Allworth Constructions Pty Ltd v Dixon Investments Pty Ltd and Dixon Projects Pty Ltd Also Trading as Dixon Homes

[1993] ATMO 47

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by Dixon Investments Pty Ltd and Dixon Projects Pty Ltd also trading as Dixon Homes to the registration of Trade Mark application number 496970 in the name of Allworth Constructions Pty Ltd.

Background

This matter arises out of the lodgement, by Allworth Constructions Pty Ltd ("the applicant") of the above numbered application on 7 October 1988 in Class 19 seeking registration of the device of a RIBBON BOW in respect of 'houses'.  The application is a divisional, being divided out of application 451385 dated 1 September 1986.  A representation of the mark appears below:

On 22 March 1990 the application was advertised as accepted and on 14 June 1990, within the prescribed three month period, Notice of Opposition to registration of the application was lodged by the above named opponents.  Evidence in support of the opposition was served on 12 September 1990.  The applicant did not serve evidence in answer.

The issue was heard before me on 5 September 1991.  The applicant was not represented at the hearing; the opponents were represented by Mr James Adams of Grant Adams & Co of Brisbane.

The submissions
Briefly stated, Mr Adams' submissions were primarily couched in terms of section 40 of the Trade Marks Act; he submitted that the opponents claimed that by virtue of their use of the trade mark prior to the lodgement of the parent application, 1 September 1986, the opponents were the proprietors of the mark at the date of lodgement and accordingly their better claim to proprietorship of the trade mark displaced the claims of the applicant.

Mr Adams directed my attention to the exhibits appended to the  declaration of Mr PETER JOHN LYNCH ("the Lynch declaration") for the opponents that show that use of the BOW (about which use I will shortly say more) commenced in 1981 and received the 1982 Outside Advertising Award.  The evidence shows that the opponents' use of the BOW device continued until at least shortly prior to the lodgement of the evidence in support and the Lynch declaration states that the use of the mark by the opponents has been continuous..

I believe that the use of the BOW device is unusual in that it consists of a huge ribbon and bow, pink in colour, and affixed to the roof of the completed house for sale, giving the whole house the appearance of a gift-wrapped present.  The use of these bows is apparently of such strident visual effect that the Gold Coast Police sought their removal as the bows were claimed to be a traffic hazard when people suddenly slowed their cars to absorb the full impact of the spectacle (and the following car).

Discussion
Section 40 of the Act states:

(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.

Accordingly, if a person's claim to proprietorship can be displaced in terms of the authorship and use of the mark by another person prior to the lodgement of the application, the application must fail unless the first person can show that it had first use of the mark.  It follows that there are three issues here for me to consider:

.did the opponents have first authorship prior to the date of application?  if so,

.did the opponents' use of the mark constitute a use in terms of section 6 of the Act? and,

.are the marks in question substantially the same mark?

As to the first question, the Lynch declaration states that the mark was devised in 1981 by Mr Greg Balderstone, then advertising manager for the Dixon Investments Pty Ltd, and put into use immediately.  The mark has, states the declaration, been in continuous use since then.  There is nothing put in by the applicant that would cast any doubt on this and I therefore accept that, in the sense required by Aston v Harlee Manufacturing Co (1960) 103 CLR 391, at 399-400, the opponents had first authorship and use of the mark in Australia.

The second issue for me to decide is whether the opponents' use of the big pink bow on the roofs of its goods constitutes a use of a trade mark in terms of section 6 of the Act.  Various cases in the past have dealt with the difficulty in accepting three dimensional objects as being trade marks.  I will not dwell on them at length; however, it is sufficient for me to mention the James Trade Mark (1886) 3 RPC 340 and Coca Cola Trade Marks [1986] RPC 421: in those cases it was held that the shape of the goods or of a container for the goods is not a registrable particular.

However, here the shape to be considered is not the shape of the goods, it is, to quote from James Case, supra at p. 344, "something distinct from the thing marked", and in terms of the Coca Cola bottle case, supra at p. 457, in no way places trade rivals at a disadvantage by granting one person a perpetual monopoly in a shape related to the form or function of the goods themselves.  The use of the bow here has no relation to the form or function of the goods to which it is applied.  This accords with the registrar's practice in the past of accepting line drawings of three dimensional objects for registration where it has been shown that the mark has no relation to the shape or function of the goods.  For example, the well-known statuette from the bonnet of Rolls Royce motor cars is a registered trade mark: the statuette now has no functional relation to the goods and is something extra, distinct from the goods themselves, that has been added to them.

Accordingly, I am of the opinion that the opponents' use of the bow on its houses constitutes a use of a trade mark in the sense intended by the Act.

The third issue for me to consider is whether the bow used by the opponents is substantially the same mark as that the subject of this application. It is apparent from the way that the courts have interpreted section 40 that the minimum requirement is that the marks in question be substantially the same mark: Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 391, to be applied to substantially the same goods or services: Hicks' Case (1897) 22 VLR 636 at 640. There is no question that the relevant goods here are identical. The applicant has submitted newspaper articles which contain photographs, which unfortunately will not reproduce in this decision, that show the opponent's bow to be very much the same bow as the bow the subject of this application. The bow is formed of two loops and has ribbon emerging from it both at right angles and at diagonals; these form the 'classic' bow shape that is the same as the bow the subject of this application. The only difference immediately apparent is the angle that the bow is 'viewed' at in the mark the subject of this application and as shown in the photographs: this difference is, of course, of no importance when I am considering whether a three dimensional mark is substantially the same as a two dimensional mark. I therefore consider that the marks in question are substantially the same mark.

Decision
I therefore find that at the relevant date the applicant was not the proprietor of the mark and that the opposition must succeed.  I accordingly refuse to register this application.

The opponents, having been successful, are entitled to their costs which I so award.

Susan Farquhar
Assistant Registrar
Trade Marks Hearings
20 May 1993