AMW Projects Pty Limited v Ray Mullins & Sons Pty Limited

[2000] ATMO 17

TRADE MARKS ACT 1995

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

Re:Application 734005 in the name of Ray Mullins & Sons Pty Limited - POT BLACK - in Class 41 and Opposition thereto by AMW Projects Pty Limited.

Background

This issue arises out of the filing on 8 May 1997 by Ray Mullins & Sons Pty Limited of Fremantle ("the applicant") of an application in Class 41 to register the trade mark POT BLACK in respect of services which, after amendment during examination, now read, "The provision of pool and snooker centres and organising pool and snooker competitions".

On 28 July 1997 an examiner's report issued in which registration 374528 was cited.  As this registration is central to these reasons, I will give the details here:

Owner:  AMW Projects Pty Limited
Priority date               21/04/1982
Number  374528
Trade Mark                POT BLACK
Class  28

GoodsAll goods in Class 28 including billiard equipment, snooker equipment, pool equipment, and equipment for related sports utilizing cues and accessories for all the aforementioned goods being goods included in Class 28

The applicant filed evidence of honest concurrent use for the examiner's consideration and, on 20 Aug 1998, the application was accepted with the endorsements:

Registration is limited to the STATE OF WESTERN AUSTRALIA.

Provisions of paragraph 44(3)(a) applied.

I will mention now that there is another registration of the trade mark POT BLACK in the name of AMW Projects Pty Limited, this is:

Owner:  AMW Projects Pty Limited
Priority date               22/04/1982
Number  374602
Trade Mark                POT BLACK
Class  42

GoodsRetailing and wholesaling services of billiard equipment, snooker equipment, pool equipment and related sports utilizing cues and accessories therefor

On 12 November 1998, within the time allowed by the Act, AMW Projects Pty Limited, (the opponent) filed Notice of Opposition to the application.  The grounds that are pertinent to the opposition will become apparent in my reasons, below.

In this issue, there are also proceedings in the Federal Court on foot.  It is my understanding that the Hearing of the issue in the Federal Court may be delayed in order that these reasons may be considered in the course of those proceedings.

In brief, the history of the evidence filed in relation to this opposition by the parties is:

12 February 1999 - Evidence in Support Filed by opponent
11 May 1999 - Evidence in Answer Filed by applicant

13 August 1999 - Evidence in Reply Filed by opponent

The Affidavits in the Federal Court proceedings have been filed also in relation to these proceedings in order that the issues can be aired as fully as possible prior to any hearing of the matter in the Federal Court.

Declaration of:	Made	Exhibits	Remarks
James Kemal Side	19 Mar 1998	JS-1 to JS-5	Filed during examination
Ray Atwell [sic]	10 Feb 1999	One page	Evidence in Support
Ray Atwell [sic]	9 Feb 1999	A1 to A29	Evidence in Support
James Kemal Side	7 May 1999	JKS-1 to JKS-4	Evidence in Answer
Raymond John Atwell	11 Aug 1999	Nil	Evidence in Reply
Harry Snow	11 Aug 1999	A and B	Evidence in Reply
Don Keogh	11 Feb 1999	B1 to B26	Evidence in Answer
Cont.d  Declaration of:	Made	Exhibits	Remarks
James Kemal Side	3 Dec 1999r	JS-1 to JS-25	Evidence in Answer
Affidavit of:	Made	Exhibits	Remarks
James Kemal Side	12 Mar 1999	For Applicant
James Kemal Side	17 June 1999	For Applicant
James Kemal Side	16 Aug 1999	For Applicant
Ray Mullins	2 Aug 1999	For Applicant
Desmond John Hoad	17 Aug 1999	For Applicant
Paul Neville McLean	18 Aug 1999	For Applicant
Barry Cooper	18 Aug 1999	For Applicant
Barrie Trevor Jones	18 Aug  1999	For Applicant
Trevor Raymond Reakes	19 Aug 1999	For Applicant
Elaine Lillian Monolas	19 Aug 1999	For Applicant
Joseph John McNicol	19 Aug 1999	For Applicant
Raymond John Atwell	25 May 1999	For Opponent
Donald Frederick Keogh	24 May 1999	For Opponent

I make nothing of the fact that the early declarations of Atwell and Keogh do not meet the requirements of the regulations to the Trade Marks Act 1995 as they do not state the declarant's full names.  However, I must observe that I have almost entirely discounted the declarations of Mr Atwell from my considerations as his declarations consist for the most part of argument, which is inappropriate to the declaratory form that it takes.

