is typically so used. Be that as it may, it would be wrong to focus on, say, clothing and headgear (or, indeed, even footwear) as promotional items to the exclusion of a great many other goods which are used, typically, as promotional items. Promotional items can cover a very wide range of goods. Indeed, in a practical sense, the range is limitless (although, no doubt, constrained by considerations of cost). The suitability of particular goods as promotional items—and the recognition of the public that such goods are promotional items—will, in part, be a function of the identity and nature of the goods or services being promoted and the occasion on which the promotional items are supplied.

124    At this stage of the analysis, it is important to concentrate on the specification of the prior, allegedly conflicting registration that is deployed in the s 44 opposition. This is particularly where the “services” of the prior registration are broadly defined and potentially all-encompassing because of the use in the specification of expressions such as “advertising, marketing and merchandising services”—the very services relied on here. So expressed, these services are not directed to the activity of advertising, marketing or merchandising in any particular line of trade or commerce or in respect of any particular goods or services. Literally, the services of “advertising, marketing and merchandising”, individually or collectively, can be provided in respect of any goods or services whatsoever. So understood, how is it then said, based on the scope of the specification of the prior registration alone—for this is the analysis required by s 44 of the Act—that the specified goods or services are “related”, or more still “closely related”, to the goods or services for which application is made in respect of the opposed mark?

125    By way of contrast, consider a specification more closely circumscribed. One can readily understand the rationale for contending that television repair services are related, indeed “closely related”, to television sets as a class of goods (the example provided by French J in Woolworths). Similarly, one can readily understand the rationale for contending that tailoring services and the sale of ready-made clothes are “closely related” and that educational services (language courses, home study programs and the like) and educational materials are also “closely related” (to take two of the examples provided by Lockhart J in Caterpillar).

126    What is it then, in the present case, that makes “advertising, marketing and merchandising services” and more particularly (on the appellant’s case) “merchandising services”, services that are “related” to “clothing; footwear; headwear; shirts; T-shirts” beyond the fact that each of the respondent’s goods is capable of being, along with a vast range of other goods and services, the subject of “advertising, marketing and merchandising”? The answer is, in truth, nothing. The respondent’s goods are no more and no less related to “advertising, marketing and merchandising services” than any other goods or services that can be advertised, marketed or merchandised. How then is it said that the appellant’s services are “closely related” to the respondent’s goods? The simple fact is that, in the present case, there is no close relationship between the two for the purposes of s 44(1)(a)(i) of the Act.

127    In submissions, the respondent argued that the appellant’s case in this regard elided the distinction between goods and services. The respondent referred to Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 275 ALR 526; [2010] FCA 1380 (Optical 88) at [221] in which I said that there is no principle of general application in Australian trade mark law that use of a mark in relation to retail services for goods is use in relation to the goods themselves.

128    I do not think that the appellant’s case under s 44(1) of the Act proceeds on such an elision. However, the respondent’s argument highlights a particular matter. The appellant’s registration of the 1984 kangaroo/tail fin mark for “advertising, marketing and merchandising services” is for those services as a class of services, and nothing else. It is not a registration for the goods or services in respect of which the services of advertising, marketing and merchandising using the 1984 kangaroo/tail fin mark might be supplied or provided. This is an important conceptual distinction to be borne in mind. This is the reason why, for the purposes of s 44(1) of the Act, it is necessary for the appellant to establish that its services (in respect of which the 1984 kangaroo/tail fin mark is registered) and the respondent’s goods (for which registration is sought) are “closely related”. For the reasons I have given, the appellant has not established that requirement.

129    This finding is enough to dispose of this ground of objection. However, as I will now explain, this is one of those cases to which French J referred in Woolworths where the fate of this ground of opposition is not dependent on a finding about the degree of closeness between the goods and services to which allegedly conflicting marks are attached.

Deceptive similarity

130    In Woolworths, French J said (at [50]):

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd at 594-595, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

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

(ii)    A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

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

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

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

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

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

131    In its written submissions, the appellant drew attention to the following observations of Lockhart J in Caterpillar (at 150) which were quoted with approval by French J in Woolworths:

Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with our without the sale or promotion of goods.

132    This quotation, whilst directed to the likelihood of deception or confusion, also raises consideration of the goods or services that might be provided in association with the service or services for which the prior, allegedly conflicting mark is registered. I will not repeat the observations I have already made in this regard in the context of discussing the “closely related” requirement of s 44 of the Act.

