Amezdroz & Son Pty Limited v John Edwy Wettenhall

[2001] ATMO 79

TRADE MARKS ACT 1995

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

Re:Opposition by Amezdroz & Son Pty Limited to registration of trade mark application 806568(39) - WETTENHALL'S and device - filed in the name of John Edwy Wettenhall.

Background

John Edwy Wettenhall (the applicant) filed application number 806568, as represented below, on 10 September 1999 in respect of 'transport and storage' services in class 39 of the International Classification of Goods and Services (Nice Classification).

The application was accepted by the Trade Marks Office (TMO) examination section and advertised as accepted for registration in the Australian Official Journal of Trade Marks of 29 June 2000. Amezdroz & Son Pty Limited (the opponent) filed a notice of opposition to the registration of the mark on 27 September 2000. The opponent filed and served its evidence in support of the opposition by 27 February 2001 after requesting, and being granted, an extension of time in which to do so. The applicant chose not to respond to this evidence. Both parties were offered the opportunity to be heard in the matter but as neither party took up this offer the file has now been directed to me for a decision based on the written record of all available material held in this Office. I note that the opponent has filed written submissions to support its case.

The opponent began its business operations in 1925 with the carting of cream from the western district of Victoria to Melbourne. At that stage the business consisted of a single truck. No material has been put before me to indicate what trade mark the opponent used at that time. Today the business has expanded to a large family-run operation with a fleet of modern well-equipped vehicles transporting and distributing goods for a variety of industries.

The opponent claims to have purchased the present trade mark when it acquired the business of R A & S Wettenhall Interstate Pty Limited on 24 July 1997. A history of both the WETTENHALL'S and WETTENHALLS trade marks, as provided by the opponent in its evidence is relevant to this proceeding.

The present applicant commenced use of the WETTENHALL'S mark in the early 1970's when he operated a company called Wettenhall Cartage Co Pty Limited. Use of the mark ceased, however, when he sold the cartage and freight business to John Brockhouse & Son, linehaulers for TNT, in 1979. TNT subsequently took over the Brockhouse business. Neither of these entities used the mark, beyond the use of the present applicant in 1979, in relation to transport services.

Independent of the use above, Bob and Scott Wettenhall, respectively the brother and the son of the applicant, established R A & S Wettenhall Interstate Pty Limited in 1983. This business commenced use of the WETTENHALLS mark in 1986 when it was applied to a single transport vehicle. J & M Eddy purchased this business in 1993 and later sold it to the present opponent in July 1997, at which time the mark was still in use in relation to transport and distribution services. The opponent has continued to use this mark until the present time. Currently, the mark is used by the company on 15 haulage trailers in addition to commercial literature and company stationery all in relation to the linehaul, storage and distribution services offered by the opponent.

The Evidence

The opponent's evidence in support comprises two declarations. One is from Brett Andrew Amezdroz, the sole Director of the opponent. This declaration also contains four exhibits 'BAA-1' to 'BAA- 4' respectively. The other declaration, together with exhibit 'SJW-1', is from Scott John Wettenhall, the National Manager of a division of the opponent. Mr Wettenhall is a son of the present applicant. The applicant has chosen not to submit any evidence in answer to the opposition.

Apart from these declarations, the attorney for the opponent, Mr Robert Kelson of Callinan Lawrie, Melbourne, has provided some supporting written submissions to argue the opponent's case.

Discussion

The notice of opposition has listed all but one of the ten sections of the Act dealing with grounds of opposition. The evidence in support of the opposition, and the supporting written submissions, however, find a focus on two issues of the opponent's claimed grounds. These are that the opponent alleges that the applicant has no intention to use the mark and, also, that it can point to another trade mark being a barrier to the registration of this application. Since the opponent cannot point to any earlier application or registration, to trigger s.44, the possible relevant grounds under the Act, therefore, are found at ss.58, 59 and 60. The opponent raised a number of other allegations in the notice of opposition. None of these, beyond the grounds that I have already mentioned above, find support in either the evidence or the attorney's submissions. Thus, the three grounds listed above become the focus of the remainder of these reasons.

(a) Section 58 - Applicant not owner of trade mark

Here the legislation reads:

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 concept of ownership of a trade mark is not new, and the tests to be applied to address the question of ownership under s.58 have been clearly set out in relation to s.40 of the repealed Trade Marks Act 1955. Under s.58 the relevant factors that must be demonstrated by the opponent, to establish a successful ground of opposition to registration of a trade mark, are:

• that the respective trade marks of applicant and opponent be either identical or substantially identical (Carnival Cruise Lines Inc. v Sitmar Cruises Limited 31 IPR 375, (1994) AIPC ¶91-049, (1994) 120 ALR 495);

• that the respective goods of both parties be the 'same kind of thing' (Re Hicks' Trade Mark (1897) 22 VLR 636; 3 ALR 75); and

• 
  

  that the opponent has the earliest claim to ownership based on use prior to both the application to register and actual use of the mark by the applicant (Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413 and Re: Hicks's Trade Mark, supra, at 639).

