Angela Christou v Tonch Pty Ltd

Link copied
Case Copied 21 min read

TRADE MARKS ACT 1995



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

Re:Opposition by Ms ANGELA CHRISTOU to registration of trade mark application 1018113 (21;31;35;44) — Wagging Tails — filed in the name of TONCH PTY LTD.

Delegate: Nick Conway
Representation: Opponent: Quang Nguyen instructed by Batallion Legal
Applicant: Tom Cordiner instructed by Robert James Lawyers
Decision: 2008 ATMO 24
s.52 Opposition: Ground of opposition under section 58 not established. Opposition dismissed
Costs awarded against opponent

Background

  1. Tonch Pty Ltd (“the applicant”) applied to register trade mark 1018113. The relevant details of this trade mark (“the applicant’s trade mark”) are as follows:

Trade Mark No: 1018113
Trade Mark: Wagging Tails
Applicant: Tonch Pty Ltd
Priority Date: 01 September 2004
Class 21: Pet grooming products and pet accessories
Class 31: Pet and aquarium products including pet food
Class 35: Retail sale of pets, pet supplies, pet products, pet accessories and food for animals
Class 44: Veterinary and advisory services in connection with pets and animals

  1. The application was accepted for possible registration, and advertised in the Australian Official Journal of Trade Marks on 3 February 2005. Following advertisement, Ms Angela Christou (“the opponent”) filed a Notice of Opposition. The Notice of Opposition cited all grounds of opposition available under the Trade Marks Act 1995 (Cth) (“the Trade Marks Act”).

  2. Both the opponent and the applicant filed evidence in relation to the opposition. The evidence filed consists of:

    Evidence in Support

    ØStatutory declaration of Michael Duong with Annexures A–V (“the first Duong declaration”) made 30 September 2005.

    Evidence in Answer

    ØStatutory Declaration of Christopher Peter Verebes with Exhibits 1–46 (“Verebes declaration”) made 21 December 2005.

    Evidence in Reply

    ØStatutory Declaration of Michael Duong with Annexures 12.1–12.11 (“the second Duong declaration”) made 20 April 2006.

  3. Each party filed written submissions prior to the hearing. I heard the matter as a delegate of the Registrar of Trade Marks in Canberra on 30 January 2008. The applicant was represented by Mr Tom Cordiner of Counsel, instructed by Robert James Lawyers, and the opponent was represented by Mr Quang Nguyen of Counsel, instructed by Batallion Legal.

  4. The bulk of the evidence and weight of the parties’ submissions concerned the ground of opposition under section 58 of the Trade Marks Act. At the hearing Mr Nguyen conceded that the only applicable ground of opposition was that under section 58. As such I will confine my reasons to the application of that ground of opposition. For completeness, I find that none of the other grounds cited in the Notice of Opposition have been established.

    Evidence

  5. The first Duong declaration concerns the opponent’s adoption of three trade marks — WAGGING TAILS; WAGGING TAILS DAY CARE; and WAGGING TAILS PROFESSIONAL STYLISTS. The evidence contained within the first Duong declaration provides a history the opponent’s usage of the above trade marks. This evidence is therefore relevant to the section 58 ground of opposition.

  6. The applicant’s evidence in answer contained a history of the applicant’s use…

CaseChat AU logo

Keep reading for free

Create a free CaseChat account to read Angela Christou v Tonch Pty Ltd and more:

  • Read every judgment in full
  • Ask AI and get answers linked to paragraphs
  • See how each paragraph was cited in later cases
  • Download judgments as PDF or Word
Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details
Case
[2008] ATMO 24
Decision Date

CaseChat Overview and Summary

This matter concerned an opposition by Angela Christou (the opponent) to the registration of the trade mark WAGGING TAILS by Tonch Pty Ltd (the applicant) under application number 1018113. The dispute primarily revolved around the ground of opposition under section 58 of the *Trade Marks Act 1995* (Cth), which relates to the applicant not being the owner of the trade mark. The hearing officer, Nick Conway, confined his reasons to this ground, finding that no other grounds of opposition had been established.

The central legal issue before the hearing officer was whether the applicant was the owner of the trade mark WAGGING TAILS, as contemplated by section 58 of the *Trade Marks Act*. This required an assessment of whether the opponent had established prior use of the trade mark in Australia sufficient to demonstrate ownership. A preliminary issue concerning the admissibility of the second Duong declaration was also addressed, with the hearing officer finding it was validly served as evidence in reply.

In determining the section 58 ground, the hearing officer referred to established principles regarding the "use" of a trade mark for the purpose of establishing prior ownership. Drawing on *Moorgate Tobacco Co. Ltd. v Philip Morris Ltd. [No. 2]* and *Malibu Boats West Inc v Catanese*, the hearing officer noted that use must be in relation to goods to indicate a connection in the course of trade. While actual trade is not always required, evidence of an offer to trade or an existing intention to offer goods bearing the mark can suffice. However, the evidence presented by the opponent, primarily contained in the Duong declarations, was found to be largely unhelpful in establishing prior use, with much of it post-dating the applicant's priority date.