133    Similarly, I will not rehearse the well-known principles of trade mark comparison. They are not in doubt and have been expressed in many cases. I may be forgiven for referring to my own summary of the relevant principles in Optical 88 at [87]-[114]. Although the summary of relevant principles in that case was given in the context of an action for infringement, the same tests of trade mark comparison apply when dealing with a s 44 opposition. Lest there be any doubt, I acknowledge the different tests that are to be applied when considering the question of substantial identity and the separate question of deceptively similarity.

134    The appellant’s submissions focused on the stylised kangaroo element of the 1984 kangaroo/tail fin mark as being its most prominent feature. I agree that the stylised kangaroo is a prominent element of the mark. It is also a prominent element of the opposed mark. I do not doubt that ordinary members of the public, on seeing either mark, would recognise the features of a kangaroo. In both marks, the kangaroo is stylised, although to a finer degree in the 1984 kangaroo/tail fin mark than in the opposed mark. Even so, there are certain broad similarities between the two stylised kangaroo elements, not the least because they have “kangaroo-like” features. There are also clear points of difference between the two, which can be readily seen in a side by side comparison. I accept that all the detail of these differences might not be recalled when each mark is viewed in isolation from the other.

135    It would, however, be an error to focus on each kangaroo element to the exclusion of other elements of the respective marks.

136    In the 1984 kangaroo/tail fin mark, the contrasting triangular element on which the stylised kangaroo is superimposed (the tail fin) is an important element of the prior registration and must be taken into account when assessing the overall appearance of the mark. It provides context in the sense that it puts the stylised kangaroo element of the mark in a particular visual setting. That setting, although simple, is memorable.

137    It is here that the opposed mark bears a striking difference. The stylised kangaroo element in the opposed mark is bordered by a conspicuous “T-shirt” element which is a very important element in its own right. This element not only provides context in the sense of a visual setting; it provides a significant point of distinction. It also combines with the kangaroo element of the opposed mark in important ways. The ordinary member of the public would not only recognise a T-shirt; he or she would recognise a T-shirt with a distinctive cut-out in the form of the stylised kangaroo. This combination of elements also emphasises that the stylised kangaroo is a partial depiction—a “partial kangaroo” or the suggestion of a kangaroo. Visually, the opposed mark is far removed from the 1984 kangaroo/tail fin mark.

138    Thus, even accounting for imperfect recollection, I am not persuaded that, when an ordinary member of the public sees the opposed mark with its conspicuous elements in combination, used on or in relation to the respondent’s goods, there is a real likelihood that he or she would be caused to wonder whether the respondent’s goods might be goods of, or associated with, the owner of the 1984 kangaroo/tail fin mark. In my judgment, the differences between the two marks are too great to admit of any reasonable doubt on that question.

139    Thus, for this reason alone, the s 44(1) opposition does not succeed.

The ground of opposition based on s 60

Introduction

140    This ground of opposition is based on the appellant’s contention that its kangaroo devices, in particular the 1984 marks and the 2007 marks, had, before the priority date, acquired a reputation in Australia and that, because of that reputation, the use of the opposed mark would be likely to deceive or cause confusion.

141    In McCormick & Co Inc v McCormick (2000) 51 IPR 102; [2000] FCA 1335 (McCormick), Kenny J quoted with approval the following observations of Hearing Officer Thompson in Hugo Boss AG v Jackson International Trading Company Kurt D Bruhl Gesellschaft mbH & Co KG (1999) 47 IPR 423; [1999] ATMO 23 (Hugo Boss) at 436 with respect to the nature of the reputation of which s 60 of the Act speaks:

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the “recognition” component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the “esteem” component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, “contra deals” and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

142    It is to be noted that, unlike the s 44(1) objection, the objection under s 60 of the Act is not based on the requirement that the allegedly conflicting marks are substantially identical or deceptively similar. The question is purely one of prior reputation. Thus, even if the allegedly conflicting marks are, say, deceptively similar (a contention I have rejected in relation to the 1984 kangaroo/tail fin mark and the opposed mark), the s 60 objection will not be established if the reputation of the “other” trade mark is such that use of the opposed mark is, nonetheless, not likely to result in a real risk of confusion, in the trade mark sense: for an illustration, see Cantarella Bros Pty Ltd v Muller and Kennedy (2007) 74 IPR 409; [2007] ATMO 62. That said, I accept that, for the purposes of s 60 of the Act, the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.

