Apple Computer Inc v Todaytech Group Ltd
[2007] ATMO 80
•18 December 2007
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Association of Civil Marriage Celebrants of Queensland Inc to registration of trade mark application 1042090(35) - ACMCQ + device - filed in the name of Warren Lyndon Bergh.
Delegate: | Alison Windsor |
Representation: | Opponent: Delmar Broadbent, President of opponent company Applicant: Joseph Ashcroft of counsel instructed by Graham & Associates, solicitors |
Decision: | 2007 ATMO 80 S52 opposition: Ground under section 59 established – no intention to use the trade mark; matter of copyright peripheral to the opposition; opposition successful. |
Background
Warren Lyndon Bergh (“the applicant”) filed an application to register a trade mark, current details of which appear below:
Application number: 1042090
Filing date: 15 February 2005
Service specification: Class 35: Advertising; business management; business administration; office functions
Trade mark: (“the logo”)
The application was examined in the normal course of events, and advertised as accepted for possible registration on 16 June 2005. On 29 August 2005, the Association of Civil Marriage Celebrants of Queensland Incorporated (“the opponent”) filed a Notice of Opposition (“the notice”) under the provisions of section 52 of the Trade Marks Act 1995 (“the Act”). The parties filed their evidence in support, in answer and in reply, the service being complete by 8 September 2006.
The matter finally came before me, as a delegate of the Registrar, in Brisbane on 26 July 2007. Delmar Broadbent, president of the opponent, appeared on its behalf. The applicant was represented by Joseph Ashcroft of Counsel, instructed by Graham & Associates, solicitors.
Onus
The notice nominated grounds of opposition under the following sections of the Act: 43, 44 (specifically nominating registration 1042652), 58, 59 and 60. In an opposition, the onus is on the opponent to establish at least one of the grounds of opposition pursued before it can claim success.
Evidence and Submissions
The evidence filed in respect of this opposition is shown in the following table:
| Declarant | Exhibits | Date |
| Evidence in Support | ||
| Delmar Anne Broadbent | Annex A | 19 November 2005 |
| Wendy Townrow | One attachment | 22 September 2005 |
| Colleen Forrester | Eleven attachments | 25 November 2005 |
| Evidence in Answer | ||
| Brian Armstrong | BA–001 | 4 May 2006 |
| Ashley Bergh | AB–001 | 3 May 2006 |
| Warren Lyndon Bergh | WB–001 – WB-008 | 6 May 2006 |
| Amanda de Fina | AM-001 – AM-002 | 3 May 2006 |
| Ruby Leticia Morelle | RM-001 – RM-002 | 3 May 2006 |
| Evidence in reply | ||
| Delmar Anne Broadbent | Annexure A | 7 September 2006 |
| Raylene Patricia Burns | Nil | September 2006 |
| Dorothy Purvis Smith | Nil | 7 September 2006 |
General comments on the evidence
The evidence provided by both parties to this opposition leaves much to be desired. The greatest proportion of the evidence from both sides consists of unsubstantiated assertion as well as personal opinion about the motives of various persons, and there is very little supporting material provided by either side.
The opponent’s evidence in support does provide some hard evidence of use of the logo by means of the exhibits to the Forrester declaration. However, the Broadbent and Townrow declarations do not provide any substantiating evidence at all. The date of adoption of the trade mark in these two declarations is also at odds with other references to the date mentioned throughout the remainder of the evidence received from both parties. And indeed Ms Broadbent in her evidence in reply, provides a date of first adoption of the trade mark by the opponent which is at odds with the date she first declared in her evidence in support.
The applicant’s evidence in answer consists of five statutory declarations. The wording of these declarations, except for that made by the applicant himself, is almost identical. While the applicant’s declaration contains some additional material, a number of paragraphs within it are remarkably similar to paragraphs incorporated in the other four. In addition, the exhibits to the four similarly worded declarations consist of copies of the same set of minutes from a particular meeting, with additional minutes from the subsequent meeting added to the de Fina and Morelle declarations, but no other new information.
