3V Partecipazioni Industriali S.p.A. v Mulford Plastics Pty Limited

[1995] ATMO 43

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS,
WITH REASONS

Re:Opposition by MULFORD PLASTICS PTY LIMITED to the registration of Trade Mark application number 545397 in the name of 3V PARTECIPAZIONI INDUSTRIALI S.p.A.

Application No. 545397 was lodged on 8th November 1990, claiming a priority date of 11th May 1990 under the provisions of section 109 of the Trade Marks Act 1955. The application was lodged in the name of Desitalia Partecipazioni Industriali S.p.A. but, following a change of name, was subsequently amended to 3V Partecipazioni Industriali S.p.A. ("the applicant"). The application sought registration of the mark POLIVIC in respect of the following goods in class 1:

"Chemical products used in the industry of plastic materials and in scientific research relating thereto: suspending agents, stabilizers, modifiers, suspending and antistatic agents for the polymerization of PVC; plastic and raw resins in the form of powders, liquids or pastes; all the aforesaid goods not for use in the automobile industry".     

The application was advertised, in the Official Journal of 16th April 1992, as having been accepted for registration.  However, on 24th August 1992, a notice of opposition to registration of the mark was lodged by Mulford Plastics Pty Ltd ("the opponent"). 

The opposition was based on a number of factors, but the main grounds, as stated in the notice of opposition and subsequently argued at the hearing on the matter, were based on s 28 and s 40 of the Trade Marks Act. Specifically, it was argued that the applicant's use of the subject mark would be likely to deceive or cause confusion, would be contrary to law and would not be entitled to protection in a court of justice; and that the applicant was not the proprietor of the mark and therefore not entitled to its registration.

The evidence
The opponent's evidence in support of the opposition comprises two statutory declarations by Haryanto Tjiptodihardjo, with exhibits HT1 and HT2.  Mr Tjiptodihardjo is the Managing Director of P.T. Impack Pratama, an Indonesian company which, according to the declaration, is the parent company of the opponent. 

Mr Tjiptodihardjo states that his company has used the trade mark POLYVIC in Australia since 1988 in connection with rigid polyvinyl chloride compounds and resin dry blends for bottle and film making.  The gross value of the compounds sold under the mark in Australia in 1988 is declared to be $2.9 million.   The advertising and promotion costs for that year have been estimated to be $30,000.  Promotion is stated to have been via free test samples, trade exhibitions, sales promotions and mail promotion.  Copies of a brochure and of a one-page data sheet, both describing the goods apparently sold in Australia under the trade mark POLYVIC, are annexed to Mr. Tjiptodihardjo's second declaration.

Sales and advertising figures for the subsequent years to 1991 are also stated.  The gross wholesale figure for the four years in question is $12.8 million, with promotion, during that period, of $150,000.

The applicant's evidence in answer to the opposition consists of a statutory declaration by Carlo Seccomandi, with exhibits A, B and C.  Mr Seccomandi is a director of the applicant company. 

According to this declarant, the goods bearing the subject mark were first sent to Australia in 1979.  A copy of an invoice relating to the shipment of the goods is attached as exhibit A.  He further declares that the goods of the present application are or were the subject of patents relating to an invention entitled "Process of Producing Polyvinyl Chloride" in a number of countries and that these goods manufactured under the patents were marketed commercially by Sigma Italiana Prodotti Chimici S.p.A., which has been merged in the applicant company.  A copy from a book entitled "Particulate Nature of PVC", marked exhibit B, refers to a mark POLIVIC S202.  Exhibit C shows a copy of a pamphlet describing the goods and referring to the mark POLIVIC.  Mr Seccomandi says that his company has, via Sigma Italiana Prodotti Chimici S.p.A, marketed the goods of this application since at least 1979 under the trade mark in question.

There is thus, be it noted, only one invoice in evidence, and it is in the applicant's favour.  That invoice shows that, in 1979, the applicant exported to ICI Australia Limited a single drum of "POLIVIC S 202".  The quantity involved was 175 kg, "one drum marked as above", and the supporting Confirmation of Sale shows that this was in response to "your (ie ICI's) order No ICA/F/960 dated 14/12/1978".  On the basis of this FOB (free on board) purchase, ICI became the owner, at the port of Rotterdam, of a single drum of chemical, ultimately destined for Sydney and insured against risks in transit.  The original order is not in evidence and there is no mention of any sale after the one in question.

