Alexander v Tait-Jamison

[1993] ATMO 81

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by Stephen James Alexander to the registration of Trade Mark application numbers 515878, 515879 and 515880 in the name of James Anthony Tait-Jamison.

Background

These issues arise out of the application, on 31 July 1989, for registration of the above numbered applications in classes (29), (30) and (31) respectively.  The applicant, James Anthony Tait-Jamison, is a New Zealand citizen of Palmerston North, New Zealand.  The opponent, Stephen James Alexander, is an Australian citizen of Homebush, New South Wales.

Following the examiner's reports on the applications, the applications were transferred to Part B of the Register and were advertised as being accepted for registration on 21 November 1991.  Notice of opposition to registration of the marks was filed and served by the opponent on 17 February 1992.  Evidence in support of the opposition was lodged on 10 April 1992.  All evidence in answer was lodged by the applicant 24 July 1992.  Finally, all evidence in reply was lodged by the opponent on 26 November 1992.

Details of the opposed applications are as follows:

Number  Mark  Class    Goods

B515878ECO-FARM               29                   All goods in this class

B515879ECO-FARM               30                   All goods in this class, excluding coffee, coffee substitutes, cocoa and tea

B515880ECO-FARM               31                   All goods in this class

The hearing of the issue was before me, as the Registrar's delegate, in Sydney on 8 July 1993.  The opponent was represented by Julia Baird of Counsel.  The applicant was represented by Gerard Skelly, legal practitioner of Spruson & Ferguson, Patent and Trade Mark Attorneys, of Sydney.

Before summarising the submissions of the legal representatives, it is convenient to iterate the evidence; and, as the issue was largely argued in terms of the proprietorship of the mark under section 40 of the Act, I will observe that the date of application is the relevant date as at which the rights of the parties must be determined - this date is 31 July 1989: Seven Up Co v OT Ltd (1947) 75 CLR 211.

Evidence.
The evidence comprises:

Evidence in Support
  .           Statutory Declaration by Steven James Alexander

(The 'Alexander declaration')

Exhibit 1
  Exhibit 2
  Exhibit 3
  Exhibit 4
  Exhibit 5
  Exhibit 6

Evidence in Answer

.           Statutory Declaration by Gerard James Skelly

(The 'Skelly declaration')

.           Statutory Declaration by James Anthony Tait-Jamison

(The 'Tait-Jamison declaration')

Exhibit JAT1
  Exhibit JAT2
  Exhibit JAT3

Evidence in Reply

.'Pro Forma' Statutory Declarations by 33 people in the trade.

(The 'trade declarations', unless individually named).

The Alexander declaration attests that the Opponent commenced trading on 9 September 1988 as Eco-Farms, New South Wales Business and Consumer Affairs registration K6899042.  Subsequently, the company Eco-Farms Pty Ltd, (ACN 003-772-094), was incorporated on 11 May 1989.

Exhibited to the Alexander declaration is a price list that also serves as an invoice.  The document is headed with the word ECO-FARMS over an address.  This document is an invoice dated 16 November 1988 and has some 90 goods printed on it, and some goods placed on it in hand-writing with prices beside them.  These goods are mostly in the vegetable range, but include are such goods as Pickles, Honey, Nuts, Eggs, Herbs, Bread and so on.  At the bottom of the invoice is a code, and this is a feature that I believe is of great relevance.  This code is applied to the various goods on the list that classifies the goods being sold as whether they were grown/prepared under Bio-Dynamic, Certified Organic by NASAA, Organic (not certified), etc.  The opponent included as exhibit 3 a more recent price-list.  However, this document is dated 24 March 1992, well after the relevant date for my consideration.  Similarly, the other exhibits to the Jamison declaration, a newspaper article and two letters stating the writers knowledge of the mark, do not advert to the writer's knowledge of the mark prior to the relevant date: 31 July 1989.

The Skelly declaration states that the declarant caused a search to be conducted of the records of the Australian Securities Commission for the company name Eco-Farms Pty Ltd and the New South Wales business name Eco-Farms.  The search results, which are annexed to the declaration, show that Eco-Farms Pty Ltd was incorporated in New South Wales on 11 May 1989 for the principal activity of "farm (wholesale fruiters)".  These results also show that Eco-Farms was incorporated as a business name in New South Wales on 25 September 1988 in respect of "whol/reta/farm produce eg fruit & vegetable", but that the business name was deregistered on 30 July 1989.

