Affinity Tool Works LLC v Peter Hosking - [2015] ATMO 29

TRADE MARKS ACT 1995

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

Re: Opposition by Affinity Tool Works LLC to registration of trade mark application 1458760 (8) – PORTAMATE – in the name of Peter Hosking

Delegate:	Debrett G. Lyons
Representation:	Opponent: Stephen Rebikoff of counsel, instructed by Davies, Collison, Cave, Patent & Trade Mark Attorneys. Applicant: unrepresented; relied on written submissions
Decision:	2015 ATMO 29 Section 52 opposition to registration: s 58 considered – Applicant not the owner of the trade mark - opposition established and registration refused.

Background

In these proceedings under the Trade Marks Act 1995 (“the Act”) Peter Hosking (“the Applicant”) has made application to register a trade mark, current details of which appear below:

Application No:           1458760
Priority Date:               10 November 2011
Goods:  Class 8: Tool stands

Trade Mark: PORTAMATE (“the Trade Mark”)

The application was examined in compliance with section 31 of the Act and the Trade Mark accepted for possible registration on 29 February 2012.
Advertisement of acceptance appeared in the Australian Official Journal of Trade Marks on 8 March 2012.
On 23 May 2012, Affinity Tool Works LLC (“the Opponent”) filed a Notice of Opposition to the registration of the Trade Mark.
The parties have filed their evidence as detailed below. They were informed of their right to be heard and both took that opportunity, the matter coming before me as a delegate of the Registrar of Trade Marks at a hearing convened in Melbourne on 20 March, 2015. At the hearing the Opponent was represented by Stephen Rebikoff of Counsel. The Applicant was not present, nor represented, but relied on the written submissions of its attorneys, EKM Patent & Trade Marks.

Grounds, Onus and Relevant Date

The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1] The relevant date at which the grounds must be considered is the filing date of the application: 10 November 2011 (“the Priority Date”).[2]
[1] Pfizer Products Inc v Karam [2006] AIPC 92-146 per Gyles J at [6] to [26].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592
Counsel for the Opponent relied on those those grounds of opposition corresponding with sections 42(b), 58, 60 and 62A of the Act and it is under section 58 that I have decided the matter.

Evidence

In Support

The evidence in support of the opposition comprises the declarations of:
(a)Michael Ursell, President of the Opponent, made 14 December 2012 (“the First Ursell Declaration”), and exhibits;
(b)Michael Ursell made 19 December 2013 (“the Second Ursell Declaration”), and exhibits;
(c)Mark Cross, former General Manager of HTC Products, Inc made 10 May 2013 (“the Cross Declaration”); and
(d)Michael Anthony Rumore, private investigator, made 13 May 2013 (“the Rumore Declaration”) and exhibits.

In Answer

The evidence in answer to the opposition comprises the declaration of Peter John Hosking made 19 September 2013 (“the Hosking Declaration”), and exhibits.

Discussion

Section 58

Section 58 of the Act is reproduced below:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.