The respective marks of the applicant and of the opponent are depicted below.

Some minor differences can be noted in the get-up of both marks, such as the positioning of the triangular flash above the letters and the length of the line that introduces the letter W. The applicant has also placed an apostrophe in the name to produce the possessive form, as WETTENHALL'S, whereas the opponent is simply implying the plural of the name, as WETTENHALLS. Given the obvious and overwhelming similarities between these words as trade marks, however, these dissimilarities are not significant in providing discrimination between the marks. I believe that these two trade marks, when each is viewed as a whole, are substantially identical.

The services for which the applicant seeks registration are 'transport and storage'. The opponent's evidence indicates that it has used its mark in respect of 'linehaul, storage and distribution'. These services of the opponent are clearly the 'same kind of thing' as the applicant's claim.

This brings me to the issue of first use. The opponent acquired the business of R A & S Wettenhall on 24 July 1997 from J & M Eddy who in turn had purchased the business in 1993/94. From 1983, when Bob and Scott Wettenhall established R A & S Wettenhall Interstate Pty Ltd, that business had used the WETTENHALLS mark continuously in respect of, at least, 'transport services'. Thus, the opponent's claim extends back as far as 1983.

On the issue of ownership of a trade mark, McGarvie J. said in the case of Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark YANX, Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No2) (1984) 59 ALJR 77 at 83.

....

In considering who, within s.40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co. of Australia Ltd v Rohm& Haas Co (1949) 78 CLR 601 at 625 and 627.

The applicant used his WETTENHALL'S trade mark from the early 1970's until 1979 in respect of 'cartage and freight' services. This use by the applicant is prior to any use made of its mark by the opponent. I note that the opponent, by means of its written submissions, has argued that the applicant has led no evidence that it had retained any rights in the mark beyond 1979. The evidence is silent on the issue of any ownership claim for the mark, in relation to transport or freight services, until 1983 when Bob and Scott Wettenhall established R A & S Wettenhall Interstate Pty Ltd and began using the mark. Although the present applicant did, apparently, use the mark in 1981/82 it was not in relation to transport, freight or cartage services but for earthmoving services, an unrelated field for the purposes of s.58 - not being the 'same kind of thing'.

The uncontroverted evidence of the opponent does raise some serious questions about the present applicant's right to ownership of the mark.

Failure to use a mark, alone, does not constitute an abandonment of it or a relinquishing of the rights. This is made clear by Justice Burchett in Rael Marcus v Sabra International Pty Limited, 30 IPR 261 at 266 with the statement:

It is not the law that all rights with respect to a trade mark vanish at once upon a mere discontinuance of its use. The connection in the course of trade denoted by it will not immediately be forgotten. That connection may be valuable, and it remains open to the proprietor to resume the use of the mark.

As well as the discontinuance of use by the applicant from 1979 there are other factors at work here. The opponent's evidence brings some questions to my mind. What did actually happen to the mark in 1979 when the present applicant sold his business? Was the trade mark assigned at that time and did the new owner abandon it without any use - or did the applicant retain ownership? What physically happened to the marks on the applicant's truck(s) at that time - were they simply replaced? Or was the mark merely exhibited on tarpaulins that then went into storage? Does the applicant no longer have the means to run a transport and freight business - as has been alleged in the opponent's evidence? What has happened in the intervening 20 years since the applicant last used the mark? Why has the present applicant filed an application in the face of some 16 years use by another party? The history of the use of both the WETTENHALL'S and WETTENHALLS trade marks set out by the opponent leaves considerable doubt concerning the applicant's rights between 1979 and the date of application. I think that it is reasonable to require some explanation of the circumstances surrounding the apparent lack of interest in the mark by the applicant for this 20 year time period, in the face of the opponent's use of the mark and its opposition in the present case. The questions raised by the opponent's evidence, however, remain unanswered. The applicant, in the face of these issues, needed to clarify his claim, I believe, to make his position clear but this onus has not been met. Thus, whilst I cannot be absolutely sure that the applicant abandoned the mark in relation to transport and storage services after his last use in 1979, on a balance of probabilities I believe that it is more likely than not.

From the foregoing, I find that because of the unchallenged doubt surrounding the applicant's claim to ownership from 1979 that the opponent's continuous use of the mark from 1983 has established first use of the mark and, therefore, this ground of opposition.