143    A further matter to note in relation to the s 60 objection is that, contrary to the respondent’s submission, the “other” mark need not have acquired a reputation in Australia that is specific to the goods or services which are the subject of the opposed application. However, I accept that if such a reputation does exist at the relevant time, it is likely to be a most material consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.

144    A still further matter to note is that the “other” mark need not be a registered trade mark.

145    The standard of “confusion or deception” under s 60 of the Act is the same as under s 44(1) of the Act. Therefore, the principles quoted from Woolworths at [130] above, apply here.

The appellant’s submissions

146    On the question of reputation, the appellant submitted that there is “no doubt” that, before the priority date, the kangaroo devices, particularly the 1984 marks and the 2007 marks, had acquired “an enormous reputation” in Australia. The appellant submitted that the evidence of this reputation is “overwhelming and incontrovertible”.

147    The appellant pointed to the fact that the kangaroo devices had been used a great deal in relation to transportation and other services. But, it submitted, the 1984 marks and the 2007 marks had been used extensively in relation to a wide range of goods and services.

148    In this connection, the appellant surveyed the evidence given in Ms Bulkin’s first affidavit: see [30]-[56] above. It pointed to the fact that the 1984 marks and the 2007 marks had been used in “an array of different colours and sizes”. Apart from items bearing one or more of the kangaroo devices that are provided in-flight for the convenience and use of airline passengers, the appellant pointed to the sale of goods through the In-flight Shop, the Qantas Club and the Qantas Shop, which I have discussed at [37]-[40]. The appellant also place reliance on its engagement of Coverpoint Marketing. However, as will be apparent from my summary of Mr Dery’s evidence (at [57]-[59] above), the extent of the marketing undertaken by Coverpoint Marketing before the priority date was very limited indeed.

149    The appellant referred to its sponsorship activities and to the use of the 1984 marks and the 2007 marks on team uniforms or on T-shirts or other items of clothing to designate this sponsorship connection.

150    The appellant also referred to the fact that it operates a very large international airline which generates annual revenue in the billions of dollars and flies millions of passengers each year. It referred to the many millions of dollars it spends on advertising each year. It submitted that, ordinarily, the greater the volume of sales and advertising and promotional expenditure associated with a mark, the greater the esteem in which the mark will be held and, hence, the greater its reputation will be. This submission is certainly supported by Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302; [1992] FCA 176 at 343 and by Kenny J in McCormick at [86]. However, it is one thing to say that a reputation can be deduced from such evidence. It is another thing to determine what that reputation is and what association consumers make when confronted with the particular trade indicium in which that reputation resides. This also brings into question the context of use.

151    The appellant called in aid the Ipsos ASI tracking surveys referred to in Ms Bulkin’s and Mr Blanket’s evidence. It is not necessary for me to repeat my comments on the utility of that evidence so far as concerns the 1984 marks and the 2007 marks.

152    The appellant also called in aid Mr Blanket’s evidence and, in particular, the opinions to which I have referred above. Once again, it is not necessary for me to repeat the comments I have made about the weight that should be given to that evidence. I note, however, that the appellant also relied on Mr Blanket’s evidence concerning brand extension in the travel industry. The appellant submitted that the reputation of a trade mark may be affected by the extent to which the owner of the mark practises brand extension. The appellant submitted that if the public has come to expect that a mark will be used on a variety of goods and services, there will be a greater risk of a similar mark causing confusion because of the first mark’s reputation, even when the similar mark is used in respect of different goods and services: Hugo Boss at 426; Automobiles Peugeot v Viva Time Corporation (2001) 54 IPR 568; [2001] ATMO 52 at 582.

153    With respect to the likelihood of confusion, the appellant advanced five principal submissions.

154    First, the appellant submitted that, when considered as “wholes”, the 1984 marks and the 2007 marks, on the one hand, and the opposed mark, on the other, are “visually similar to each other”. The appellant argued that, in each case, the essential feature is the graphical representation of a kangaroo. It pointed to the fact that the 1984 kangaroo mark and the 2007 mark are not limited by a tail fin device.

155    Further in this regard, the appellant pointed to what it argued are the similarities in the graphical representations, in each case, of the kangaroo element, namely that the kangaroo is leaning forward over its heels (which the appellant said created to impression of swift forward movement); the ears are pointing backwards, the head forwards, and the paws downwards; and “the image of the kangaroo has sleek graphic lines presenting a smooth image, rather than a detailed, life-like image of the anatomical features of the kangaroo”. The appellant also pointed to the fact that, with the 1984 kangaroo/tail fin mark, the 2007 kangaroo/tail fin mark and the opposed mark, the kangaroo element is “reversed out of a differently coloured background”.