The Tait-Jamison declaration states that the declarant is an organic farmer selling produce throughout New Zealand.  Sales have been made to Australia but mostly under his BIO-FARM brand.  He states that he wishes to introduce ECO-FARM produce into Australia and exhibits to his declaration a copy of artwork for labels which are currently, he states, under production.  He further states that there has been some sales of goods  under the Eco-Farm mark, mainly yogurt, but does not say when these sales occurred, whether these sales have been into Australia, or the quantum of the sales.  He states that it is his belief that the opponent has not applied to register the ECO-FARMS trade mark and that the opponent is apparently relying on his incorporation of the company name to protect the name ECO-FARM.  The Tait-Jamison declaration draws several further inferences from this, however, it must be observed that this only reflects the beliefs of the declarant, rather than evidencing a state of affairs.  The declaration goes on to make some criticisms of both the opponent and Biological Farmers of Australia Co-Op Ltd as well as the Australian certifying standards.  I feel that I must state unequivocally to the applicant, at this stage, that the criticisms that it has are a separate issue from this one; the criticisms are quite clearly beyond my power as what is essentially an administrative tribunal; and, that all these criticisms may show, without any further evidence from the parties involved in the separate issue complained of, is that it is the applicant who has expropriated the mark of another person and registered it in Australia.

I will not discuss the trade declarations at this stage of my determination.

The Submissions
Ms Baird opened her submission by drawing my attention to the main grounds of opposition that she would be relying on: these fall under section 40 of the Act, the proprietorship of the marks, and under sub-paragraph 28(a) in that the use of the marks by the applicant would confuse and deceive.  As I will decide this issue in terms of section 40 of the Act, I will not reproduce any of the argument that was presented in terms of sub-paragraph 28(a) of the Act.

Ms Baird then drew my attention to the evidence of the opponent which I have discussed above.  In summary her submissions are that the evidence shows that the word ECO-FARMS was used by the opponent as a trade mark since at least 16 November 1988 when it appeared on the receipt or invoice that is in evidence.  It is substantially the same mark as those which are here opposed: ECO-FARM.  The scope of the goods appearing on the invoice does fall within all of those encapsulated by the claim on the specifications as advertised.

Ms Baird submitted that all that the applicant's evidence, via the Skelly declaration shows is that the company Eco-Farms Pty Ltd was incorporated, on 11 May 1989, subsequent to the name Eco-Farms being registered as a business name.  The activities in respect of which the opponent is, or was, registered or incorporated fall within the scope of the types of activity that is currently under opposition.

The Tait-Jamison declaration, submitted Ms Baird, states that he has not used the mark in Australia.  Much of balance of the declaration is argument and not fact and is hence of little probative value.

Mr Skelly responded for the applicant that it is essential that the opponent demonstrate the use of the word ECO-FARMS as a trade mark prior to the date of application of the opposed marks.  This, in Mr Skelly's submission, the opponent has not done.  Mr Skelly referred me to Settef SpA v Rivoland MarblePty Ltd 10 IPR 402, at 413, where McCarthy J. stated that at common law, property in a trade mark can only be gained by public use of the trade mark. If the word has not been used as a trade mark by the opponent, but as something else, the opposition should fail. Here, Mr Skelly stated, the situation is that the opponent had only used the word as a business name: the documentation supplied by the opponent should be interpreted this way.

Mr Skelly submitted the requirement raised in the so-called 'piracy cases' of a slight amount of use, should be relaxed here as the situation is not one of a local trader appropriating the mark of a foreign trader but of a foreign trader legitimately adopting a mark and applying to register it in Australia.

Mr Skelly also submitted that, in any case, the marks are not the same marks:  there is not the scope in proprietorship issues to look at deceptive similarity.

Mr Skelly further drew my attention to the principle that the goods in question should be the same.  He referred to a decision of the Office, in a proprietorship issue, where the delegate found that the opposition did not succeed as regards the goods 'clocks' against 'watches'.  He went on to cite Australian Telecommunication Corporation v Centec International Corp Pty Ltd (1992) 24 IPR 170 where Hearing Officer Williams stated, at page 174, that, "There is no decision of which I am aware that would suggest that use of a trade mark on services will defeat a claim to proprietorship in respect of goods, be they "closely related" for the purposes of s33(3) or otherwise ..." The opponent, submitted Mr Skelly, performs a service: it performs the service of wholesaling farm produce and related goods. Thus, he said, what I am to consider here is the situation that Hearing Officer Williams adverted to in Centec, supra, a situation which he says is confirmed by the opponent's documented evidence.

Decision
Section 40 of the Act states, inter alia:

(1)A person who claims to be the proprietor of a trade mark may make application to the Registrar for the registration of that trade mark in Part A or Part B of the Register.

It follows from this that an opponent can dislodge the applicant's claims of proprietorship via evidence that at, or before, the date of application the opponent was using the same mark in respect of the same goods or services.  If the applicant cannot, or does not, refute the claim via the lodgement of its own evidence that establishes its own use which precedes that of the opponent (and, hence, shows its proprietorship in the mark) the opposition must succeed: see, for example, Shell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601; or, Aston v Harlee Manufacturing Co (1960) 103 CLR 391.