Ultimately, the hearing officer concluded that the opponent had not established any ground of opposition. Accordingly, trade mark application number 1018113 was permitted to proceed to registration one month from the date of the decision, subject to any appeal. The opponent was ordered to pay the applicant's costs.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

The bulk of the evidence and weight of the parties’ submissions concerned the ground of opposition under section 58 of the Trade Marks Act. At the hearing Mr Nguyen conceded that the only applicable ground of opposition was that under section 58. As such I will confine my reasons to the application of that ground of opposition. For completeness, I find that none of the other grounds cited in the Notice of Opposition have been established.Evidence The first Duong declaration concerns the opponent’s adoption of three trade marks — WAGGING TAILS; WAGGING TAILS DAY CARE; and WAGGING TAILS PROFESSIONAL STYLISTS. The evidence contained within the first Duong declaration provides a history the opponent’s usage of the above trade marks. This evidence is therefore relevant to the section 58 ground of opposition. The applicant’s evidence in answer contained a history of the applicant’s use of its trade mark prior to the filing date of its trade mark application. The Verebes declaration also addressed the grounds of opposition furthered by the first Duong declaration, noting that many of the documents annexed to the first Duong declaration post-dated the filing date of the applicant’s trade mark. The second Duong declaration solely concerns the ground of opposition under section 58 of the Trade Marks Act, providing additional evidence of the opponent’s trade mark use. At the hearing, Mr Cordiner raised a threshold question concerning the admissibility of the second Duong declaration. The opponent originally sought permission to submit the second Duong declaration as further evidence in the opposition proceeding. Mr Cordiner submitted that no formal application for an extension of time had been sought by the opponent, and as such the opponent should not be entitled to rely on the second Duong declaration. A review of the case file reveals that the opponent was advised by this office that the evidence contained in the second Duong declaration qualified as evidence in reply in the opposition proceeding. The applicant’s solicitors were informed of this decision by a letter from this office dated 1 June 2006, and acknowledged receipt of the evidence in reply by letter dated 18 July 2006. The due date for service of evidence in reply was 25 April 2006. The second Duong declaration was served upon the applicant on 24 April 2006. The applicant did not, at the time, object to the opponent relying on this declaration. The objection to the second Duong declaration was not raised until receipt of the applicant’s written submissions. In light of these circumstances, I am satisfied that the opponent is entitled to rely upon the second Duong declaration as validly served evidence in reply in relation to this opposition. Reasons The only ground of opposition relevant to this proceeding is that under section 58 of the Trade Marks Act. Section 58 provides:58 Applicant not owner of trade markThe registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Decision

Reasons for decision

Section 55 of the Trade Marks Act provides:55 DecisionUnless 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 opponent has not established any ground of opposition with respect to trade mark application 1018113 WAGGING TAILS. Trade mark application number 1018113 may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration shall not occur until either the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to that order.Costs Both parties sought their costs in relation to this opposition. The applicant, having been successful in relation to this opposition, is entitled to its costs, which I award against the opponent. Nick ConwayHearing OfficerTrade Marks Hearings31 March 2008

Ratio Decidendi

Legal Principle Established

The evidence which is in some manner relevant to establishing prior trade mark use is summarised in the following tables:First Duong declaration: The remaining evidence contained in both Duong declarations either post-dates the priority date of the applicant’s trade mark, or is otherwise unhelpful in establishing trade mark use. Mr Nguyen drew my attention to a lengthy body of case law which establishes the principles relevant to determining whether there has been ‘use’ of a trade mark sufficient to establish prior use. A useful starting point is the following extract from the judgment of Deane J in Moorgate Tobacco Co. Ltd. v Philip Morris Ltd. [No. 2]:The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of “proprietor” of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person … The requisite use of the mark need not be sufficient to establish a local reputation and there is authority to support the proposition that evidence of but slight use in Australia will suffice to protect a person who is the owner and user overseas of a mark which another is seeking to appropriate by registration under the Trade Marks Act [1955].[8]His Honour continued this discussion, stating:The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark … or that the mark has been used in an advertisement of the goods in the course of trade … In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade.[9] [Emphasis added][8] Moorgate Tobacco Co. Ltd. v Philip Morris Ltd. [No. 2] (1984) 156 CLR 414, 432 (Deane J).[9] Moorgate Tobacco Co. Ltd. v Philip Morris Ltd. [No. 2] (1984) 156 CLR 414, 433–434 (Deane J). This second extract has been the subject of much additional judicial consideration. In Malibu Boats West Inc v Catanese Finkelstein J noted the following as regards prior use of a trade mark:[t]he use must be in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods with respect to which the mark is used and that person … While the mark must be used for the purpose of indicating a connection in the course of trade, this does not mean that any actual trade or dealing in the goods is required. It is sufficient if there is an offer to trade in the goods, or an existing intention to offer or supply goods bearing the trademark.[10][10] Malibu Boats West Inc v Catanese (2000) 51 IPR 134, 143 (Finkelstein J).