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”),…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Affinity Tool Works LLC v Peter Hosking

Details

AGLC: Affinity Tool Works LLC v Peter Hosking [2015] ATMO 29
Case: [2015] ATMO 29
Decision Date: 31 March 2015

CaseChat Overview and Summary

This matter came before Debrett G. Lyons. The dispute concerned an application to register a trade mark. The applicant, Peter Hosking, sought to register the trade mark, but this was opposed by Affinity Tool Works LLC. The core of the dispute revolved around whether the use of the trade mark by Global Power Brands International Pty Ltd (GPB), a company founded by Mr. Hosking, could be attributed to Mr. Hosking as the applicant, or to Affinity Tool Works LLC, the opponent, as the predecessor in title.

The court was required to determine whether the use of the trade mark by GPB, from approximately 2009 to 2012, constituted use by the applicant, Mr. Hosking, or use on behalf of the opponent, Affinity Tool Works LLC, or its predecessor, HTC Products, Inc. Specifically, the court had to consider if GPB's actions in applying for and using the trade mark were done in a capacity that could be attributed to the opponent, given the informal supply agreements between GPB and HTC/Affinity Tool Works.

The court found that the applicant, Mr. Hosking, misstated the facts regarding the initial application for the trade mark, which was not made by GPB but by Mr. Hosking himself. While Mr. Hosking founded GPB and made the application for registration "for and on behalf of GPB in order to protect an investment," he had ceased to be a director of GPB more than 18 months before the trade mark application was filed. The court considered the opponent's evidence that its predecessor, HTC, had used the substantially identical mark PORT A MATE in Australia from 2003. The opponent argued that GPB's use of the trade mark should be regarded as use on behalf of HTC as the owner. However, the court viewed the arrangement between GPB and HTC as an alliance rather than an agency relationship, and the use identified between 2009 and 2012 was stated to be for and on behalf of HTC/[the Opponent]. The court ultimately found that the evidence did not support the opponent's submissions that GPB's use of the trade mark ought properly be regarded as use on behalf of HTC as the owner of the trade mark.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

The evidence in answer to the opposition comprises the declaration of Peter John Hosking made 19 September 2013 (“the Hosking Declaration”), and exhibits. Section 58 of the Act is reproduced below: 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.