There are three issues here for my consideration then.  The first is whether the marks at issue are the same marks; the second is whether the goods are the same goods, or, indeed, if the mark was used in respect of goods or services; and, the third is who had the first use of the mark prior to the date of application.  As a corollary of the latter issue is the question of the status of the mark at the date of the application for registration of the opposed marks: was it a trade mark, or, was it, as Mr Skelly submitted, a business name?.

The relevant date at which proprietorship must be determined is the date of application of the opposed marks which is 31 July 1989: Seven Up Co v O.T. Ltd (1947) 75 CLR 211.

Comparison of Marks.  It is apparent, from the cases, that the question of the comparison of the marks at issue in terms of section 40 is very narrow.  The greatest deviation from a strict identity, or a one-to-one matching, that I can find is in the Seven Up case, supra, ("7UP in circle" v "8UP in square"); and, in Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300 ("Polykin" v "Polyken"). It would seem from these, and the other reported cases, that the marks, if the opposition is to succeed, should be "nearly identical" or substantially the same mark. In short, the marks need not be identical, but should be much closer than they need be by the test in section 33 of 'deceptive similarity'.

The marks in question here are the words ECO-FARM and ECO-FARMS.  It seems to me that these marks are at least as close as "Polykin" and "Polyken" and form an identity with each other which can be determined as being "nearly identical".  I therefore determine that the marks are so nearly identical as to be caught by section 40.

Comparison of goods/services.  It would seem to me that the issue here, as to whether a wholesaler actually trades in goods, as opposed to providing a service, is very much the same question as to whether a retailer actually trades in goods.  In Australia the registration in respect of retail services for particular goods is well established: the view adopted by the Registrar being very much that a retailer is performing the service of "gathering together various products, making available a place for purchasers to select goods, and providing other necessary means for consummating purchases" - Dee Corp Plc's Appn [1990] RPC 159, at 164. Conversely, it has been held by the Courts that while retailers might not physically place their mark on the goods themselves, the mark is used on dockets, invoices, shopping bags, in-store signage, general advertising and so on: such use constitutes use within the meaning of sub-section 6(2)(b) of the Act - Angoves Pty Ltd v Johnson (1982) 43 ALR 349.

Accordingly, I think that it must necessarily follow that a wholesaler, who is in many ways analogous to a retailer, might be using a mark simultaneously in respect of the service that he performs and the goods that he provides.  This will not always hold true of wholesaling services: very often there will be little selection or grading of the goods that are being wholesaled.  It is oftentimes less likely, it would seem, that other service providers, where the goods are ancillary to the services, such as installation or repair services could register in part A or B in respect of those goods unless they actually make or order to their own specifications those particular goods: Pumps 'n' Pipes Pty Ltd's Appn 18 IPR 378. Here there is evidence that the opponent is selling organic produce and grading them for sale both by a standard he has himself applied and by other industry recognised standards: there is in this a very strong inference of selection for sale, the use of the mark on price lists or invoices is the same use of the mark in relation to the goods as found in Angoves, supra.

I therefore find that the use of the mark by the opponent is use in relation to goods.  I also find the use is use in respect of goods in each of the three classes of goods in question.

First use of the Trade mark/Business Name.  As it appears to be conceded that if the use of the word ECO-FARMS by the opponent was use of a trade mark, as opposed to a business name, prior to the date of application, the opposition should succeed (subject to my determinations, above), I will simply note that the applicant has had no use of the marks in Australia.  Quite frankly, I do not understand or agree with the applicant's proposition that a mark can either function as a business name or a trade mark but not both.  If a word is either distinctive or capable of becoming distinctive in terms of the Act, I can see no reason why that word cannot refer to a trading style under which business is carried on and serve so as to indicate an origin in trade of goods or services.  I find support for this view in Smith & Nephew Plastics (Aust) Pty Ltd v Sweetheart Holding Corp (1987) 8 IPR 285. I believe that the word ECO-FARMS is, in the context of the invoice that I have previously discussed, "a mark used in relation to goods for the purposes of indicating, or so as to indicate, a connexion in the course of trade between the goods and a person who has the right to use the mark, whether with or without an indication of the identity of that person", to quote the words of sub-section 6(1)(a) of the Act. I believe that it is possible that at that time the opponent did not realise that he was using the mark as a trade mark; I also believe that the evidence shows that he is in danger of now failing to use the mark as a trade mark; I further believe that his continuing failure to register his mark is extremely misguided; however, I believe that the one instance of use that has been demonstrated is incontrovertibly use of the word as a trade mark in respect of goods and that it was prior to the date of application.

Determination
Accordingly, the opposition must succeed.  I must therefore determine that the applications which are the subject of these issues must be refused registration, subject to any appeal from my decision.  I further consider that the applications should be refused in their entirity as I can see no practical way of restricting the applications around the opponent's demonstrated prior usage of the mark.

Costs
The opponent, having being successful, is entitled to its costs in this matter, which I so award.

Ian Thompson
Senior Examiner
Trade Marks Hearings

31 August 1993