Trademark Office emphasizes importance of punctuation

Australia
Qantas Airways Limited has successfully defended an opposition by Virgin Blue Airlines Pty Ltd against its application for the registration of the trademark ALL DAY, EVERY DAY, LOW FARES for a range of travel-related services in Classes 39 and 43 of the Nice Classification. Virgin's claim was based on its 'every day low fares' slogan.

Virgin relied on the following grounds of opposition:
  • Qantas is not the owner of the trademark;
  • the trademark is similar to another mark that has acquired a reputation in Australia; and
  • use of the mark would be contrary to law.
With regard to the ownership issue, Virgin submitted that:

  • it had a claim to ownership of the mark EVERY DAY LOW FARES based on prior use in Australia since 2000; and
  • EVERY DAY LOW FARES was substantially identical to ALL DAY, EVERY DAY, LOW FARES.
Although the delegate of the registrar of trademarks agreed that Virgin had used the expression 'every day low fares' before Qantas's priority date, she was not persuaded that EVERY DAY LOW FARES and ALL DAY, EVERY DAY, LOW FARES were substantially identical.

The delegate found that the addition of the words 'all day' and the punctuation included in Qantas's trademark created "a strong impression of a three-part slogan in the mind of the consumer". In particular, the delegate noted that "the commas stop the eye and the trademark is read with separate emphasis placed on each of the three portions of the trademark". The visual differences created by the punctuation and the additional words 'all day' were sufficient to prevent a finding of substantial identity.

With regard to the second ground, Virgin argued that:
  • EVERY DAY LOW FARES was substantially identical or deceptively similar to Qantas's mark;
  • EVERY DAY LOW FARES had acquired a reputation in Australia before the priority date; and
  • Qantas's use of ALL DAY, EVERY DAY, LOW FARES would lead to deception and confusion.
Having already decided that EVERY DAY LOW FARES and ALL DAY, EVERY DAY, LOW FARES were not substantially identical, the delegate also found that the differences between the marks were sufficient to avoid deceptive similarity. Further, the delegate was of the view that Virgin's evidence was insufficient to establish that it had a reputation in EVERY DAY LOW FARES, or even that it had used the expression as a trademark. Interestingly, the delegate considered that the evidence submitted by Virgin was detrimental, as it illustrated that EVERY DAY LOW FARES was used as a descriptor for air travel fares, rather than as a trademark.

With regard to the third ground, Virgin submitted that Qantas's use of ALL DAY, EVERY DAY, LOW FARES would be contrary to Australian trade practices law, as it would amount to misleading or deceptive conduct, or a false representation. As the delegate had already found that the marks were not deceptively similar, it followed that Qantas's use of ALL DAY, EVERY DAY, LOW FARES would not be contrary to Australian trade practices law.
 
The case highlights the importance of ensuring that the evidence submitted shows use of a mark "as a trademark", rather than as a descriptor of the relevant goods and services. Applicants and opponents should be selective in the evidence supplied to the Australian Trademark Office. The case also reiterates the approach taken by the office regarding the use of punctuation in trademarks, and follows other recent decisions where the delegate found that the addition of a punctuation mark can be sufficient to prevent a finding of substantial identity or deceptive similarity.
 
Lisa Ritson and Amy Reynolds, Blake Dawson, Sydney

Get unlimited access to all WTR content