The matter was set down before me, as the Registrar's delegate, for hearing in Melbourne on 30th May 1995.  At the hearing the opponent was represented by Dr William J. Pickering of F B Rice & Co, patent and trade mark attorneys of Sydney.  The applicant's attorneys, Carter Smith & Beadle, elected to make written submissions on the matter.

Submissions
Having briefly commented on the opponent's and the applicant's evidence, Dr Pickering focussed his attention mainly on the proprietorship question, reminding me that it is the applicant who has to justify the registration of its trade mark (see Dunn's Trade Mark (1908) 7 RPC 311). In that regard he argued that use of the subject mark in Australia by P.T. Impack Pratama, rather than by the opponent, was not critical. He noted that the present opposition process was a test of the applicant's claims, not of the relationship between the opponent and its parent company.

In relation to the written argument of the applicant's attorneys, Dr Pickering took issue with the applicant's claim that its mark had not been abandoned, and that use had been ongoing.  He noted that there was no evidence whatsoever to substantiate this assertion.  He then referred to D.R. Shanahan's Australian Law of Trade Marks and Passing Off, second edition, in relation to cessation of proprietorship, observing that a statutory claim to proprietorship may be maintained up to the time of registration of a mark even in the absence of a level of market reputation which would be required to support an action for passing off. 

As noted by Mr. Shanahan, however, it would be highly irregular if an applicant could, before registration, sustain a claim to proprietorship of a mark by mere non-abandonment, given the provisions for removal of the mark from the register on the basis of three years' non-use.  In pursuing this line of argument, Dr Pickering submitted that a single instance of use of the mark, as in the applicant's case, could not sustain the proprietorship in the mark forever.  In support of this contention, he referred to Roberts v Cougar Marine Limited (1993) AIPC 90-997, which touches on abandonment of proprietorship. McGarvie J, in Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd, (1988) AIPC 90-516 at p 38,441 had stated that abandonment of a mark means more than mere non use of it but, in Dr Pickering's opinion, more was required to maintain a claim of proprietorship of a mark. While a single use of a mark in Australia in the relevant period would normally be considered sufficient to establish proprietorship rights, the applicant, according to Dr Pickering, needed to do more than this to sustain that claim.

Dr Pickering also questioned the exact nature of the transaction said to constitute use of the mark in Australia in the course of trade.

Discussion
Proprietorship
McGarvie J has explained the concept of proprietorship in Settef v Riv-Oland, supra,  at p 38,435 as:

"Acquiring proprietorship

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there:  Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) 59 ALJR 77 at 83. A person who becomes proprietor of a trade mark in this way is entitled at common law to restrain a person who later commences to use the trade mark.

In considering who, within s.40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm and Haas (1949) 78 CLR 601 at 625 and 627. Settef claims to be the first person to have used the trade mark in Australia and therefore to have been proprietor at common law in Australia."

Where the question of proprietorship is raised, the parties concerned must be claiming marks which are substantially identical.  This has recently been reaffirmed by Gummow J in Carnival Cruise Lines v Sitmar Cruises Limited (1994) AIPC 91-049 and by Drummond J in Karu Pty Ltd v Robert Leon Jose (1994) AIPC 91-101. In the former case, on considering a submission in relation to The Shell Company of Australia Limited v Rohm and Haas Company (1949) 78 CLR 601, Gummow J said at p 38,114:

"When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice.  The phrase "substantially identical" as it appears in s.62 (which is concerned with infringement), was discussed by Windeyer J. in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961-1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible."

Viewing the two marks under consideration, POLYVIC and POLIVIC, in light of these observations, I agree with Dr Pickering's submissions that the marks are substantially identical, and the applicant has conceded that this is so.