Ms Broadbent’s evidence in reply also mentions that she has been unable to find any record of the minutes of the meeting provided with the applicant’s evidence, and expresses doubt that the meeting took place.
What all this means is that I consider a great proportion of this evidence must be given somewhat less weight than I otherwise might have allowed it. I do not intend to place any reliance at all on any of the personal opinions which appear in the various declarations. However, those matters which are clearly supported by hard evidence will be given full weight. Rather than fully document the evidence and submissions in detail at this stage, I will refer to them where relevant during my discussions later in this decision.
Discussion and reasons
This opposition is a dispute between the two parties over who owns the logo which is the subject of this trade mark application. The applicant claims to own copyright in the logo by virtue of having created it. The opponent claims to have rights by virtue of use over a number of years, and has registered a trade mark consisting of the logo[1]. There is obviously ill-feeling between the parties in this case, resulting in the provision of much personal opinion rather than hard evidence.
[1] Registration 1042652 for services in class 45, namely “Personal and social services assistance to registered marriage celebrants in Queensland on a voluntary basis”.
As mentioned previously in paragraph 4, the onus in an opposition is on the opponent to establish any grounds of opposition. The opponent’s submissions at the hearing were both brief and not specific to the grounds. The applicant’s submissions were similarly not always on point. I consider the appropriate way to discuss the matter is via a consideration of each ground of opposition mentioned on the notice, and in the order in which they appear on that document. I shall discuss the matter of the copyright in the logo, which is peripheral to this opposition action, following my discussion of the grounds of opposition.
Section 58 – Applicant not owner of trade mark
This section of the legislation provides as follows:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
In Computer Business Works Inc v Dylan Mark Johnston [2005] ATMO 14, Hearing Officer Jock McDonough observed:
In order to establish this ground, it is incumbent upon an opponent to show that, in the time before filing, the applicant is not the first user in trade in Australia of the applied-for trade mark. To do so, the opponent must show, at a minimum, that not only is the applied-for trade mark substantially identical to the older trade mark, but that it is applied to the same kind of goods: Re Hicks' Trade Mark (1897) 22 VLR 636 at 640.
The opponent is using and has registered, albeit at a later priority date, the identical trade mark to that of the application. It has provided, as exhibits attached to the Forrester declaration, examples of correspondence issued on stationery bearing the trade mark and with dates from as early as June 1999. The earliest examples are from well before the applicant’s filing date, 15 February 2005, suggesting the opponent has a claim to first use.
However, section 58 can only be applied in the opponent’s favour if its services are “the same kind of thing” as those of the applicant. The applicant has applied for “Advertising; business management; business administration; office functions” in class 35. This list of services forms what is known as the “class heading” for class 35 in the Nice Classification. The services the list is designed to cover is explained in the explanatory notes to the class, shown below:
Class 35 includes mainly services rendered by persons or organizations principally with the object of:
(1) help in the working or management of a commercial undertaking, or
(2) help in the management of the business affairs or commercial functions of an industrial or commercial enterprise.
as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services.
These services do not appear to have any particular similarity to “Personal and social services assistance to registered marriage celebrants in Queensland on a voluntary basis” as claimed by the opponent, and which are the services offered by the opponent, as far as I can ascertain from the little evidence available to me. Despite its earlier use of the trade mark in respect of its association’s activities, the opponent cannot succeed in this ground because its services and those of the applicant are not the same.
Section 59 – Applicant not intending to use trade mark
This section of the legislation provides:
The Registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorize 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.
In order to establish a ground of opposition under this section of the Act, the opponent has the difficult task of substantiating a negative. However, once they have called the applicant's intentions into question, it is up to the applicant to provide information in rebuttal.