The Applicant misstates the facts in the opening paragraph of its submissions where it is put that “[O]n 10 November 2011, Global Power Brands International Pty Ltd applied to register the Trade Mark”.
Global Power Brands International Pty Ltd (“GPB”) was not and has never been an applicant for the Trade Mark. The Hosking Declaration states that “I am the Applicant in this matter” and that “[I]n 2008 I founded GPB, initially as a Director and now as a Consultant (sic)”. … “I made the application for registration of the Opposed Trade Mark for and on behalf of GPB in order to protect an investment.”
I note here that ASIC records exhibited to the First Ursell Declaration show that GPB was incorporated on 2 July, 2008, and that the Applicant was a director of GPB from that date until 1 April 2010. I observe that the application for the Trade Mark was made more than 18 months after the Applicant had ceased to be a director of GPB.
The First Ursell Declaration states that Michael Ursell is President of and has worked for the Opponent since 2006. Between 1997 and 2007[3] he was employed by HTC Products, Inc. (“HTC”). HTC produced a range of power tool accessories including stands and bases for power tools which it sold under the trade mark PORT A MATE. He states that he is “aware that HTC sold PORT A MATE branded products into the Australian market as early as at least 2003.”
[3] A time overlap not explained in the evidence but having no ultimate bearing on my decision.
The First Ursell Declaration explains that in December 2011 the Opponent made an asset purchase of HTC and that those assets included all the intellectual property rights to the PORT A MATE branded products. It is declared that “[F]rom about approximately 2009, until 30 April, 2012 GPB had an informal agreement with HTC and later [the Opponent] for the supply of the PORT A MATE branded products. … The use identified between 2009 and 20 April 2012 was for and on behalf of HTC/[the Opponent].”
The Hosking Declaration states that “[F]rom about June 2009 there was an informal arrangement between GPB and HTC. In my view, it was not an agency relationship, but rather it was intended to be a long-term alliance.”
The Opponent’s submission is that its predecessor in title, HTC, has used the substantially identical mark PORT A MATE in respect of stands and mobile bases for power tools and work benches in Australia from 2003. In particular, it is said that samples of PORT A MATE branded products were supplied to businesses in Western Australia and New South Wales in 2003 and 2004, and from about 2004 until about 2006, HTC sold portable work benches under the PORT A MATE mark to a distributor in Queensland.
The Opponent’s alternative submission is that, on the evidence, GPB’s use of the Trade Mark ought properly be regarded as use on behalf of HTC as the owner of the Trade Mark.
The word “owner” is not defined in the Act but there are numerous relevant decisions where courts have considered its meaning for the purposes of section 58. It is well established that in the absence of fraud the owner of a trade mark in Australia for particular goods is taken to be the first person[4] to use the mark, or a mark substantially identical thereto,[5] in the course of trade in Australia in relation to those goods,[6] or the first person to apply to register it (or a substantially identical mark) for relevant goods, whichever is the earlier.[7]
[4] Which, as section 6 of the Act indicates, “includes a body of persons, whether incorporated or not”.
[5] See Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375.
[6] Or in relation to goods considered to be “the same kind of thing” -see Re Hicks’ Trade Mark (1897) 22 VLR 636.
[7] Seven Up Co v OT Ltd (1947) 75 CLR 203.
I should add that whilst the Opponent was naturally anxious to show that it is the owner of the Trade Mark in Australia, it is to be remembered that section 58 only requires proof that that Applicant is not the owner. In other words, having regard to Mr Rebikoff’s fallback submission that GPB’s use of the Trade Mark was use on behalf of and enured to the benefit of the Opponent, I need only decide that the Opponent or GPB is the owner in order for section 58 to be established.
As it happens and for the reason which follow I need not further examine the nature of the relationship between the Opponent and GPB since in my assessment the evidence shows use of the Trade Mark by the Opponent in Australia.
Applying the test set out below, enunciated by Windeyer J at first instance in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd[8], I am satisfied that PORT A MATE is “substantially identical” to the Trade Mark:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
[8] (1961) 109 CLR 407; (1963) 1B IPR 523 at CLR 414-415; IPR 528-529.
Exhibit MU-2 of the First Ursell Declaration is a letter dated 7 May 2003 from Michael Ursell on behalf of HTC to Mr Alan Clarkston of Puraclene Products in Western Australia. It thanks Mr Clarkston for payment for samples and provides costings for various items, including goods described as “Drill Press Support”, “Mitersaw Stand” and “Mitersaw Stand W/Wheels”. Those goods are coded as PM128, PM4000 and PM4400 respectively.
