EMI (IP) Limited v Spotlight Pty Ltd [2021] ATMO 40 (25 May 2021)
ABBEY ROAD. Two words synonymous with music history and folklore. Not only The Beatles' eleventh studio album but the location of the legendary EMI Studios in London where many of the band's songs were recorded. Yet if a recent decision of the Australian Trade Marks Office stands, also a distinct badge of origin for Spotlight Pty Ltd's (Spotlight) yarn.
In an earlier article, we considered why trade marks are critical to a musician's intellectual property strategy. While a registered trade mark provides its owner with a legal right and monopoly to the use of a particular sign in relation to specific goods or services, it is a common misconception that securing registration of a trade mark will provide an absolute monopoly for all goods and services. The distinction is critical especially when formulating a brand strategy and considering the scope of desired protection.
The ABBEY ROAD decision
In September 2017 Spotlight, a retailer of yarns, fabrics
homewares and other related goods, applied for registration of
ABBEY ROAD in Australia in relation to various yarn in class 23. IP
Australia examined and accepted the application. In April 2018, EMI
(IP) Limited (EMI) owner of a trade mark registration for 
(ABBEY ROAD STUDIOS Trade Mark)
initiated trade mark opposition proceedings.
In support of the opposition EMI argued that as a result of its use of various ABBEY ROAD marks (the ABBEY ROAD Marks) both in Australia and internationally, it had acquired a reputation in the ABBEY ROAD Marks in Australia such that Spotlight's later use in relation to yarn would be likely to deceive or cause confusion. EMI relied on Abbey Road Studios' involvement in the production of popular recordings since 1931, its use of the ABBEY ROAD STUDIOS Trade Mark in Australia since 2012 in relation to a range of goods including sound recordings, books, clothing and amplifiers, the opening of the Abbey Road Institute in Melbourne Australia in 2015 providing music related courses and a high volume of web traffic to EMI's ABBEY ROAD website. EMI also argued that use of ABBEY ROAD with stripe imagery was likely to be associated with The Beatles' iconic album cover.
Spotlight noted its ownership of the ABBEY ROAD trade mark in New Zealand and Singapore for yarn and that its ABBEY ROAD trade mark was created in 2017 inspired by other fabric brands that make playful references to music such as 'wool and the gang' and 'heal the wool'. Spotlight sold ABBEY ROAD branded yarn in combination with plays on a well-known songs such as 'The Wind Cries Merino', 'Truly Madly Mohair', 'Born to be Wool', 'Kung Fu Cotton' and 'Strawberry Fields Mohair'. While aware of the ABBEY ROAD recording studio in London, Spotlight considered use of ABBEY ROAD in relation to yarn "a fitting but non-specific allusion to multiple music acts". Legal advice was sought and a trade mark search conducted to confirm that there was no barrier to the use of ABBEY ROAD in relation to yarn products and Spotlight maintained that it would be unlikely for there to be any confusion between its ABBEY ROAD branded yarn products and EMI's London recording studio.
Evidence is key
In evaluating EMI's evidence, the hearing officer drew a distinction between the purported and actual use of the ABBEY ROAD STUDIOS Trade Mark. Queries were raised in relation to EMI's authorisation or control over evidence of third party products offered over eBay and Amazon. Notably, there was also an absence of sales figures or advertising expenditure; and no documentary evidence of a connection between the Abbey Road Institute and EMI (aside from media references).
In rejecting EMI's grounds of opposition, the Hearing Officer concluded that:
- EMI's goods and services were not similar to Spotlight's yarn;
- the fact that EMI was associated with a well-known studio in London with respect to recording studio services offered in the UK did not, in the absence of sufficient evidence, provide a basis to reach a conclusion that ABBEY ROAD had acquired a reputation in Australia;
- use of ABBEY ROAD by Spotlight would not be contrary to law as the test for misleading or deceptive conduct under s18 of the Australian Consumer Law ('ACL') requires EMI's establishment of a significant reputation;
- Spotlight's decision to adopt and seek protection for ABBEY ROAD in respect of yarn was not a decision made in bad faith even though Spotlight was aware of the Abbey Road Studios in London as Spotlight "had obtained legal advice and correctly concluded that there was no existing registration in respect of the Applicant's Goods".
As trade mark owners associated with music industry become accustomed to protecting song and album titles, lyrics and album imagery as market identifiers (in order to capitalise on alternate revenue streams through the sale or licensing of merchandise), trade mark disputes in this area are likely to proliferate. Accordingly, in seeking trade mark protection, it is fundamentally important to strategically consider how a trade mark is to be used and appropriately align the scope of protection with intended use.
Takeaways
The ABBEY ROAD decision serves as a timely reminder that:
- the onus in trade mark opposition proceedings lies with the opponent. Reputation will not be inferred without clear evidence (including in particular sales and marketing information, where available), and framing and explaining that evidence remains critical to the success of oppositions;
- even if a reputation can be established, reputation without a likelihood of confusion will not carry the day, so reputation-based grounds have limited utility against less closely related goods/services to those in which the reputation subsists;
- due consideration should be afforded to seeking protection of appropriate goods and services to avoid a situation where an unrelated third party may be able to leverage an association with an iconic album or recording studio capable of acting as distinctive badges of origin;
- where possible, protection should be sought for the separate elements of a trade mark that together constitute a consumer facing brand to allow for flexibility in use and enforcement.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