The Hearing was in Canberra before me as a Delegate of the Registrar of Trade Marks.  Richard McCormack of Counsel represented the applicant and Angela Bowne of Counsel represented the opponent.  The thrust of the submissions of the parties' representatives should emerge sufficiently from my reasons before which I will briefly outline the evidence.

The evidence
The evidence in this case is complex and much of it amounts to argument both as to fact, and the conclusions that can be drawn from what the parties see as the behaviour of each other.  I will not outline the evidence in detail and will limit my observations to what I draw from it the relevant facts.  There are various allegations or inferences of what amounts to 'bad faith' or 'acquiescence' from either party in the evidence - these I will discuss under the separate heading 'honesty/bad faith' later in these reasons.

Conclusions drawn from the evidence
The evidence appears to establish the following history of the parties and of the use of the words POT BLACK in Australia in connection with snooker, billiards or eight-ball ('cue games'). 

Sometime during 1972 the BBC television program POT BLACK was first shown on ABC television in Australia.  From my personal memory, the program was very popular and screened on prime time television.  The program last showed in 1985.  At some time in 1976 a company, Keogh Enterprises Pty Limited (KEP) or its predecessor in business, adopted the words POT BLACK as a common law trade mark in relation to the tables for cues games that it made.  KEP used this trade mark in Southern Queensland - sales beyond this area appear, from the evidence, to have been quite limited until 1993.  In the face of the POT BLACK television program, KEP sponsored competitions shown on other television channels under the trade mark POT BLACK and advertised POT BLACK snooker, billiards and eight-ball tables on television and in newspapers.  In 1982 KEP registered the trade mark POT BLACK in International Classes 28 and 42 - the registered numbers are 374528 and 374602.  Brief details of these trade marks appear above, under the heading 'Background'.

Previously, the present opponent had entered business in 1969.  By the evidence, it has been involved in the leisure industry for some thirty years and Ray Atwell, a director of the opponent, has been directly involved in the manufacture and supply of billiard, pool and snooker tables either since August 1990 (his Affidavit) or since 1980 (his statutory declaration of 10 February 1999).  In October 1998 the KEP trade mark registrations were assigned to the opponent.  It would appear that since at least 1993 there was a marketing arrangement between KEP and the opponent.

In late 1985 and early 1986 Raymond Mullins, in response to a perceived business opportunity in the Perth (Western Australia) region, resolved to open some snooker centres.  To this end he, in consultation with a graphic designer, created the logo appearing below:

 

"the logo"

Mr Mullins also instructed accounting firm Touche Ross to register the name POT BLACK as a business name in all Australian States in relation to the provision of pool and snooker services.  The accountants did so but told Mr Mullins that the name was already registered in Queensland by a firm of snooker table manufacturers.   In May 1986, the applicant was incorporated and in mid 1986 started business with two snooker centres in the Perth area.  The centres were promoted through local media outlets.  The material lodged with the statutory declarations and affidavit shows that the sign used by the applicant is most usually in the form shown above, that is, in the logo form, with or without the accompanying words FAMILY POOL & SNOOKER CENTRES.  Only occasionally, it would appear, has the applicant used the words POT BLACK, solus.  One such example of the words being used solus is an advertisement in 1989 on a billboard near the Horseshoe Bridge in Perth.  I note, however, that the evidence shows that where the words POT BLACK are very occasionally divorced from the triangular element within the logo, the words are used in association with the expression FAMILY POOL & SNOOKER CENTRES.