156    Secondly, the appellant submitted that the respondent’s goods are “the very sorts of goods in respect of which many consumers would expect the 1984 and 2007 Marks to be used” because “those marks have been used in an array of sizes and shapes on such goods in the past, in particular Qantas pyjamas, the uniforms of teams and organisations Qantas sponsors, staff uniforms, and Qantas hats and caps available for sale to the public”. The appellant submitted that “consumers expect brand extension from travel brands”.

157    Thirdly, the appellant submitted that clothing items “frequently bear augmented logos and imagery to make them more fashionable”. The appellant submitted that this would make consumers more likely to believe that clothing bearing the opposed mark was from, or had been licensed by, the appellant.

158    Fourthly, the appellant submitted that, because consumers are used to seeing brands evolve over time, and given the fact of imperfect recollection, consumers, at the priority date, would likely have regarded differences they perceived between the 1984 marks and the 2007 marks, and the opposed mark, as insignificant.

159    Fifthly, the appellant repeated its submission that, as at the priority date, the reputation of the 1984 marks and the 2007 marks was “simply enormous”.

Consideration

160    It is necessary to bear in mind that each of the 1984 marks and the 2007 marks is a separate mark for the purpose of considering the operation of s 60 of the Act in the present case. It is therefore appropriate that I should make some preliminary observations about those marks and their use.

161    First, the differences between the depiction of the kangaroo element in the 1984 marks on the one hand, and the 2007 marks on the other, are subtle. They can be seen on a close comparison, but I doubt that ordinary members of the public would be able to recall these differences without prior, deliberate study. So far as recognition is concerned, I am of the view that, at the priority date, ordinary members of the public would, in all likelihood, have regarded the depiction of the kangaroo element to be substantially the same in each of the 1984 marks and the 2007 marks.

162    Secondly, the only difference between each of the 1984 marks, and between each of the 2007 marks, is the use of the kangaroo element with and without the tail fin element.

163    Thirdly, the triangular element in the 1984 kangaroo/tail fin mark and the 2007 kangaroo/tail fin mark is plainly suggestive of an actual aircraft tail fin, even though the tail fins of the appellant’s aircraft are not triangular in shape. I am satisfied that, at the priority date, ordinary members of the public would have understood the triangular shape of the 1984 kangaroo/tail fin mark and the 2007 kangaroo/tail fin mark as representing the tail fin of an aircraft, specifically one of the appellant’s aircraft. I am satisfied that, at that time, the tail fin element of the marks not only provided a particular visual setting for the kangaroo element (see [136] above) but also, because of its suggestive shape, an important identifier of the appellant’s airline services. I am satisfied that it was the principal means by which the kangaroo element itself would have been recalled by ordinary members of the public.

164    Fourthly, the evidence shows that the 1984 kangaroo/tail fin mark and the 2007 kangaroo/tail fin mark constitute, by far, the dominant way in which the appellant used its kangaroo devices in the years preceding the priority date. This use was extensive and diverse. I include in that use the appellant’s actual use of the 1984 kangaroo mark and the 2007 kangaroo mark on the tail fins of its aircraft. Mostly, these marks were used with a white kangaroo against a red tail fin. Typically, they were used in close association with the QANTAS name printed in black, which appeared conspicuously either underneath or beside each mark, sometimes with other wording.

165    In light of the matters to which I have referred in [161]-[164] above, I am satisfied that, at the priority date, the 1984 kangaroo/tail fin mark and the 2007 kangaroo/tail fin mark would have been recognised by a substantial number of ordinary members of the public as marks denoting the appellant’s airline services. This was the reputation that these marks had acquired at the priority date.

