Andrew John Ruwald v Owen Piccinotti

[2001] ATMO 95

TRADE MARKS ACT 1995

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

Re:      Opposition by ANDREW JOHN RUWALD to registration of trade mark application 769051(32,33) - SEJUICED - filed in the name of OWEN PICCINOTTI.

Background

Trade mark application number 769051 is an application to register the word SeJuiced in class 32 for Mineral and aerated waters and other non-alcoholic drinks and fruit juices; syrups and other preparations for making beverages, and class 33 for Alcoholic beverages (except beers). The application was filed on 3 August 1998 ("the relevant date") by Owen Piccinotti of 32 Edrington Park Drive, Berwick, Victoria ("the applicant"). 754587 was duly examined and, on 11 May 2000, the Registrar advertised, in the Australian Official Journal of Trade Marks, that he accepted this trade mark for registration.

On 10 August 2000, in accordance with Part 5 of the Trade Marks Act 1995 ("the Act"), Andrew John Ruwald ("the opponent") filed opposition to the registration of 769051 and, in its notice of opposition, nominated four grounds, relying on ss.43, 58, 59, and 60 of the Act.

The opponent served on the applicant, and filed with the Trade Marks Office, a statutory declaration by Andrew John Ruwald. This constitutes the evidence in support of the opposition.

No evidence in answer has been filed with the Trade marks Office.

Neither party has requested to be heard in this matter. Accordingly, the matter has come to me as a delegate of the Registrar of Trade Marks to decide on the material held on the file.

The Evidence

The evidence in support of the opposition is a statutory declaration by Andrew John Ruwald dated 8 December 2000. The declaration demonstrates the following:

• In December 1994, the opponent devised the name "Sejuiced" for a proposed juice bar/cafe.

• In January 1995, the opponent approached a friend, Scott Walker" to devise a logo to be used for the opponent's business. This logo became the subject of the opponent's trade mark in application 845720.

• On 27 January 1995, the business name "Sejuiced" was registered in NSW in the name of the opponent.

• The opponent operated the "Sejuiced Cafe" in Bronte NSW from February 1995 until August 1997; during this time the "Sejuiced Cafe" established a substantial reputation as a cafe, in particular for its breakfasts, in the Sydney area.

• In July 1997, the opponent changed the name of the business at Bronte to "Sejuiced at Bronte" and sold it, along with its goodwill, to David Lucas Hospitality Pty Ltd.

• The opponent retains ownership of the business name "Sejuiced".

• From January 1997 to May 1998, the opponent operated the "Sejuiced Juice Bar" at 1 Notts Avenue, Bondi Beach in premises owned by the Bondi Icebergs swimming club. There are no details as to the nature of this venture, or of its reputation.

• On 16 July 1997, the business name "Sejuiced at Bondi" was registered in NSW in the name of the opponent.

• 
  On 10 August 2000, under trade mark application number 845720 (which I will refer to as the Orange Slice mark), the opponent applied to register the device

in class 32, in respect of goods described as:

Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages

and in class 42, in respect of services described as

Providing of food and drink.

• Since January 2000, the opponent has been granted a licence to operate a mobile cart on Bondi beach, vending fresh fruit and fruit juice.

• Since January 2000, the opponent has operated the mobile cart mentioned above, the cart displaying the Orange Slice mark.

Considerations and Findings

Onus

Section 55 of the Act provides:

Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

The onus in an opposition proceeding is therefore on the opponent to establish at least one of the grounds of opposition it specified in its notice of opposition. This is consistent with the presumption of registrability under s 33, which applies at the examination stage. There is no onus on an applicant to show that its trade mark should proceed to registration unless and until a prima facie ground of opposition is to some extent at least made out.

The Section 43 Ground

Section 43 of the Act states:

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

Section 43, when used in opposition to registration, requires an opponent to show that:

(i)        there is a connotation in the proposed mark, or one of its parts; and

(ii)because of this, the trade mark is likely, when in use, to deceive or cause confusion.

TGI Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 confirms that the connotation must be in the applicant's trade mark itself. The connotation cannot be determined as a result of external considerations, such as reputation or use.

Nothing that has been put before me in this opposition indicates that there is any connotation arising from the word SeJuiced that would lead to deception or confusion when this trade mark is applied to beverages. I therefore dismiss this ground of opposition.

The Section 58 Ground

Section 58 of the Act states:

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Ownership of a trade mark may be established by showing who had first use in Australia of the same trade mark, or of a substantially identical trade mark, in respect of "the same kind of thing", before the priority date of the application: Re Hicks' Trade Mark (1897) 22 VLR 636; Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 at 391.

The opponent here relies on its trade mark 845720 (the Orange Slice mark), the use of its business name and the operation of its restaurant. There is no evidence of any use of the Orange Slice mark prior to its filing date of 10 August 2000. This of course, is after 3 August 1998, the date on which the subject mark, SeJuiced, was filed. The Orange Slice mark cannot, therefore, establish the opponent's superior right to the Trade mark SeJuiced. Use of a business name, or publication of the name of a restaurant is not trade mark use and the evidence does not demonstrate that at any time the business name or the name of the restaurant was taken up or used as a trade mark. There being no evidence of any use by the opponent of any trade mark prior to 10 August 2000, there is nothing to upset the applicant's claim in the subject trade mark.

In coming to this conclusion, I have not disregarded the evidence per the Ruwald declaration at clause 10, which shows that as early as 1997, the opponent was in the process of displaying the Orange Slice mark in its application to the Waverley City Council. This, however, was not an offer for sale. It was mere preparation for some later business development and, as confirmed in the judgment of Drummond J in Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, these preliminary activities cannot be considered as use of a trade mark in the course of trade.

I find that this ground of opposition has not been established. I therefore dismiss this ground.

The Section 59 Ground

Section 59 of the Act provides:

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

The opponent has not provided any evidence that supports this ground. I find that this ground is not made out and is therefore dismissed.

The Section 60 Ground

Section 60 of the Act provides:

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.

Accordingly, to satisfy section 60, the opponent has the burden of establishing the following elements:

1. a pre-existing trade mark;

2. substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

3. the acquisition of a reputation in Australia by the pre-existing trade mark; and

4. a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

The priority date for the applicant's mark is 3 August 1998. The opponent has not established a pre-existing trade mark. There is no evidence of relevant trade mark use before that date. See my findings on trade mark use under the s58 ground, above.

I find that the opponent has not established this ground of opposition. I therefore dismiss this ground.

Decision

The opponent has not established any of its grounds of opposition. I therefore direct that, subject to payment of the required fees and the expiry of any appeal period, the application proceed to registration.

Costs

I make no order as to costs.

Jock McDonagh
Hearing Officer

8 October 2001