The almost exclusive usage of the trade mark as the logo trade mark appears to be confirmed by the affidavits put in by the applicant itself where it would appear that the persons making the affidavits have the logo trade mark in mind when making their statements.  Where the words POT BLACK are used in these affidavits, they are used as POT BLACK FAMILY POOL & SNOOKER CENTRES.

In June 1988, the present principals of the applicant acquired the shares in the business from Mr Mullins and his associates along with the business name POT BLACK.  From 1988 through to 1998, the present principals have expanded the business, I understand through franchises, from two centres to nine throughout Perth and its environs.  Concurrent with the expansion, the centres have been heavily promoted and advertised on television and in the local newspapers and through the sponsorship of local cue game championships and tournaments.

During the period 1986 to 1988, the applicant bought cues, pool balls and chalk from the Mal Atwell Leisure Group.  From the early 1990's the applicant has been doing regular business with the opponent.  There is correspondence in evidence between the applicant and the opponent regarding a quote for equipment for the snooker centres.

Ray Mullins attempted to register the trade mark POT BLACK in December 1986 for services in Class 41. The application lapsed, I assume on citation of the (then) KEP registrations in terms of section 33 of the Trade Marks Act 1955.  Subsequently, in 1988, after the new owners of the applicant had taken over its management, they approached Phillips Fox, solicitors, of Perth with a view to registering the trade mark.  The search conducted by the solicitors revealed both the KEP registrations and the lapsed application made by Mullins.  In September 1992 the applicant received a letter from Cullen & Co, Patent & Trade Mark attorneys, of Queensland, seeking a number of undertakings in relation to goods they were selling from their snooker centres.  By letter dated 21 October 1992, Phillips Fox, on behalf of their clients, responded to Cullen & Co undertaking not to sell computer systems [related to billiard games] in Queensland under the name of POT BLACK.  They also said, "As part of its business in Western Australia it [the applicant] chose to sell a computer system in Queensland under the name of 'Pot Black' but without reference to the logo that it uses in Western Australia." 

Nothing more, says Mr Side, has been heard from either Cullens or Keogh since their letter of demand in September 1992.  He further notes that, at that time, none of the goods sold by the applicant carried the trade mark POT BLACK.

The subsequent history of this application appears under the heading Background, above.

Section 44
For the sake of completeness, I note that the opponent's trade marks do conflict with that of the applicant in terms of section 44 of the Trade Marks Act 1995.  The section provides:

Identical etc. trade marks

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a) it is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.

Note 2:  For similar services see subsection 14(2).
Note 3:  For priority date see section 12.

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:  For limitations see section 6.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:  An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:  For predecessor in title see section 6.
Note 3:  For priority date see section 12.

Further, Section 33 of the Act states:

33.(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds for rejecting it.

Note:For the grounds on which an application may be rejected see Division 2.

(2) The Registrar may accept the application subject to conditions or limitations.

Note:For limitations see section 6.

(3) If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds for rejecting it;

the Registrar must reject the application.

In Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999), para 34, French J said of section 33:

The condition of refusal of an application is that the Registrar is satisfied that there are grounds for rejection. If not so satisfied the Registrar must accept the application. Unless the Registrar thinks that the proposed trade mark is likely to deceive or to cause confusion then all other things being equal, the application must be accepted.

And at para 45:

The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

As the trade marks of the applicant and opponent are identical, and as there is no doubt that the priority date of the registrations is earlier than that of the opposed application, the question remaining is whether the goods and services of the opponent are closely related to those services of the applicant.

In Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 48 ALR 511 it was held that earthmoving machinery was closely related to the services of the hire of that machinery. In Registrar Of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 the Full Bench of the Federal Court accepted that retail services are closely related to the goods in respect of which they are performed. As concerns whether certain 'games or sports goods and the retail services performed in relation to those goods', on the one hand and on the other hand 'sports hire or entertainment and competitions utilising those goods' are closely related, it is difficult to make sweeping generalisations. It is probably sufficient to view the service that the applicant performs as being akin to the hire of billiard and snooker equipment and hence analogous to the situation in Caterpillar, supra.  However, I think that the characteristics of the opponent's goods lead to a more straightforward answer to the question.

