Qantas wins first prize for grammar
In a recent decision by a Delegate of the Registrar of Trade Marks (Opposition by Virgin Blue Airlines Pty Ltd to registration of trade mark application No. 980223) Virgin has been unsuccessful in its attempt to stop Qantas from registering as a trade mark the slogan ‘ALL DAY, EVERY DAY, LOW FARES’.
At a Hearing in Canberra on 19 January 2009 before Delegate, Bianca Irgand, Virgin Blue Airlines Pty Ltd (Virgin) pursued three grounds of opposition under the Trade Marks Act 1995 (the Act).
For ease of reference, the relevant trade marks are:
‘ALL DAY, EVERY DAY, LOW FARES’ (the Qantas mark)
‘EVERY DAY LOW FARES’ (the Virgin mark)
Ownership – Section 58: Virgin argued that they were the rightful owners of the Qantas trade mark since they were prior users of the “substantially identical” Virgin trade mark. However, the deliberate use of punctuation and addition of words ‘ALL DAY’ in the Qantas trade mark were the focus of the Delegate in finding that the Section 58 ground had not been made out. The extra words combined with the importantly placed commas “served to create a strong impression of a three part slogan in the mind of the consumer”. With no form of punctuation in the Virgin trade mark and the particularly descriptive use demonstrated by Virgin the Delegate fell short of finding that the mark carried no inherent distinctiveness.
Reputation – Section 60: To succeed under Section 60 (pre-October 2007 amendment version) Virgin needed to point to a trade mark that was either “substantially identical” or “deceptively similar” that had acquired a reputation in Australia such that use of the Qantas trade mark would lead to deception or confusion.
On the basis of the “descriptive nature” of ‘EVERY DAY LOW FARES’ the Delegate found that the Virgin and Qantas trade marks were not deceptively similar. Regardless the Delegate went on to consider both the “use” and “reputation” requirements under Section 60, which is useful given the chances of another decision maker coming to a different finding on the question of deceptive similarity, as well as the fact that deceptive similarity is no longer a requirement under Section 60 of the Act. In particular, the Delegate was not satisfied that the Opponent’s “demonstrated” use of the expression ‘EVERY DAY LOW FARES’ was “use” as a trade mark nor that the Opponent had shown a reputation in the trade mark. More evidence, for example documentation supporting Virgin’s claim that ‘EVERY DAY LOW FARES’ was in fact a “specifically designed” trade mark may have convinced the Delegate otherwise.
Contrary to Law – Section 42(b): Further to the Delegate’s finding that the Qantas mark was not likely to deceive or cause confusion under Section 60 of the Act, she held that use of the opposed mark would similarly not offend Sections 52 and 53 of the Trade Practices Act 1974 (Cth) since proof of deception or confusion was even less onerous (the relevant supporting case law was cited).
Given the competitive nature of the no frills domestic airfares market, first captured by Virgin, this battle is unlikely to end here.
