Adbri Masonry Group Pty Ltd v Ecopave Australia Holdings Pty Ltd
[2011] ATMO 42
•27 May 2011
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Adbri Masonry Group Pty Ltd to registration of trade mark application 1246018(42) - ECOPAVE (LOGO) - filed in the name of Ecopave Australia Holdings Pty Ltd.
Delegate: | Iain Thompson |
Representation: | Opponent: Ed Heerey of Counsel, instructed by Jennifer Potter an in-house Patent and Trade Mark Attorney of the opponent, and Thomson Playford Butler, solicitors Applicant: Mr Eerik Owerhall, a director of the applicant. |
Decision: | 2011 ATMO 42 s52 opposition – s59: opponent’s evidence puts onus on applicant concerning its intention to use trade mark in relation to nominated services, applicant has not addressed this evidence, ground established. Registration refused. |
Background
In this matter Ecopave Australia Holdings Pty Ltd of Point Cook, Victoria, (‘the applicant’) has applied to register a trade mark current details of which appear below:
Application No: 1246018
Priority Date: 12 June 2008
Services:Class 42: Design and development of products; scientific, technological, research and design services
Trade Mark:
‘the opposed trade mark’
The application was examined in accordance with section 33 of the Trade Marks Act 1995 (‘the Act’) and advertised in the Australian Official Journal of Trade Marks on 16 October 2011 as accepted for possible registration.
On 13 January 2009, C&M Brick Pty Ltd (now Adbri Masonry Group Pty Ltd) of Adelaide, South Australia, (‘the opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice recites most of the available grounds of opposition to the registration of the trade mark including the grounds which were subsequently argued before me at a hearing.
The hearing was in Canberra on 4 March 2011. Ed Heerey of Counsel, instructed by both Jennifer Potter (an in-house Patent and Trade Mark Attorney of the opponent) and Thomson Playford Butler, solicitors, represented the opponent. Mr Eerik Owerhall, a director of the applicant, made telephone submissions on the applicant’s behalf.
Mr Heerey, for the opponent, made submissions in terms of sections 59, 62A, 62(b), 44, 60 and 42(b) of the Act. For the sake of both brevity and completeness, I note that the other grounds mentioned in the Notice have not been established by the opponent and that as the ground under section 59 is clearly established by the opponent, I will discuss only the evidence of the parties as it goes to that ground.
The Evidence
The dispute between the parties before me has a long history which is directly relevant to ground under which I am deciding this matter.
I have edited Ms Potter’s evidence of this history (and omitted reference to supporting exhibits) as follows:
The opponent is the registered owner of Australian registered trade mark No. 726987:
Priority Date: 3 February 1997
Goods:Class 19: building materials (non-metallic), bricks, blocks, slabs and tiles, including those used for paving, concrete and ceramic building materials
Trade Mark: ECOPAVE EcoPave (series)
(‘the opponent’s registration’)
Ms Potter was informed by Mr Marcus Clayton, the General Legal Counsel of the opponent, that on about 21 June 2006 an employee of the opponent based in its Moorebank Office in New South Wales, contacted him and told him that a company called Ecopave Australia, whose website address is was using the word “ECOPAVE”.
A search of the ASIC National Names Index was undertaken, and it was determined that “Ecopave Australia” was a Victorian Registered Business Name and that the persons nominated as carrying on business under that name were Eerik Owerhall, Sirkka Wendy Peltonen and Sakary Malmberg.[1]
[1] These people eventually became directors of the applicant when it was incorporated.
The opponent sent a Letter of Demand to the applicant on 21 June 2006 requesting that they cease using the word “ECOPAVE” in connection with their business and that they advise the opponent by 21 July 2006 that the applicant had in fact ceased all use of the word “ECOPAVE”.
On 19 July 2006, the applicant filed two applications with IP Australia, namely:
a.a non-use application against the opponent’s registration (Non-Use Application); and
b.Australian trade mark application No. 1124578:
Priority Date: 19 July 2006
Goods: Class 19: Asphalt, pitch and bitumen
Trade Mark: ECOPAVE AUSTRALIA
(‘the Class 19 application’)
On 26 July 2006, Ms Potter received a letter dated 19 July 2006 from Mr Eerik Owerhall, representing the applicant, informing the opponent that he did not think the use by his business of the word “ECOPAVE” was an infringement of the opponent’s registration, that he did not believe the opponent had promoted any products using the word “ECOPAVE” and that as a result, he had filed the non-use Application.