The applicant's the specification of services is:

The provision of pool and snooker centres and organising pool and snooker competitions.

The opponent's specifications of goods  and services are:

All goods in Class 28 including billiard equipment, snooker equipment, pool equipment, and equipment for related sports utilizing cues and accessories for all the aforementioned goods being goods included in Class 28

Retailing and wholesaling services of billiard equipment, snooker equipment, pool equipment and related sports utilizing cues and accessories therefor

The opponent's evidence shows that many of the pool, snooker or eight-ball tables that they make and/or sell have coin operated mechanisms so that users of the goods in pubs, hotels or clubs can hire them for the period of a game.  I think this is putting the goods into a market situation very similar to that of the services performed by the applicant in relation to its snooker centres and, hence, the services of the applicant are closely related to the goods of the opponent.  As it is sufficient to find that the goods encompassed by one of the registrations are closely related to the services nominated on the application, I will not consider whether the opponent's retail services are closely related to the services of the applicant. 

I am satisfied that there is a reasonable likelihood of deception or confusion between the goods of the opponent and the services of the applicant.

Honest Concurrent User
Section 44(3)
The comments of French J, noted from Woolworths, supra, concerning the principle that the Registrar (or his Delegate) should not reject an application unless satisfied that it will confuse, logically extends to the application of the 'honest concurrent user' provisions of the Act.  That is, I should not reject this application unless I am satisfied that the applicant has not made out a case of honest concurrent user.

I must state, at the outset of this part of my reasons, that my reasons have been shaped by the self-evident fact that the trade mark which the applicant has applied to register is not the trade mark that the applicant has been most frequently using.  I do not see any 'bad faith' connotations in the fact that the applicant has applied to register the plain words POT BLACK whilst it has almost invariably used the trade mark as it appears below:

 

The applicant has been very frank concerning the use of its trade mark and I do not see this issue as being any indication of bad faith.

I will first deal with the issues surrounding the applicant's use of the trade mark.

Section 7(1) of the Act allows:

7.(1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

It is plain by the permissive wording of this section that it confers a discretion upon the Registrar or prescribed court to consider the use of a trade mark having regard to all of the circumstances of a particular case.  I consider that I should apply this subsection because of the history of dealings (which I will elaborate on, below), between the prior owner of the conflicting trade mark and the applicant; and, in the public interest as a result of what I see as the likely public perceptions of the applicant's usage of its trade mark; and, in view of the notoriety of the plain words POT BLACK as a name of a television program featuring a cue game at the time of its adoption.  I am mindful of an informal survey conducted by Mr Mullins prior to the adoption of the trade mark - this survey demonstrated to him that the term POT BLACK was universally connected to cues games in the minds of the public via the television program of the same name.   This factor goes to the comparative 'strength' of the words POT BLACK, solus, that could have been prima facie distinctive as a trade mark in relation to the applicant's services at the time of the adoption of the trade mark.  It is apparent that the weaker, or less distinctive, a trade mark, the more any particular change will substantially alter its identity.

The expression 'substantially affect the identity of the trade mark' within subsection 7(1) is akin to that in section 44, supra, -'substantially identical'.  This is a concept that has been considered extensively in decisions of the Registrar and the Courts.

As cases such as Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 show, substantial identity between marks is to be judged by comparing the marks side by side, noting their similarities and differences and assessing these while having regard to the essential features of the registered mark (s) and the total impression of resemblance or dissimilarity that emerges from the comparison: per Windeyer J in Shell, supra.