It is accepted that the making of a trade mark application is prima facie indication of an intention to use. According to section 27 of the Act, the requirements for a person to apply for a trade mark are that the person claims to be the owner of the trade mark, and there is either use already taking place, or an intention to use in the future, by the person himself or by another person under authorisation.
The opponent, in its submissions at the hearing, questioned whether the applicant had any intention of using the logo, given that his business is in the field of clinical psychology, and the acronym within the logo is the initials of the opponent organization.
The applicant considers that he owns the trade mark because he is the person who has rights under copyright as the creator of the letter/device combination. He submitted at the hearing that he has a proposed use for the trade mark, and cited in support of that proposed use, Exhibit WB-007 attached to his statutory declaration. He refers specifically to this exhibit at paragraph 11 which states:
I intend to use the logo for my business and had applied for trademark registration with IP Australia on or about the 15th February 2005 with the application number 1042090. My intended use of my logo is evidence [sic] in my “Business Plan” for the year 2006. A true copy of the business plan for 2006 is attached here marked “WB-007”.
However, the copy of the business plan on file does not show the trade mark subject of the application. The applicant’s business cards and stationery appended to the plan clearly show the heart device portion of the trade mark with a blank centre. There is nothing in the document showing the heart and letter combination as applied for. In addition, the business plan is for a business as a child psychologist – not for any of the business support services claimed in the application.
It is necessary to note here that section 59 is written in the present tense, thus referring to a continuing intention to use the trade mark, with the relevant date of that intention being the date the opposition was mounted. This was set out in Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft [2002] ATMO 51 (20 June 2002) where Hearing Officer Mr Williams said:
This ground is also one where an applicant's intention to use is relevant. However, it is a ground written in the present tense and looks at the present state of the intention of the applicant.
… Thus, section 59 deals with current defects in intention to use, interlocking with section 58, under which the intention and facts at the time of filing are the relevant elements.
On the evidence before me, I am unable to find that the applicant had, at the time the opposition was filed, any intention to use the trade mark he has applied for, that is, the heart device incorporating the letters ACMCQ, for the business services he is claiming or indeed, for those for which he drew up his business plan. This ground of opposition has thus been established.
Section 60 – trade mark similar to trade mark with a reputation in Australia
Section 60 provides the following:
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.
The trade marks here are identical, so the consideration must be given to whether the opponent’s trade mark is sufficiently well known that use by the applicant of his trade mark would result in deception and confusion. The opponent, however, has made no attempt to provide any information at all which would allow me to infer even a slight reputation. There is nothing before me on which I can base an assessment of the size of the opponent’s organisation, or its exposure in the marketplace. The opponent has not established this ground of opposition.
Section 43 – trade mark likely to deceive or cause confusion
Section 43 reads as follows:
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.
It is now well established law that the connotation, or secondary meaning, envisaged in this section must exist within the trade mark under consideration and not by comparison with another trade mark (Big Country Developments Pty Limited v TGI Friday's Inc and another (2000) 48 IPR 513 at 521 and Winton Shire Council and another v Lomas, 56 IPR 72, at 77).
In Pfizer Products Inc v Karam, (2006) 70 IPR 599, Gyles J said:
`Connotation' is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks (TGI Friday's Australia Pty Ltd v TGI Friday's Inc (2000) 100 FCR 358 at [43]; McCorquodale v Masterson [2004] FCA 1247; (2004) 63 IPR 582; at [25] [26]).
The previous quotation is quite specific – the matter of deception and confusion as relevant to section 43 is not based on a comparison with another trade mark. Had the opponent provided evidence which attested to its association having a strong reputation, even within a single state of Australia, it may have been possible to say that the letters formed a connotation within the mark as envisaged by section 43. However, without any indication that the letters are particularly well known, I do not find any connotation within the mark which would be relevant to the ground under this section. This ground is thus not established.
