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DMG Radio (Australia) Pty Limited sought registration for the mark SOUNDS DIFFERENT. That application was accepted by IP Australia (the Australian Trade Marks Office) and a subsequent opposition by Austereo Pty Limited was unsuccessful.
Austereo appealed to the Federal Court, arguing principally that the mark SOUNDS DIFFERENT is not capable of distinguishing the services of DMG Radio, and that DMG Radio does not intend to use the mark in relation to certain services, which were described in its application as “production of radio programs”.
DMG Radio had, after the filing of the application, undertaken considerable advertising featuring the mark SOUNDS DIFFERENT in association with its principal brand, NOVA, and there was survey evidence that, although criticised, indicated a perceived association between the phrase “SOUNDS DIFFERENT” and the Nova business of DMG Radio.
The Federal Court confirmed that post-filing use is relevant to the issue of registrability, (which accords with current practices of IP Australia). It emphasised, however, that such evidence is “relevant only to the question of whether the mark possessed the required capability at the priority date” and that it will not assist an applicant if the use demonstrates no more than:
(a) that the mark has the potential or capacity to acquire that capability in the future; or
(b) that the mark has acquired distinctiveness only because the relevant community has since the priority date been “educated” to see the mark as an indicator of the origin of the particular services; British Sugar Plc v James Robertson & Sons Ltd (1996) RPC 281 at 306; re: Application by Cadbury Limited (2002) 55 IPR 561 at 570.
After a useful consideration of circumstances in which a mark may have some degree of inherent adaptation to distinguish, including circumstances where “though descriptive of the quality or character of goods or services, are not the only or natural words which would be chosen for that purpose” and where “the description itself involves an unfamiliar, obsolete, unexpectedly evocative or purely emotive usage” Justice Finn considered the mark SOUNDS DIFFERENT and found that it contained some adaptation to distinguish but was “by no means sufficiently adapted to distinguish as to justify its being characterised as, of itself, being inherently adapted to distinguish”.
He also found that the mark had acquired distinctiveness from its use with the NOVA marks, which had educated other traders and the public to associate the mark with the NOVA business. However, the adaptation to distinguish was only acquired after the priority date and, therefore, the mark was not inherently adapted to distinguish at the relevant date, and the application was refused.
Justice Finn also commented that the “production of radio programs” is a service that is distinct from “radio broadcasting” and found in favour of Austereo that there was no intention to use the mark for those particular services.
Consequently, Austereo was successful in having the application rejected. On the day that the decision issued, however, DMG Radio quite sensibly re-applied, and in light of the Judge’s comments that distinctiveness has been acquired through relevant promotions, it seems likely that DMG Radio’s new application will be successful. Perhaps the theme song for this case might be “Everyone’s a Winner”?
To read the full text of the judgment, go to http://www.austlii.edu.au/cgi-bin/disp.pl/au/cases/cth/federal%5fct/2004/968.html?query=%5e+austereo.
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