It is the Applicant’s objection that this and later correspondence between HTC and third parties in Australia does not use the Trade Mark, or PORT A MATE, and that use of the letters “PM” is not use of either of those marks.
It is the Opponent’s retort that although in its submission there is sufficient other evidence to show that the codes in fact refer to PORT A MATE branded goods, it is enough that the evidence shows that relevant goods were offered for sale and sold in Australia and that the evidence as a whole raises the reasonable inference that those goods were branded PORT A MATE.
In that respect the First Ursell Declaration states that it is Mr Ursell’s recollection that Puraclene “purchased and paid for PORT A MATE branded product in or about 2004”. He goes on to declare that HTC sent sample to Duroline Products in NSW in or about 2004 and from 2004 to 2006 sold PORT AMATE branded work benches to a Queensland business, Carba-Tec Pty Ltd.
Exhibit MU-3 to the Second Ursell Dclaration is a series of email exchanges from 2004 and 2005 between the Opponent and Carba-Tec Pty Ltd. The emails evidence pre-sale enquiries, the purchase of sample products and the order of goods. The material is replete with code references which include the prefix “PM” and which correspond in description with the goods already described by reference to those codes.
The Applicant’s objection is that “[W]hilst there is one letter dated 15 February 2015 making reference to the word ‘Portamate’, such use does not prove that the trade mark was used in Australia. Rather, it provides information that the Portamate brand is manufactured or assembled in the USA.”
The relevant letter from Exhibit MU-3 is dated 15 February 2005 and not 2015 as stated by the Applicant. The letter does describe itself as serving as a “country of origin” declaration but does so within the context of the sales and contemplated sales to an Australian business of the relevant goods.
Taken together I accept the Opponent’s submission that the evidence goes beyond mere preparations for use of the PORT A MATE trade mark in Australia and constitutes actual supply of goods.[9]
[9] Citing, Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 432-3; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 600.
Moreover, I accept on the declaratory evidence that the pertinent discussions and ensuing sales are for goods marked PORT A MATE. In making that finding I have no reason to question the veracity of the declarations of Mr Ursell and I am further influenced by corroborating evidence such as Exhibit MU-6 to the First Ursell Declaration, being a GPB “Portamate Royalty Report” for purchases in the period 1 January 2011 to 30 April 2011 wherein the codes PM7000 and PM6300 are used, plus other evidence showing a correspondence between the “PM” product code and PORT A MATE branded goods.
Further, I am in agreement with the statements of principle cited by the Opponent in its written submissions, as follows:
It is not necessary to show that the use was significant or sufficient to establish a reputation: Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 432-3. Indeed, where an Australian trader seeks to appropriate a trade mark used by another trader overseas, the Courts have generally held that evidence of a very small amount of use will be sufficient to establish ownership: Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211.
In Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 12 IPR 321 at 353, Lockhart J summarised the approach taken in such cases as follows:
where an Australian trader seeks registration in Australia of an overseas mark belonging to another person and a dispute arises between the Australian trader and the overseas owner of the mark, the courts are not slow to find that a small amount of use in Australia by the overseas proprietor is sufficient to establish proprietorship of the mark in Australia. The courts are suspicious of attempts by one trader to appropriate the mark of another trader notwithstanding that the latter is a foreign trader and the mark has been used by him predominantly in a foreign country, and as a corollary of that suspicion require little use to support the finding that the mark has become identified with and distinctive of the goods of the foreign trader in Australia.
The issue remaining for determination is whether the claimed goods are the same as, or the “same kind of thing” as,[10] the goods for which the Opponent used the Trade Mark and it will be apparent from the discussion so far that they are.
[10] Re Hicks’ Trade Mark (1897) 22 VLR 636.
Accordingly, I am satisfied that the Opponent has established its case under section 58 of the Act. The Applicant is not the owner of the Trade Mark.

Decision

Section 55(1) of the Act relevantly provides that, 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 have found the opposition to be successful on the ground raised pursuant to section 58 of the Act. Therefore, subject to any appeal from my decision, I refuse to register trade mark application number 1458760.

Costs

Since the Opponent has been successful in its opposition, I award costs against the Applicant calculated in accordance with Schedule 8 of the Trade Mark Regulations 1995.

Debrett G. Lyons
Hearing Officer
Trade Marks Hearings
31 March 2015