Cases where substantial identity has been found include: Kendall Co v Mulsyn Paint & Chemicals  (1963) 109 CLR (POLYKIN and POLYKEN); Seven Up Company v O.T. Ltd (1947) 75 CLR 203 ('7UP in a circle' and '8UP in a square'); Pelican Trade Mark [1978] RPC 424 (PELICAN and PELIKAN); Pelikan International Handelsgesellschaft Mbh & Co Kg v Lifinia Pty Ltd (1994) 30 IPR 615 (PELICAN and PELIKAN); Shachihata Industrial Co Ltd v Magic Marker Corp (1984) 3 IPR 519 (LIQUID CRAYON and LIQUID CRAYONS); Re Applications By Stratco Metal Pty Ltd (1984) 4 IPR 48 (CLICKFAST and KLICK-FAST); Michael Sharwoood & Partners Pty Ltd And Others v Fuddruckers Inc (1989) 15 IPR 188 (FUDRUKKERS and FUDDRUCKERS); Re Application By Jacuzzi Inc (1990) 17 IPR 414 (AERO and AEROSPA - on spa equipment); Re Application By Fastrack Racing Pty Ltd (1994) 29 IPR 193 (FASTRACK and FAST TRACK); Sportscraft Consolidated Pty Ltd v General Sportcraft Co Ltd (1993) 27 IPR 74 (SPORTCRAFT and SPORTSCRAFT); Alexander v Tait-Jamison (1993) 28 IPR 103 (ECO-FARM and ECO-FARMS); Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (FUNSHIP and FUN SHIP); Warner-Lambert Co v Harel (1995) 32 IPR (DERMOFILM and DERMAFILM); and Bull SA v Micro Controls Ltd (1990) 19 IPR 299 (MICROL and MICRAL). In these decisions, the trade marks involved have been found to be 'substantially the same mark' to quote D.R. Shanahan in Australian Law of Trade Marks and Passing Off, or, as Justice Gummow referred to it, 'substantially identical' in Carnival Cruise Lines, supra.

To contrast the above decisions, the following trade marks have been found to be neither 'substantially the same mark' or 'substantially identical': “Otrivin” Trade Mark [1967] RPC 613, (OTRIVIN and OTRIVINE); Lonza Ltd v Kantfield Pty Ltd (T/A Martogg & Co) (1995) 33 IPR 396 (FORTEX and FOREX); Photo Disc Inc v Gibson And Another (1998) 42 IPR 473 ('PHOTO-DISK' - with descriptive phrase and arabesques and PHOTODISC), although in the latter decision, the Deputy Registrar observed that if the trade marks had been PHOTO-DISK and PHOTODISC, solus, she would have found that the trade marks were substantially identical.

Following the line of reasoning in the above-referenced cases, I must conclude that the logo version of the applicant's trade mark and the plain words POT BLACK are not substantially identical.  The device of the snooker balls, while prima facie lacking in inherent distinctiveness, is a major part of the trade mark and contributes in large part to the logo trade mark's overall distinctiveness, both in fact and in law.  The triangular device is not mere decorative trim to the trade mark.  It follows that I cannot decide that the applicant, through its use of the logo version of the trade mark, has thus used the words POT BLACK, solus, as a trade mark.  Therefore, when considering the use of the trade mark POT BLACK, as applied for, I must ignore the applicant's use of the logo version of the trade mark.

The use of the trade mark has, according to the evidence, been very slight and not enough to allow full consideration of all of the tests from Pirie's Case set out below.  There are other difficulties with the applicant's trade mark POT BLACK (words) which go very much to the equity issues which the parties see as having arisen between them.  For example, in the letter of 21 October 1992 which Phillips Fox wrote, on behalf of the applicant, to Cullens as agent of KEP, they said that [the applicant] had sold its computer systems [for billiards systems, I understand] in Queensland under the name POT BLACK "without reference to the logo that it uses in Western Australia."  This might be taken as meaning that they [the applicant] thought that there was no wider conflict between the trade marks as they used only the logo in Western Australia.  The statement might also have led KEP or its advisers to conclude that there were major differences in the trade marks as used in relation to the respective goods and services, and that this was sufficient to convince them to drop further pursuit of remedy in the issue.