166    I am less certain about recognition of the 1984 kangaroo mark and the 2007 kangaroo mark. There is evidence of the use of both these marks, but this use was mostly, although plainly not always, in association with the corresponding kangaroo/tail fin mark, represented as described immediately above. Within that context of use, I am of the view that, at the priority date, ordinary members of the public would have seen the 1984 kangaroo mark and the 2007 kangaroo mark as an element taken from the depiction of the corresponding kangaroo/tail fin mark with which the mark was then associated. In this way, ordinary members of the public would have recognised the 1984 kangaroo mark and the 2007 kangaroo mark as denoting the appellant’s airline services. However, I am not satisfied that, outside that context, the 1984 kangaroo mark or the 2007 kangaroo mark would necessarily have been recognised by ordinary members of the public as having any particular signification. It is possible that some ordinary members of the public might have had an independent recollection of 1984 kangaroo mark and the 2007 kangaroo mark as an element of the corresponding kangaroo/tail fin mark or even as a free-standing mark. However, I am not satisfied on the evidence that this would have been a generally held perception other than where the 1984 kangaroo mark or the 2007 kangaroo mark was used in relation to airline services or perhaps, more broadly, travel services and the like.

167    In light of these findings, particularly in relation to the 1984 kangaroo/tail fin mark and the 2007 kangaroo/tail fin mark, does it then follow that the respondent’s notional use of the opposed mark, considered at the priority date, would have been likely to deceive or cause confusion? That use must be considered from the perspective of a normal and fair use of the opposed mark by the respondent considered across all the goods for which registration is sought.

168    To answer this question, it is necessary to appreciate the way in which the appellant has framed its case on the likelihood of deception or confusion. This case relies heavily on the particular visual qualities of the opposed marks supplemented by the notions of brand evolution and brand extension.

169    I have already discussed the comparison between the 1984 kangaroo/tail fin mark and the opposed mark: see [134]-[138] above. My conclusions are the same when the comparison is between the 2007 kangaroo/tail fin mark and the opposed mark. As I have said, there are only subtle differences between the kangaroo element in the 1984 kangaroo/tail fin mark and the kangaroo element in the 2007 kangaroo/tail fin mark. I am not persuaded that the opposed mark is deceptively similar to either the 1984 kangaroo/tail fin mark or the 2007 kangaroo/tail fin mark.

170    I would add that I am not persuaded that a different conclusion should be reached when one compares the opposed mark with the 1984 kangaroo mark or the 2007 kangaroo mark. In this comparison, the appellant’s two marks are simply stylised representations of a kangaroo. It might be argued that, when the opposed mark is compared with these two marks, greater emphasis in the comparison should be placed on the kangaroo element of the opposed mark. I do not accept, however, that this would be the correct analysis. As I have remarked, the opposed mark is not simply a stylised kangaroo. It is a combination of two elements of which the “T-shirt” element is an important element in its own right. The two elements in the opposed mark (stylised kangaroo and “T-shirt”) have the synergies to which I have referred at [137] above. The 1984 kangaroo mark and the 2007 kangaroo mark have no such synergies. I am not persuaded that the opposed mark is deceptively similar to either of them.

171    I am not persuaded that the appellant’s case in this regard is materially assisted by the argument that the marks in question each depict a kangaroo leaning forward over its heels, with ears pointed backwards, head forwards and paws downwards. This simply describes the general attitude of a kangaroo in motion. What is important is the overall impression of appearance that is gained in each case, and of one’s overall impression of the consequent degree of similarity between, on the one hand, the opposed mark and, on the other hand, the 1984 marks and the 2007 marks. One then considers what effect this would have had on the minds of ordinary members of the public at the priority date on seeing use of the opposed mark in respect of the respondent’s goods.

172    As I have noted above, it is not an element of the s 60 objection that the opposed mark and the “other” mark are substantially identical or deceptively similar. But given the way in which the appellant’s case is framed, I am unable to see how, absent a finding of deceptive similarity between the competing marks, it can be argued cogently that, at the priority date, use of the opposed mark in respect of the respondent’s goods would have been likely to deceive or cause confusion. The appellant’s case on acquired reputation is based squarely on the appellant’s particular rendering of its marks and the alleged visual similarity of the opposed mark to those marks. I am far from persuaded that, because of the nature of the recognition to which I have referred, use of the opposed mark, at the priority date, in relation to the respondent’s goods, would have been likely to deceive or cause confusion.

173    In this connection, I am satisfied on the evidence that, at the priority date, ordinary members of the public would have had a clear recollection and understanding of the 1984 kangaroo/tail fin mark and the 2007 kangaroo/tail fin mark, but not necessarily of the 1984 kangaroo mark or the 2007 kangaroo mark. So far as the 1984 kangaroo/tail fin mark and the 2007 kangaroo/tail fin mark are concerned, I am satisfied that ordinary members of the public would have recognised a kangaroo element, but in association with the tail fin element which would have prompted an awareness that the mark signified the airline services provided by the appellant under the name QANTAS. If, at the priority date, the 1984 kangaroo/tail fin mark or the 2007 kangaroo/tail fin mark had been used on any of the goods for which the respondent seeks registration, I am satisfied that such use would have prompted the same awareness. Ordinary members of the public would have seen these goods as associated with the QANTAS airline service.