(b) Section 59 - Applicant not intending to use trade mark

This section of the Act reads:

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

Unless the applicant has made some sort of admission that it does not have an intention to use the mark, this ground of opposition can be difficult to establish.

In the present matter, the opponent has alleged that the applicant lacks the financial backing to run a transport business. Such a claim is far from evidence that the applicant lacks any intention to use its trade mark from the date of application. A party may struggle with a severe financial difficulty in order to bring a commercial venture to fruition - but still have a strong intention to use its trade mark. The opponent has also claimed that the applicant has not rebutted its evidence, in relation to a lack of intention to use the mark. The applicant, however, may simply have not felt any necessity to respond to an unsupported allegation. In addition, I accept that the act of making an application could be seen, prima facie, as showing an intention to use the mark from the date of application in 1999.

I find that this ground of opposition has not been made out.

(c) Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

The legislation allows:

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

I have already determined, in the Discussion concerning s.58 above, that the respective marks of the applicant and of the opponent are substantially identical.

As set out in s.60, the rights of the parties must be determined as at the date of application. The date of application here is 10 September 1999. Supporting its reputation in the mark, the opponent has provided evidence of its use of the mark that extends in time from 1983 to the present. In 1986, the first tautliner was purchased and marked with the WETTENHALLS logo. It is difficult to gauge, from the evidence available here, the size of the opponent's business during these early years. The extent of the opponent's operation, according to the Amezdroz declaration, is Australia wide - although no claim is made on the length of time that such a geographical area has been covered. As at 29 December 2000 the opponent had 15 trailers on the road. No clear figure is provided for the situation at 10 September 1999.

Additionally, the turnover is quoted for only one year, the calendar year of 1997. The turnover figure is in the millions of dollars, but given the magnitude of overhead costs in this line of business, I do not believe that such a figure indicates a convincing reputation. An estimate of the turnover for the year 2000 is also given - but this is outside the relevant time period to establish the reputation in the mark, as required by s.60(a).

In order to establish a ground of opposition under s.60, the onus is on the opponent to point to a substantially identical or deceptively similar trade mark that has such a reputation that use of the applied for mark would cause deception or confusion. In a recent decision of this Office, Kellogg Company v Exxon Corporation, (2001) ATMO 67, Hearing Officer Williams made the following observation in this regard:

In Registrar of Trade Marks v Woolworths, supra, French J said something of s 44 that is, with modification, applicable to s 60. That was, deleting words that are inappropriate to s 60:

A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or ... services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

I do not believe that French J was suggesting, in referring to "some people", that it would be sufficient if a mere handful of people would be left in doubt. Firstly, I do not believe that he was attempting to modify his previous stipulation, for which there is long-standing authority in a case to which he had just referred, that the doubt that must afflict the "ordinary" person must be a "reasonable" one. Secondly, the formulation requiring that the number of people affected by doubt or confusion be "substantial" has been repeatedly endorsed. The onus has shifted, but not the benchmark. The latter comes from Smith Hayden's application[1] and Kendall Company v Mulsyn Paint and Chemicals[2], where Kitto J repeated and expanded what he said in Southern Cross[3]. He added the reference to "substantial" as an express adoption of that formula from comparable UK decisions subsequent to Smith Hayden.

[1] (1946) 63 RPC 97

[2] (1963) 109 CLR 300 at 305

[3] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595

Hence, I need to assess whether or not there will be a 'real, tangible danger' of deception or confusion 'amongst a substantial number of persons'. In relation to use of the mark causing confusion, I must decide whether or not 'a number of persons are caused to wonder' or 'if the ordinary person entertains a reasonable doubt' about 'whether the two sets of services in question come from the same source'.

The reputation that the opponent has set up here, in its evidence, is not strong. It would need to do more, for me to accept that a 'substantial number of people' could be deceived or confused. I simply cannot be sure what sort of recognition the opponent's mark had, as at 10 September 1999, in the relevant market that would be likely to lead to deception or confusion.

Thus, I find that the opponent has not established this ground of opposition.

Conclusion

From the foregoing, I have found that the opponent has not made out the grounds under ss.59 or 60 but in terms of ownership of the mark under s.58 the uncontroverted evidence leads me to find in favour of the opponent. Thus, I find that the opposition as a whole has succeeded and I refuse registration of this trade mark.

Costs

The opponent had requested its costs in this action in the notice of opposition, and I award costs against the applicant insofar as Schedule 8 of the Trade Mark Regulations applies in this matter.

Don Nancarrow
Hearing Officer
3September 2001