When I brought my concerns regarding the use of the trade mark POT BLACK to counsel's attention, Mr McCormack, as well as arguing that the use of the logo was a use of the words, asked me for some indication of how the wider registration issue might be resolved for the applicant should I find against the applicant because of these concerns.  This I will attempt, within the constraints of these reasons.

In Alex Pirie & Sons Ltd’s Application (1933) 50 RPC 147 and John Fitton & Co Ltd’s Application (1949) 66 RPC 110 five factors are given to be considered in assessing whether parallel use of a trade mark has been 'honest concurrent use':

• the extent of the user in time and quantity;

• the degree of confusion likely to ensure from the resemblance of the marks —which is a measure of public inconvenience;

• the honesty of the concurrent use;

• whether any instances of confusion have in fact been proved;

• the relative inconvenience which would be caused if the mark were registered.

I will address these issues in the order that they are set out above.

The Extent
As I have indicated above, the applicant's use of the trade mark POT BLACK has been slight, in fact almost negligable.  The logo trade mark seems to have been adopted at the outset of the business and used continuously since.  The evidence would suggest that little money or effort has been expended on promoting or advertising the applicant's services by reference to the word trade mark, on its own.  It is very difficult to apportion a quantum of any advertising figures or reputation that may have come to the word trade mark through the sponsorship of competitions, or tournaments.  No such problem exists with the logo trade mark which appears to be widely known and recognised within Western Australia.

The degree of Confusion
The likelihood that the opponent's goods will be adapted for coin-operated play makes the degree of confusion between the two POT BLACK trade marks very high.  There would seem to be a very intimate notional connection between coin-operated snooker or pool tables and the service of what amounts to the rental of tables in a pool hall.  I think there is a natural assumption that the goods and services are in some way connected or have a common trade origin.  The fact that the trade mark POT BLACK, (when occasionally used divorced from the logo trade mark used by the applicant) usually has the words 'Family Pool & Snooker Centres' appended to it does make it easier to distinguish from the opponent's trade mark when in use, but these additional words are not present on the application.  One fact that I find curious, however, is that Mr Atwell, who made several declarations and an Affidavit on behalf of the opponent, has been involved in the industry for either twenty or thirty years (depending on which statement in the Affidavit or declaration is correct) and has been aware of both trade marks for at least eight years and makes no comment as to whether he was confused prior to his company (the opponent) becoming the owner of the trade marks.  Neither does he point to any specific instances of confusion he knows of.  This might, of course, be due to the fact that the trade mark of this application is not the one that the applicant almost invariably uses.

It is apparent that the logo version of the trade mark is quite well known in Western Australia and, because of the use, the risks of confusion between this and the opponent's trade mark are much lower.

The honesty/Bad Faith
There are a number of allegations of bad faith on the part of the applicant that have been made by the opponent.  I think that these allegations must be seen in the context of the fact that it is clear that the expression POT BLACK is one that both parties have apparently selected because it was made notorious in relation to cue games by the eponymous BBC television program shown throughout Australia on the ABC.  It is clear from the evidence that the words POT BLACK, used in relation to goods or services which involve cue games, are not unique.  There is evidence of other traders using these words as a trade mark both within and without Australia.  In the light of these comments, I should also add that it is apparent from the evidence that the words POT BLACK or the logo incorporating those words, are now distinctive in fact of the goods and services of the opponent and applicant respectively, whatever the circumstances surrounding their adoption.

It is apparent that the trade marks of the parties had been used for some seven years concurrently before they became aware of each other's existence.  When the previous owner of the trade marks remonstrated with the applicant over what it perceived as objectionable use of the trade mark, the applicant responded stating what it intended to do and has abided by that.  This may not have been what the complainer had requested, but KEP were put on notice of that and accordingly this is an issue that should have been settled then - not now.  I doubt my competence to decide that KEP acquiesced to the applicant's use of the logo trade mark: re Quinn; ex parte Consolidated Foods Corp (1977) 52 ALJR 117. However, KEP's belief in a right of action and its apparent inaction on being told by Philips Fox of their client's intentions do not appear to be contested.

