Associated Retailers Ltd v Red/Green A/S - [1997] ATMO 51

Trade marks act 1955

decision of a delegate of the registrar of trade marks with reasons

Opposition by red/green a/s to Applications Nos 587674 and 587675 in the Name of Associated Retailers ltd

Two applications for registration of the trade mark depicted below were lodged on 2 October 1992 on behalf of Associated Retailers Ltd (“the applicant”) of Richmond, Victoria, one claiming all goods in Class 25, mainly articles of clothing, and the other retail services in Class 42 in relation to the sale of clothing. They were assigned the numbers 587674 and 587675 respectively.

Although the Trade Marks Act 1995 commenced on 1 January 1996, as provided in the transitional provisions of Part 22 of that Act the provisions of the repealed Trade Marks Act 1955 continue to govern this opposition. Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

The trade mark was advertised as accepted on 20 January 1994 and on 20 April 1994 notice of opposition to registration was given, in accordance with s49 of the Act, by Red/Green A/S, a Danish company (“the opponent”).

Evidence was filed by both parties in accordance with the regulations and that proceeding was completed on 26 March 1997. A hearing of the matter was then set down for 18 July 1997 in Canberra. Mr Ben Fitzpatrick of Davies Collison Cave made submissions by telephone. The opponent was not represented at the hearing.

Background

The opponent’s evidence, as set out initially in a declaration of Mogens Frederiksen, managing director of the opponent company, made 3 March 1995, is that the opponent or its predecessors has trade mark registrations in a large number of countries for goods and services related to clothing and the retailing of clothing. Those marks include the words RED//GREEN, the device of a square with a diagonal line having a different shading, colouring or hatching located each side of the diagonal line, and a combination of the two former marks with variations in the size of the words relative to the device. Exhibited to the declaration is a list of countries in which the marks are registered, or in which registration has been applied for, including applications nos 627812, 627813, 627814 and 627 815 lodged in Australia on 20 April 1994. Also exhibited are copies of the relevant registration certificates and applications.

The word mark RED//GREEN was first used in Denmark in 1981 and had been in use in the United Kingdom market since about 1990. Since about 1985 goods bearing the trade marks had been shown at trade fairs in various countries of Europe. The opponent had, as at the date of the declaration, some 36 specialist or “concept” shops in various parts of the world including England, Japan, Germany, Denmark, Sweden, Norway and Greece. Exhibited to the declaration are samples of advertising material from various media, including the magazine SCANORAMA which is the official journal of the Scandinavian Airline System (SAS).

The opponent…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1997] ATMO 51
Decision Date: 25 September 1997

CaseChat Overview and Summary

This decision concerns an opposition by Red/Green A/S, a Danish company, to two Australian trade mark applications lodged by Associated Retailers Ltd. The applications, numbered 587674 and 587675, were for the registration of a trade mark for clothing goods in Class 25 and retail services in Class 42, respectively. Although the *Trade Marks Act 1995* had commenced, the opposition was governed by the provisions of the repealed *Trade Marks Act 1955* due to transitional arrangements. The opposition was heard by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the applicant was the proprietor of the trade mark, whether the applicant intended to use the mark for all the specified goods and services, and whether the use of the mark by the applicant would lead to confusion or deception of the public, thereby offending section 28 of the *Trade Marks Act 1955*. The opponent also sought to invoke the Registrar's discretion to refuse registration.

The delegate reasoned that the opponent had failed to establish an initial onus to demonstrate a reputation in Australia sufficient to found an objection under section 28. Consequently, the applicant had no case to answer on that ground. Regarding proprietorship, the delegate applied the common law principle that proprietorship in a trade mark is acquired by first use in Australia. The evidence showed no actual trade or offer to trade in the goods bearing the mark in Australia by the opponent, nor any intention to do so. The delegate found that the applicant's claim to proprietorship was based on authorship of the mark, intention to use it, and the lodgment of the application for registration, which was sufficient in the absence of any prior right established by the opponent.

Ultimately, the delegate found that the opponent had failed to establish any of the grounds relied upon and saw no reason to exercise discretion to refuse registration. The opposition was dismissed, and the trade marks were directed to be registered, with costs awarded to the applicant.

Orders