By letter to the applicant dated 17 August 2006 and written in response to the claims and assertions made in the letter dated 19 July 2006, Ms Potter asserted the rights of the opponent to protect the opponent’s registration and its intellectual property in its Ecopave trade mark.
On 5 November 2006, an adverse report was issued by the examiner in relation to the Class 19 Application citing the opponent’s registration in terms of section 44 of the Act.
On 9 November 2006, Ms Potter filed with IP Australia a Notice of Opposition in response to the non-use application, together with Evidence-in-Support of the opponent’s opposition to the non-use application. A copy of the Non-Use Opposition was delivered to the applicant on 13 November 2006.
Eight days after the Class 19 Adverse Report was issued, the applicant filed Australian Trade Mark Application No. 1146529:
Priority Date: 13 November 2006
Goods: Class 1: Adhesives used in industry
Trade Mark: ECOPAVE AUSTRALIA
(‘Class 1 application’)
On 15 March 2007, the Class 1 application was advertised as being accepted by the Trade Marks Office.
On 14 June 2007 the opponent filed a Notice of Opposition to registration in response to the Class 1 application.
On 19 July 2007, the Applicant served Evidence in Answer in the Non-Use Opposition.
On 26 February 2008 the applicant company was registered at ASIC. Each director of the applicant company at that time was a former joint applicant for registration of the Class 19, 1 and 42 applications.
On 12 June 2008 the Company applied to register this opposed application.
Also on 12 June 2008, four days before the scheduled hearing of the non-use application Mr Owerhall withdrew the non-use application.
On 13 June 2008, one day after it made its Class 42 application, the applicant:
a. withdrew its Class 1 application; and
b. withdrew its Class 19 application.
On 20 August 2008 the opponent’s solicitors sent a letter bearing that date to the legal firm which were then representing the applicant. That letter noted that the applicant had been aware of the opponent’s trade mark and associated trade mark rights since at least 21 June 2006, but had continued to infringe notwithstanding that knowledge.
On 11 September 2008, Mr Marcus Clayton, Company Secretary of ABL, the opponent’s parent company, received a letter marked “With extreme prejudice” from Mr Owerhall.
Ms Potter has reviewed the applicant’s website at numerous times during the period of 21 June 2006 to present. During that time, the applicant’s website has not identified any services that are sold or marketed under the name Ecopave Australia or the Class 42 Device that she verily believes could be accurately described as “Design and development of products; scientific, technological, research and design services”. The applicant’s website has only ever promoted one product or good, being “GE0320 MHR asphalt bitumen”, i.e. the goods applied for in the Class 19 application.
The opponent verily believes that the applicant does not, and does not intend to, sell or market any services that may be genuinely described as “Design and development of products; scientific, technological, research and design services”. The opponent verily believes that the applicant intends to sell and market its only good being a product in relation to “asphalt, pitch and bitumen” under the name “Ecopave Australia” and the Class 42 Device.
Having regard to events evidenced in her Statutory Declaration and having regard to the fact that the applicant filed this opposed application one day prior to withdrawing its Class 1 and Class 19 applications Ms Potter verily believes that:
a. the applicant’s sole reason for filing the Class 42 Application was to attempt to avoid the consequences of the likely rejection of the Class 19 application and the likely successful opposition to the Class 1 Application;
b. there are no services sold or marketed by the applicant that can properly be described as “Design and development of products; scientific, technological, research and design services”; and
c. the applicant intends, if successful in its Class 42 Application, to use the words “ECOPAVE AUSTRALIA” and the Class 42 Device in respect of its only product, being “GEO 320 MHR asphalt bitumen” (whether or not it also asserts to offer services being “Design and development of products; scientific, technological, research and design services”), notwithstanding that the words “Ecopave Australia” and the Class 42 device will not be registered in respect of the goods into which such a product properly falls, namely, Class 19.
Mr Owerhall’s evidence in answer is problematic in that, apart from a brief covering statutory declaration, the material on a CD-ROM submitted as evidence in answer is unsworn and does not directly address the evidence in support and the issues raised therein or, more generally, the grounds of opposition in the Notice. The covering statutory declaration does not indicate in any way what portions of the compendious information (440 files in 40 folders) on the CD-ROM might be of particular relevance but also includes a ‘report’ to Mr Owerhall’s fellow directors concerning the dispute with the opponent which makes a number of erroneous assumptions about trade mark law and consequently ill-informed judgments about the motives of the opponent in this matter. The ‘report’ also demonstrates a willingness on Mr Owerhall’s behalf to attribute base and scandalous motives to the opponent and to denigrate and ignore well-considered professional legal advice, from firms of patent and trade mark attorneys who have acted on the applicant’s behalf to withdraw the trade mark applications and cease use of the trade mark referred to in the opponent’s evidence above. The evidence shows that Mr Owerhall has a preparedness to threaten the opponent with insulting press releases should it attempt to enforce its trade mark in a Court of Law as is its right. I weight this portion of the evidence according.