Representatives of KEP or the opponent have, according to the evidence, purchased various items such as chalk from the applicant's premises.  This, they argue, is evidence of a lack of honesty on the applicant's behalf as it is a retail service under the trade mark POT BLACK.  I do not agree.  I think it is inherent in the concept of the type of cue centres run by the applicant that there will be some kind of retail of food, drink or accessories for the convenience of the public that go there.  It is fairly unrealistic to suppose otherwise. In its response to the letter from Cullens, detailed above, the applicant only guaranteed that it would not sell computer programs in Queensland - it did not promise that it would not sell anything from its own premises in Western Australia.  I understand, however, that the applicant, in response to the Federal Court proceedings brought about by the opponent, has now stopped any sale of cue game accessories from its premises.  Further, consistent with my finding that the applicant has been using the logo trade mark, not the words POT BLACK solus, the sales by the applicant were under the logo trade mark which it was using honestly in relation to the services it performed.  Use by the applicant of the logo trade mark started in ignorance of the opponent's trade mark and the sale of accessories presumably persisted for the seven years that the parties used their trade marks concurrently in ignorance of each other's existence.

I conclude that the applicant has been honest in the use of both the trade mark POT BLACK and the logo form of the trade mark.

Whether any instances of confusion have in fact been proved
There are no instances of confusion reported in the evidence.  However, I believe this is probably due to the applicant's usage of the logo form of the trade mark which is more readily distinguished from the opponent's trade mark.  The exposure of the trade mark as applied for does not appear to have been sufficient for any confusion to have taken place.

The relative inconvenience which would be caused if the mark were registered
I believe that the registration of the trade mark as applied for would be of greater inconvenience to the opponent than the registration of the trade mark that the applicant has actually had use of (the logo trade mark).  As I have earlier remarked, it is possible that the dealings between the parties have been coloured by the applicant's early statement that it was to confine its use of the words POT BLACK to that within its logo trade mark.

As far as the applicant is concerned, the balance of conveniences must weigh against the registration of the trade mark POT BLACK and towards the registration of the logo form of the trade mark.  It is here that the reputation of the applicant lies and it is this trade mark that has become distinctive of the applicant's services.  Looked at in this light, the applicant loses nothing if the plain words POT BLACK are not registered as its trade mark for, in reality, the use of the trade mark has been scant and its trade mark is something other than that on the application.

As far as the public interest is concerned, if the public does distinguish between the trade marks of the parties, it is likely to be on the basis that one of the trade marks (that of the opponent) is the plain words POT BLACK and the other (that of the applicant) is almost invariably the logo trade mark, or, if not, the words POT BLACK (which are very occasionally used alone) invariably have the explanation 'Family Pool & Snooker Centres' along with them.  It follows that it is in the public interest that the registration of any trade mark reflects the reality of how the trade mark is used as accurately as is possible.

Decision.
I am satisfied that the applicant has not made out a case of the honest concurrent user of the trade mark POT BLACK for its services, and in these circumstances, I find that the opponent has been successful under section 58 of the Trade Marks Act 1995 as the trade mark nominated on the application does not meet the requirements of section 44 of the Act.

Other
For the reasons stated above, I think that it is also obvious that the applicant has used the logo form of the trade mark honestly and concurrently, both with and without the additional words 'Family Pool & Snooker Centres' along with it.  Should the applicant apply for registration of the logo form of the trade mark for the services currently nominated on this application, the application should be accepted for registration on the basis of the evidence lodged in connection with this application.  The terms and conditions of the acceptance should be identical to those of this application.  I also consider the logo form of the trade mark should constitute a series in terms of section 51 of the Act on the basis of the presence or absence of the words 'Family Pool & Snooker Centres' and, further, that the logo form of the trade mark has been used honestly and concurrently in both these forms.

Costs
The opponent having been successful is entitled to its costs should it so wish to claim and I award costs against the applicant.

Ian Thompson
Hearing Officer

29 February 2000