Qantas Airways Limited v Edwards  FCA 729 (23 June 2016)
Unsuccessful appeal by Qantas from the Registrar’s decision reported here dismissing its opposition to trademark registration of the mark shown below filed on 16 April 2010 for clothing, footwear and headwear in class 25
The appeal was confined to the s44 and s60 grounds of opposition.
Under the s44 ground, Qantas relied on its prior trademark registration for the mark shown below dating from 25 June 1996 and covering advertising, marketing and merchandising services in class 35.
Qantas argued that Edwards’ class 25 goods were closely related to the merchandising services covered by this trademark registration, but Yates J found otherwise. His Honour reviewed the authorities and concluded that whether goods and services are closely related is a discrete question to be determined on the facts and is to be considered separately from the question of deceptive similarity of the respective trade marks (which is informed, in part, by the closeness of the relationship between the relevant goods and services). While class 25 goods may be capable of being the subject of advertising, marketing and merchandising, that does not render them closely related. Class 25 goods are no more or no less related to such services than any other goods or services that can be advertised, marketed or merchandised.
While this finding was sufficient to dispose of the s44 ground, Yates J also went on to compare the respective trade marks and found they were not deceptively similar. His Honour noted it would be an error to focus on each kangaroo element to the exclusion of the other elements of the respective marks. The contrasting triangular element in the 1984 kangaroo/tail fin mark is an important element and puts the stylised kangaroo element in a particular visual setting. In comparison, the T-shirt element in the Edwards’ mark is also a very important element and provides a significant point of distinction. An ordinary member of the public would be likely to recognise a T-shirt with a cut out element depicting or at least suggesting a partial kangaroo. His Honour considered the differences between the respective marks are too great for there to be a likelihood of confusion.
Under the s60 ground, Qantas relied on the Australian reputation of the 1984 kangaroo/tail fin mark as well as the 3 additional trade marks shown below:
Qantas contended that each of these marks had acquired a substantial Australian reputation through use in connection with its airline services and through other use including on licensed merchandise offered through the Qantas Club, the In-Flight Shop and the online Qantas Shop, as well as on licensed luggage and travel accessories, in-flight sleeper suits/pyjamas, sponsorship of events, choirs and sporting teams, and on staff uniforms. In many cases the QANTAS mark also appeared quite prominently.
Qantas pointed to its very substantial sales revenues and advertising and promotional expenditure, But Yates J noted, at paragraph 150 “… 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”. His Honour was satisfied that the 1984 kangaroo/tail fin mark and the 2007 kangaroo/tail fin mark had acquired a reputation and, as at 16 April 2010, would have been recognised by a substantial number of ordinary members of the public as marks denoting the airline services of Qantas. However, his Honour was less certain about the recognition of the 1984 kangaroo mark and 2007 kangaroo mark independently of the triangular element. The evidence indicated that the kangaroo images were predominantly used with the triangular element which would have been understood by ordinary members of the public as representing the tail fin of an aircraft. This triangular element was an important identifier and provided a visual setting for the kangaroo element.
Given the significant difference in the way the Edwards’ mark was likely to be recalled due to the presence of the T-shirt element, Yates J was not satisfied there would be a likelihood of confusion. His Honour did not accept that the presence of the particular kangaroo element in the Edwards’ mark would spark any meaningful association between the relevant class 25 goods and the QANTAS airline service or Qantas itself.
It is also worth noting that Qantas relied on affidavit evidence from Mr Paul Blanket which was admitted as independent expert evidence on marketing, including brand extension and the use of augmented logos and imagery to make clothing more fashionable. Yates J commented, at paragraph 83, that “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”. There were a number of difficulties with this affidavit evidence which materially affected the weight his Honour was prepared to give to it.
Yates J did not consider evidence directed to brand extension, brand evolution or use of augmented logos had any real role to play in this case and did not think it materially assisted the s60 ground of opposition.