Alan Knobelman v Cussons Pty Limited

[2000] ATMO 54

TRADE MARKS ACT 1995

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

Re:Opposition by Alan Knobelman to registration of trade mark application 746967(3) - REFLECT- filed in the name of Cussons Pty Limited.

Background

This issue arises out of the filing, on 21 October 1997, by Cussons Pty Ltd ('Cussons') of an application to register the trade mark REFLECT in Class 3 in respect of:

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps

The application was accepted for registration on 9 February 1998 and advertised as such in the Australian Official Journal of Trade Marks on 26 February 1998.

On 8 May 1998, within the time allowed to do so, Alan Knobelman, ('the opponent') lodged Notice of Opposition to the registration of the trade mark.  The grounds in the Notice are a trifle vague; however, I will state now, because of the circumstances of the case, that the grounds of opposition [with my added parentheses] are:

1.        The applicant is not the owner of the trade mark. [Section 58]

2The applicant's proposed trade mark is incapable of distinguishing the applicant's goods and services from the goods and services of other persons. [Section 41]

3. The applicant's proposed trade mark is likely to deceive or cause confusion. [Sections 43/60]

4.The applicant's proposed trade mark is similar to a trade mark that has acquired a reputation in Australia. [Section 60]

After a period of time in which extensions of time were sought (and allowed) in which to prepare and file evidence in support of the opposition, the opponent did not file any evidence.  Neither did the applicant file any evidence in answer and, instead, requested to be heard in the matter.  The hearing was in Sydney and Marion Heathcote of the firm of Davies Collison Cave, Patent and Trade Mark Attorneys, represented the applicant.  The opponent was not represented and did not appear at the hearing.

The submissions, in the absence of any evidence, were of necessity brief.  Ms Heathcote drew my attention to the lack of evidence to support the opponent's grounds under sections 58 and 60 of the Act and the decision of the Delegate, in terms of section 41 of the Act, in examination to accept the trade mark as being inherently registrable.  She noted that it was not clear which section of the Act ground three in the Notice of Opposition is based in.

Reasons

In the absence of provision of any evidence from the opponent, I dismiss the opposition in terms of sections 43, 58 and 60 of the Act.  Each of these sections respectively must rely on evidence of either some connotation prima facie contained in the trade mark, prior use and authorship of the same trade mark for the same kind of thing,[1] or, reputation.  I note that no connotation in the trade mark, that would give rise to rejection in terms of section 43, is immediately obvious.

[1]  Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495

As regards the grounds that may exist under section 41, these also fail for the following reasons.  The argument is based on the notion that because a trade mark is identified with the goods or services of one trader, it cannot be inherently adapted to distinguish the similar goods or services of another.  The argument overlooks the fact that if the trade mark is not inherently adapted to distinguish the particular goods or services of one trader, it is not and cannot be inherently adapted to distinguish the similar goods or services of any other trader - including those goods or services of an opponent.  Under section 41, any defect lies in the trade mark itself - not in the fact that another trader has allegedly used it as a trade mark.  In Spiral Foods v Valio Pty Ltd [2000] ATMO 22 (15 March 2000), I noted that:

This argument appears to stem from the judgement in Melhero Pty Ltd & Anor v Club X Pty Ltd & Ors [1997] 118 FCA (20 Jan 1997).  I will remark now that I think I must regard that matter as being decided on its own unique facts and as being of a purely judicial character: re Quinn; ex parte Consolidated Foods Corp (1977) 52 ALJR 117. Distinctiveness, or the capacity to acquire distinctiveness, is assessed by reference to the need of other traders to use the sign without improper motive and in the normal course of trade: Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511. It follows that the legislation in terms of s.41 specifically looks at the trade mark itself and, for example, its dictionary or geographical significations for a determination of its capability to distinguish the goods or services as being those of any particular trader - which particular trader is not at issue. The fact that another trader may make the claim that the mark distinguishes THEIR goods or services is not a matter for consideration under section 41 but under other provisions of the Act such as section 60.

Decision

The opposition is dismissed for the above reasons.

Costs

Costs may follow the event and Cussons is entitled to its costs which I award against the opponent.

Ian Thompson
Hearing Officer

29 May 2000