What constitutes prior use has been defined by Deane J in Moorgate Tobacco Co Ltd v Philip Morris Ltd [1983-1984] 156 CLR 414 at pp 432-433:

"The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of "proprietor" of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person: see, generally, Shell Co. of Australia Ltd. v. Esso Standard Oil (Australia) Ltd. (1963) 109 CLR 407; Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd. (1951) 82 CLR 199; and the definition of "trade mark" in s. 6(1) of the Trade Marks Act.  The requisite use of the mark need not be sufficient to establish a local reputation and there is authority to support the proposition that evidence of but slight use in Australia will suffice to protect a person who is the owner and user overseas of a mark which another is seeking to appropriate by registration under the Trade Marks Act.  In such a case, the court "seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia": see Seven Up Co. v. O.T. Ltd.; Aston v. Harlee Manufacturing Co.".

In claiming prior use of the mark before use by the opponent, the applicant has relied on an invoice and a Confirmation of Sale advice from Sigma Italiana Prodotti Chimici.  These relate to one drum of the product bearing the mark POLIVIC S 202, to the value of DM 665.00, ordered by ICI Australia Limited "FOB North European port".  The transaction took place in January 1979.  There is no evidence, however, as to the intended use of those goods or that the goods had been either ordered or offered for sale in Australia under the mark.  In Moorgate v Philip Morris, supra, Deane J. sated at p 433:

"The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark.  It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark (Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd. or that the mark has been used in an advertisement of the goods in the course of trade: Shell Co. of Australia v. Esso Standard Oil (Australia) Ltd.  In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade."

In Settef v Riv-Oland, supra, evidence, by way of invoices, had been provided by the plaintiff that two consignments, comprising one 33 kg drum and 8 drums of 50 kgs of granular marble coating, had been sent to Australia. McGarvie J concluded, at p 38,438:

"No inference can be drawn from the purchaser's name and there is no evidence before me as to its business or activity.  The size and composition of the consignment points in my view to the purchaser purchasing not for resale but for its own use despite the fact that it was a firm and received samples and brochures.  I consider that it follows from the authorities that a mark is used as a trade mark only if it is used with a view to facilitating or promoting the operation of a trading channel which in a business sense had already been opened to Australia.  The mark must be used for the purpose of trade."

Thus, the circumstances of single sales need to be looked at closely.  To establish use of its mark, through Sigma Italiana Prodotti, before use of the opponent's mark, the applicant would need to show at least an offer or an order for the purpose of soliciting trade, and trade, moreover, in Australia.  The mere fact that a single drum of product had been sent to Australia, in relation to an order which is itself not in evidence, is not sufficient.  No evidence has been supplied that the goods ordered by ICI Australia Limited were in fact intended for sale in Australia, nor has it been shown that they were offered for sale, here, under the mark in question.  All that has been shown is that ICI became the owner, at the port of Rotterdam, of a single drum of chemical, ultimately destined for Sydney and insured against risks in transit. 

The purchase of goods on a "free on board" basis is the norm in international trade and, per Settef v Riv-Oland, supra, this is not inconsistent with the use of a trade mark in Australia.  See p 38,439 of the report, and also the Estex case, (1967) 116 CLR 254, to which McGarvie J refers. Neither, however, is it necessarily sufficient to establish that the applicant in the present case is necessarily the proprietor of the mark in Australia. Apart from copies extracted from a book (exhibit B) and a pamphlet (exhibit C) which contain references to the applicant's mark, Mr Seccomandi's declaration fails to support his claim that the mark had been used in Australia at any time prior to the date on which the application was lodged.

There are perhaps some problems with the opponent's own evidence.  These stem from the lack of any supporting invoices but I am entitled to take at face value the declared statement that more than a thousand tonnes of product, declared to have been in packaging marked as per a photograph in the brochure relied on by the opponent, have in fact been sold in Australia in each of the years 1988 to 1991 inclusive. 

Given these findings, it seems to me that the applicant's only supported claim to proprietorship comes from the making of its application.  At that date, however, the opponent was the proprietor in law of a substantially identical mark in this country.

Conclusion
I have found that the opponent succeeds on the ground of proprietorship.  That being so, I will not consider questions of the effect of the action of s 28 of the Act, or of the allowability of the opposition as it arises under that section. 

Subject to any appeal from this decision, the registration of the trade mark the subject of this application is refused.

I see no reason why costs should not follow the result and I accordingly award costs in these proceedings to the opponent.

T. Williams
Hearing Officer
1 September 1995