Andy Warhol is famous. Think Pop Art, Campbell’s Soup, Marilyn Monroe, The Factory and Studio 54. One of the other things he is famous for is the statement: “In the future, everyone will be world-famous for 15 minutes.”
Unfortunately, where a trade mark applicant is relying upon fame to obtain a registration, 15 minutes of fame may not be enough. This issue has been the subject of recent interest in an Australian trade mark application number 1556294 for the mark ‘5SOS’ filed by One Mode Productions Limited. The application was for a range of goods and services associated with the musical group 5 Seconds of Summer, known to their fans as 5SOS (cue screaming teenage girls).
5SOS vs S.O.S
The application for the 5SOS trade mark was rejected due to similarity with a number of prior registrations for similar goods that also prominently featured the letters “SOS”. After trying to overcome the objection by amending their statement of goods and services, One Mode Productions requested a hearing to overcome the Examiner’s decision. The hearing was before Hearing Officer Iain Thompson.
After reviewing the authorities on deceptive similarity, the Hearing Officer turned to the evidence filed in support of the application and stated: “The name of this group is not notorious; apart from these proceedings I have not encountered the group and it is not suggested
in the declaration that the group is notorious.” He concluded that the prior SOS marks were deceptively similar to the 5SOS mark.
It has been reported that despite a number one album and more than five million Twitter followers, the Hearing Officer rejected the application “because he had not heard of the band”. Actually, there is a bit more to it than that.
Honest concurrent use
Where a mark is rejected under s 44 Trade Marks Act 1995 due to similarity to another mark, the applicant can rely upon its fame in the rejected mark to try to overcome the objection. This can be on the basis that the mark is so notorious that no-one would confuse it with another mark, even if that mark is only slightly different, so the marks cannot be considered “deceptively similar”. This appears to be the approach taken by One Mode Productions Limited. It was argued on their behalf that fans referred to the 5SOS mark as “five soss”, which would not be confused with the more familiar “S.O.S. (ess-oh-ess)”. The Hearing Officer rejected this, finding that the pronunciation “five soss” depended upon a familiarity with the musical group 5 Seconds of Summer, and knowledge that this is how the abbreviation of their name was pronounced. There was apparently no evidence to show that the level of knowledge of the band was anything approaching that of the S.O.S. ‘Save Our Souls’ distress call.
It is also possible for a trade mark applicant to show that a mark should be accepted for registration over prior similar marks on the basis of honest concurrent use (s 44(3) Trade Marks Act 1995). This does not appear to have been attempted in this case, possibly because the band was only formed in 2011, so the period of use was relatively short. Whilst honest concurrent use does not have to be for any particular period, there must be sufficient use to show that the mark has acquired and will continue to acquire some reputation in Australia, and this evidence was apparently lacking.
Where evidence of fame is being considered, it is legitimate for an Examiner or Hearing Officer, in the absence of direct evidence on a point, to take his or her own knowledge into account (R.21.19 Trade Marks Regulations 1995). Unfortunately, whilst 5 Seconds of Summer undoubtedly have considerable popularity amongst the fans who have nominated each band member as ‘Fittest Boy on the Planet’ in the ‘We Love Pop Awards’, (who knew?), that fan base does not appear to extend to Trade Marks Office personnel.
So, where does this leave us?
- If you are going to rely upon the fame of your mark before the Trade Marks Office, don’t assume the Examiner or Hearing Officer will have any prior knowledge of your “world-famous” brand before reviewing the application.
- Make sure that if your mark is famous, and you do file evidence, the evidence shows just how famous your mark is. It is also important to show that the mark is famous in Australia; your five millions Twitter followers may all live in the USA, which doesn’t necessarily translate to fame or notoriety here.
- Make sure that your fame relates to the mark in question. It’s no use proving that 5 Seconds of Summer is a mega-famous boy band with a world-wide following (including in Australia) if the mark applied for is ‘5SOS’, and there is no evidence associating that abbreviation with use as a trade mark on goods or services associated with the band.
5SOS was eventually accepted for registration, but only after the goods similar to those of the conflicting marks were deleted from the application.