Section 44 – identical etc trade marks
The opponent here has referred to its own trade mark registration as relevant to a ground under section 44. However, registration 1042652 was filed on 24 February 2005, some days later than the applicant’s trade mark. To be relevant under the provisions of section 44, the quoted trade mark must have an earlier date than that of the application. This is clearly not the case here, so the ground under section 44 cannot be established.
Copyright claim
The applicant asserts that he is the owner, by virtue of having created it, of the logo under dispute and claims his rights are being infringed. This matter is peripheral to this particular opposition, but I consider it appropriate to mention it for completeness, as the applicant did put considerable weight on it in its submissions at the hearing.
Attached as exhibit WB-001 to the applicant’s declaration are three pages of logo designs consisting of various variations of heart shapes and the letters ACMCQ. Clearly typed on the bottom of each page is the following: ©Warren Bergh 27th February 1999. These pages are, according to the applicant, a true copy of the original designs he created, at the request of his father, Mr Ashley Bergh, who was secretary of the opponent association at the time.
The applicant states in his declaration that the management committee of the opponent association passed a resolution to adopt one of his designs as its temporary logo, at a meeting held on 31st May 1999. The minutes of this meeting form Exhibit WB-002 to the applicant’s declaration. The relevant paragraph reads as follows:
A. Bergh presented a range of designs created by Warren Bergh to be considered for use as the association logo. The members of the committee agreed that a heart shaped logo with the letters ACMCQ in the centre would be acceptable as the new logo.
Moved B. Armstrong Seconded P. Gentle that a letter be sent to Warren Bergh for the selection of the designs. And to thank him for the new logo.
There is no mention in the minutes of the minutes of any agreement to use the logo on a temporary basis. However, four of the five declarations provided as evidence in answer include the following words:
A stylized heart shaped logo with the letters ACMCQ enclosed was chosen by the Management Committee and a resolution was passed to adopt the logo for temporary use.
It is thus not at all clear just what agreement, if any, was made about use of the logo at the time it was chosen by the opponent association. If an agreement for temporary use was made, it was not captured in the minutes. Whatever was said, there appears to have been an implied licence for the opponent to use the logo, and there is nothing in the evidence which can clarify the matter. The evidence in support demonstrates that the logo was continuously used by the opponent for a period of several years, and certainly with the knowledge of Mr Bergh Senior who was either president or some other office holder within the organization over much of that time.
Ms Broadbent, as secretary of the opponent in 2004, obviously considered there was a need to ensure the ownership of the logo was clarified and in November 2004 wrote to the applicant seeking his confirmation that rights in the logo were officially those of the opponent. The applicant refused to assign the rights, suggested a price for selling the rights, and when no response to this invoice was received, asserted his copyright and began to take legal action. In February 2005, both parties filed applications for trade marks, both parties thereby claiming ownership of the logo.
From the evidence I have, two things appear. Firstly, while the examples of logos provided by the applicant are not substantiated by other evidence, it appears that the applicant, on the balance of probabilities, does own the copyright in the logo subject of this trade mark and also in the one registered by the opponent. Secondly, it appears that Ms Broadbent, who was secretary of the opponent at the time, was aware towards the end of 2004 there was some question about ownership of the logo.
At the hearing, the applicant’s representative advised he had submissions to make in respect of the opponent’s registration which he regarded as being invalidly registered. I advised him that those submissions were irrelevant to the opposition, and that the matter of wrongful registration and any claimed infringement of copyright should be dealt with in a forum other than the hearing. I reiterate those comments here – if the applicant wishes to follow these matters further, there are provisions in the respective legislations for this to be done. The status of the opponent’s registration is not the matter under consideration here.
Decision
The matter I have considered here is the opposition to registration of the applicant’s trade mark. An opposition may succeed if the opponent establishes a single ground. I am satisfied that the opponent has established the ground of opposition under section 59. Therefore, I refuse to register trade mark application 1042090.
Alison Windsor
Hearing Officer
Trade Marks and Designs Hearings
18 December 2007
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