SOUNDS DIFFERENT - but not different enough

In Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd, the Federal Court of Australia has upheld the plaintiff's opposition to the defendant's application to register SOUNDS DIFFERENT as a trademark for radio broadcasting services, radio entertainment and production of radio programmes. The court noted that the mark had acquired some distinctiveness post filing but it lacked distinctiveness at the priority date.

DMG Radio (Australia) Pty Ltd sought registration for the mark SOUNDS DIFFERENT. That application was accepted by IP Australia (the Australian Trademarks Office) and a subsequent opposition by Austereo Pty Ltd was unsuccessful.

Austereo appealed to the Federal Court arguing principally that (i) the mark SOUNDS DIFFERENT is not capable of distinguishing the services of DMG Radio, and (ii) DMG Radio does not intend to use the mark in relation to certain services, which were described in its application as "production of radio programmes".

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 criticized, indicated a perceived association between SOUNDS DIFFERENT and the Nova business of DMG Radio.

The Federal Court confirmed that post-filing use is relevant to the issue of registrability (this accords with current practices of IP Australia). However, it emphasized 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 that the mark has (i) the potential or capacity to acquire that capability in the future, or (ii) 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.

The court first considered circumstances in which a mark may have some degree of inherent adaptation to distinguish, including the use of words that "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". It next examined 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 characterized as, of itself, being inherently adapted to distinguish".

The court 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 SOUNDS DIFFERENT 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.

In addition, the court commented that the "production of radio programmes" 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. However, on the day that the decision issued DMG Radio quite sensibly re-applied and, in light of the court's comments that SOUNDS DIFFERENT has acquired distinctiveness through various promotions, it seems likely that DMG Radio's new application will be successful.

Sean McManis, Shelston IP, Sydney