The following relevant facts are ascertainable from the evidence in answer:
The applicant is developing a molasses-based asphalt bitumen for use as a surface on roads, pavements, pathways, etc which it calls GEO320;
The product would be in direct competition with, and is substitutable for, the goods sold under the opponent’s registered trade mark for use as a paving surface;
This bituminous binder is the only product mentioned on the applicant’s website and there is no evidence before me that the applicant is developing or proposes to develop any other product, either on its own behalf or that of another person;
The word ECOPAVE forms a part of the applicant’s company and business names;
The word ECOPAVE occurs on the applicant’s website and in the applicant’s web address, company and business names;
There is no discernable verification in the evidence in answer, or on the applicant’s website, that the applicant intends to offer any services to the public; and,
The opponent had earlier put the applicant on notice in its evidence in support that section 59 (lack of intention to use the trade mark in relation to the nominated services) would be a ground argued at a hearing of the matter.[2]
[2] All of the opponent’s evidence in support in this matter (and, indeed, all correspondence from all dealings between the parties including the past trade mark applications and removal filings) are included in the CD-ROM in the applicant’s evidence in answer.
Onus
It is the practice of the delegates of the Registrar to follow Pfizer Products Inc v Karam [2006] FCA 1663, as regards onus. Gyles J said of the onus in trade mark oppositions:
I am faced with the clear words of the statute, on one hand, and the opinions of various judges, on the other. There is no binding Full Court authority. I cannot find any instance where a single judge has actually applied the higher standard. In my opinion, in this case, comity does not demand that I depart from my view as to the meaning of the statute. ‘The fundamental responsibility of a court when it interprets a statute is to give effect to the legislative intention as it is expressed in the statute’ per Mason J in Babaniaris v Lutony Fashions Pty Ltd [1987] HCA 19; (1987) 163 CLR 1; cited with approval by Mason CJ, Wilson, Dawson, Toohey and Gaudron JJ in John v Federal Commissioner of Taxation [1989] HCA 5; (1989) 166 CLR 417 at 439. I will, therefore, approach the matter on the basis that the opponent has to establish a ground of opposition, although not clearly establish such a ground, whether in a summary fashion or otherwise.
See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26]. The standard of the onus may nevertheless still be considered a live issue although, in my opinion, it has not been changed by the more recent decision of Lander J in Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94 whose words at paragraphs 54-55 were clearly obiter and his Honour was in any event discussing section 56 of the Act rather than section 52:
In Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131 I said that I should follow the decision in Lomas because it was a decision of the Full Court and I should follow Bennett J’s decision in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901; 132 FCR 326 as a matter of comity and because other judges of the Court had followed that decision.
That is still my opinion. It may be, as Gyles J has pointed out, that the decision in Lomas was obiter and does not strictly need to be followed but it is a decision of the Full Court in circumstances where there are competing lines of authority at first instance which have left judges of this Court divided. The conflict cannot be resolved at first instance and must be resolved in the Full Court. As I indicated in Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131, I favour the reasoning of Gyles J in Clinique Laboratories Inc v Luxury Skincare Brands Pty Ltd [2003] FCA 1517; 61 IPR 130 but thought because of Lomas v Winton Shire Council [2002] FCAFC 413; [2003] AIPC 91-839 and comity I should follow the other line of authority. That is still my view, notwithstanding the criticism of that approach in Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787. [Stress added]
I will accordingly decide this matter on the balance of probabilities.
Section 59
Section 59 of the Act provides:
Applicant not intending to use trade mark
59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
As I have indicated, above, the applicant has (to judge by the content and tone of its evidence) made some mistaken assumptions both as to the nature of a trade mark and what trade mark registration can achieve.
Section 17 of the Act defines the expression ‘trade mark’:
17What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note:For sign see section 6.
The ‘use’ of a trade mark referred to within section 17, above, is use of that trade mark in relation to particular goods or services. The use of a word or name, if it is not in the course of trade in relation to particular goods or services, is not use of a trade mark.