174    If, at the priority date, the 1984 kangaroo mark or the 2007 kangaroo mark had been used on any of the goods for which the respondent seeks registration, it is possible that some members of the public would have recognised the mark and seen the goods as goods associated with the QANTAS airline service. However, once again, I am not satisfied on the evidence that this would have been a generally held perception, unless the use was in the context of promoting or providing airline services or perhaps, more broadly, travel services and the like.

175    But if, at the priority date, the opposed mark had been used on the same goods, I am not satisfied that it would have provoked the awareness to which I have referred at [173]-[174] above. In my view, because of its conspicuous combination of elements, ordinary members of the public would have seen the opposed mark as something quite different to any of the 1984 marks or the 2007 marks, notwithstanding that the combination in the opposed mark includes the silhouette of a stylised kangaroo (or partial kangaroo). At the priority date, the appellant had no reputation in a T-shirt device used as a brand, not even one that included the partial depiction of a kangaroo. The opposed mark is far removed from the 1984 marks and the 2007 marks. I do not accept that the presence of the particular kangaroo element in the opposed mark would have sparked any meaningful association between the goods bearing that mark, the QANTAS airline service or, indeed, the appellant itself.

176    I do not think that consumer awareness of brand evolution is a factor that has any significant role to play in the present case. I am not persuaded that, at the priority date, ordinary members of the public would have seen the opposed mark as a development of any of the 1984 marks or the 2007 marks. The differences between the opposed mark, and the 1984 marks and the 2007 marks, are too profound to be seen as an evolutionary change to a brand. The best example of such an evolutionary change is given by the appellant’s own subtle changes to the 1984 marks that resulted in the 2007 marks. It can be taken the appellant was careful in the changes it made in 2007 so as to preserve the brand equity it had generated in the 1984 marks.

177    Similarly, on final analysis, I do not think that brand extension is a factor that has any real role to play. First, although I accept Mr Blanket’s evidence that brand extension is a phenomenon with which ordinary members of the public are acquainted, I am not persuaded that the appellant has established that, at the priority date, the 1984 marks or the 2007 marks had acquired a reputation as marks for goods of the kind for which the respondent seeks registration. Generally speaking, the uses of the 1984 marks and the 2007 marks on the goods referred to in Ms Bulkin’s evidence were for promotional purposes or sponsorship purposes, denoting the appellant as a supplier of airline services. There is the evidence of use of the 1984 kangaroo/tail fin mark on the packaging for Kolotex brand “Sheer Relief” pantihose and the use of the 2007 kangaroo/tail fin mark on packaging of stockings and flight socks. This use, however, was plainly for endorsement purposes. I am not persuaded that it established any of the 1984 marks or the 2007 marks as marks for clothing, footwear, headwear, shirts or T-shirts in their own right. Secondly, I do not accept that simply because a mark incorporating a kangaroo element, such as in the opposed mark, was used on or in relation to clothing, footwear, headwear, shirts or T-shirts, ordinary members of the public, at the priority date, would have thought that the appellant was practising brand extension of its own marks in that line of trade. Thirdly, the evidence of possible brand extension by the appellant in other lines of trade—such as in luggage and travel accessories—is problematic. It is difficult to discern from the evidence whether this is really no more than promotional use directed to the promotion of the appellant’s airline services as opposed to the 1984 marks and the 2007 marks functioning as brands for those goods in their own right. In any event, such use is very closely connected to the appellant’s core activity of providing airline services.

178    Finally, I do not think that the appellant’s reliance on the use of augmented logos materially assists its opposition under s 60 of the Act. I have already referred to the fact that this really raises a false comparison. The use to which s 60 of the Act refers is a notional use of the opposed mark in light of the reputation that has been established in another mark at the priority date. It is the opposed mark to which attention must be directed, not variations of, or elaborations on, a mark for which registration is not sought.

179    For these reasons, the appellant’s opposition under s 60 of the Act fails.

disposition

180    The appeal will be dismissed with costs.

Associate:

Dated:    23 June 2016