And the services of a person means services dealt with or provided in the course of trade by that person: section 6 of the Act.
A person might, for example, advertise his own goods or services and not be performing an advertising service. An advertising service is performed when a person at the request of another trader advertises the goods or services of that other trader – usually for a fee.
It is axiomatic that the use or intention to use a trade mark in relation to particular goods or services is, in the context of an application to register a trade mark, in relation to the particular goods or services in respect of which the application has been made. For example, in relation to an application such as this which has been made in respect of “Design and development of products; scientific, technological, research and design services” the services would be provided in the course of trade only if these design and development services are offered, or intended to be offered, to the public at large and involves an individual approaching the person offering the service and requesting that a certain product be designed developed. However, if one is developing products on one’s own behalf, that is not a service within the meaning of the Act as it is implicitly not ‘in the course of trade’. Put at its most basic: cooking meals for one’s own consumption is not a catering service; neither is cooking meals for consumption by one’s family or friends since the activity is not ‘in the course of trade’. The cookery becomes a catering service when one performs that service at the request of a third party for payment.
The evidence shows that the applicant has developed and designed its bituminous asphalt product on its own behalf and not on behalf of another person.
Additionally, Mr Owerhall, by his evidence and submissions, appears to regard the registration of the applicant’s business and company names as being use of the trade mark ECOPAVE, answering the section 59 ground, and giving rise to some inchoate trade mark rights. Failing this, he believes that the relevant business names registry should have informed him that registration of the business name did not give rise to any form of trade mark rights.
Registration of a business or company name, per se, does not constitute use of a trade mark. Nor does such registration of a business or company name give rise to rights to that name as a trade mark: Lone Star Steakhouse & Saloon Inc v Zurcas [2000] FCA 29.
There is no obligation on the staff of a business names registry to inform would-be registrants concerning the trade marks register but in fact those staff do alert the public to the trade marks register. Moreover, the opponent’s evidence shows that such information was available, at least on the business names registry’s website, at the date that the applicant’s business name was registered.
The applicant enjoys a prima facie presumption that he intends to use the opposed trade mark which arises from the act of filing the application for registration: Aston v Harlee Manufacturing Co (1960) 103 CLR 391 This presumption arising from filing may be challenged by evidence from the opponent that establishes the contrary: Estex Clothing Manufacturers Pty Ltd v. Ellis and Goldstein Ltd [1966] HCA 81; (1967) 116 CLR 254, thereby shifting the onus from the opponent onto the applicant and requiring evidence from the applicant which demonstrates the intention to use the trade mark.
The evidence of the opponent has put the applicant on notice that a ground under section 59 of the Act would be argued at the hearing of the matter: Phillip Morris Products SA v Sean Ngu [2002] ATMO 96. The evidence of the opponent (and, indeed, the applicant’s own evidence) in regard to section 59 is also sufficient to establish a prima facie case that the applicant does not intend to use the opposed trade mark in relation to the nominated services. Thus the onus is transferred onto the applicant to show that it intends to use the opposed trade mark in relation to the nominated services. The applicant has had an opportunity to respond to the opponent’s allegation and discharge this onus and has not done this.
Further, in Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298 Kitto J said at 312:
(i)that the absence of the defendant Hegedus as a witness cannot be used to make up any deficiency of evidence;
(ii)that evidence which might have been contradicted by the defendant can be accepted the more readily if the defendant fails to give evidence;
(iii)that where an inference is open from facts proved by direct evidence and the question is whether it should be drawn, the circumstance that the defendant disputing it might have proved the contrary had he chosen to give evidence is properly to be taken into account as a circumstance in favour of drawing the inference.
I take the inference from the evidence of the parties that the applicant has not responded to the opponent’s evidence that the applicant does not intend to use the opposed trade mark in relation to the services nominated on the application because it cannot do so as it has no intention of using the opposed trade mark in relation to the nominated services, ie to design and develop products for clients rather than on its own behalf.
In my consideration, the applicant’s evidence establishes that if it has is any intention to use the opposed trade mark it is in relation to the bituminous asphalt product which it is developing and not in relation to the nominated services.
The ground under section 59 is established.
There is no need to discuss the other grounds which were argued at the hearing.
Decision
Section 55 provides:
Decision
55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
I refuse to register application 1246018.
Costs
Having been successful, the opponent is entitled to its costs and I award costs at the official scale against the applicant.
Iain Thompson
Hearing Officer
Trade Marks Hearings
27 May 2011
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