Austbar Pty Ltd v ABA Australian Bar Association Limited
[2017] ATMO 29
•6 April 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Opposition by Austbar Pty Ltd to registration of trade mark applications 1560119 AUSTBAR and 1650033 AUST BAR - (both in Classes 9, 16, 35, 41, and 45) in the name of ABA Australian Bar Association Limited.
Delegate: Iain Campbell Thompson Representation: Opponent: Written submissions by Derek Minus
Applicant: Wayne Covell, assisted by Robin Covell, of Worthy of the Name.Decision: 2017 ATMO 29
Trade Marks Act 1995
Section 52 oppositions to registration: 1560119 AUSTBAR – sections 41, 58, 60, 59, and 62A; 1650033 AUST BAR – sections 41, 43, 58, 60, 59, and 62A; use of domain names as trade marks, use of trade marks by unincorporated associations; grounds not established.Background
In these proceedings under the Trade Marks Act1995 (‘the Act’) ABA Australian Bar Association Limited (‘the Applicant’) is the present applicant for registration of the trade marks which appear below:
Application No: 1560119
Prior Applicants: Australian Bar Association/the following individuals as trustees for the Australian Bar Association: Greg Stretton SC, Peter Quinlan SC, Bruce McTaggart, Fiona McLeod SC, Patrick O’Sullivan QC, John Lawrence SC, Phillip Greenwood SC, Michael Colbran QC, Mark Livesy QC, Phillip Walker, Phillip Boulton SC and Roger Traves SC (‘the Trustees’)[1]
[1] The correction of the name of the Australian Bar Association is explained at [4] of this decision.
Priority Date: 30 May 2013
Trade Mark: AUSTBAREndorsement: Evidence and/or other circumstances provided under subsection 41(4).
Application No: 1650033
Prior Applicant: Philip Selth as trustee for the Australian Bar Association
Priority Date: 1 October 2014
Trade Mark: AUST BAREndorsement: Evidence and/or other circumstances provided under subsection 41(4).
For convenience I will refer to the above as ‘the Trade Marks’ and ‘the Applications’ as is appropriate to the contexts in which I will use them.
The Applications are made in respect of the goods and services listed at Annexure A to this decision (‘the Specifications’). As will become apparent, the services in contention and of particular interest to both parties are ‘services rendered by an association of legal professionals to, or on behalf of, its members’ (‘the Association Services’). I note that, as regards the Association Services, 1560119 AUSTBAR and 1650033 AUST BAR are made in respect of what are, in essence, the same services.
The application for 1560119 AUSTBAR was originally filed in the name of The Australian Bar Association. In the examiner’s first adverse report to Mr Wayne Covell of Worthy of the Name (the trade mark attorneys for the applicant), she noted that this appeared to be a business or trading name and that in this case ‘the legal right to own property, including the trade marks, lies with the owner/s of the business’. In his reply, Mr Covell requested that the application be corrected by amendment so that the owners of the application were recorded as the following 12 individuals as trustees for the Australian Bar Association: Greg Stretton SC, Peter Quinlan SC, Bruce McTaggart, Fiona McLeod SC, Patrick O’Sullivan QC, John Lawrence SC, Phillip Greenwood SC, Michael Colbran QC, Mark Livesy QC, Phillip Walker, Phillip Boulton SC and Roger Traves SC (‘the Trustees’). On 15 July 2013 the application was amended accordingly.
Accordingly, as the amendment to the applicant’s name was a correction, the original applicant for 1560119 AUSTBAR is taken to be the Trustees.
The acceptances of the Trade Marks for possible registration were advertised in the Australian Official Journal of Trade Marks on 24 October 2013 (1560119 AUSTBAR) and 5 March 2015 (1650033 AUST BAR).
On 23 December 2013 (1560119 AUSTBAR) and on 5 May 2015 (1650033 AUST BAR) Australasian Barristers Chambers Pty Ltd (‘ABC’) filed Notices of Intention to Oppose the registration of the Trade Marks. ABC has subsequently assigned its right or interest on which it relied to oppose the registration of the Trade Marks to Austbar Pty Ltd (‘the Opponent’).
On 24 January 2014 (1560119 AUSTBAR), and 9 June 2015 (1650033 AUST BAR) ABC filed its Statements of Grounds and Particulars which detail grounds of opposition under sections 41, 58, 60, 59, and 62A of the Act in relation to both Trade Marks with an additional ground under section 43 in relation to 1650033 AUST BAR.
On 24 April 2014 three of the Trustees assigned their rights in trade mark 1560119 AUSTBAR in the following terms:
The Assignors and joint owners of the trade marks (Michael Colbran QC, Roger Traves QC and Philip Walker) as trustees for the Australian Bar Association (ABA) have assigned their rights in the Trade Marks to the Assignees (William Alstergren SC and Peter Davis QC). The other nine existing trustee owners who have not retired from the ABA Council will continue as joint owners of the Trade Marks with the two new Assignees. Accordingly, the joint owners of the three Trade Marks as trustees for the Australian Bar Association should now be recorded as Mark Livesey QC, Fiona McLeod SC, Phillip Boulten SC, Greg Stretton SC, Peter Quinlan SC, Bruce McTaggart, Patrick O’Sullivan QC, John Lawrence SC, Philip Greenwood SC, William Alstergren SC and Peter Davis QC.
On 29 April 2014 (1560119 AUSTBAR) and 5 August 2015 (1650033 AUST BAR) the Trustees filed Notices of Intention to Defend.
On 25 September 2014, application 1560119 AUSTBAR was assigned by the Trustees to Mr Philip Selth OAM as trustee for the Australian Bar Association. On 27 July 2015 Mr Selth assigned both 1560119 AUSTBAR and 1650033 AUSTBAR to the Applicant.
The parties have filed evidence in support, evidence in answer, and evidence in reply in relation to the respective Applications as further discussed below.
Both parties were informed of their right to be heard or to make written submissions. The Opponent chose to make written submissions and relied on those of its legal representative Mr Derek Minus. Mr Wayne Covell, solicitor and trade mark attorney, assisted by Ms Robin Covell, trade mark attorney, of Worthy of the Name represented the Applicant at a hearing before me, a delegate of the Registrar of Trade Marks, in Canberra on 1 March 2017.
Onus
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities[2].
[2] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].
The relevant dates at which the grounds under section 52 of the Act must be considered are the filing dates of the opposed applications (or, in relation to the ground under section 60, the ‘priority dates’ which are here the same as the filing dates of the respective Applications).
Evidence
The evidence in relation to 1560119 AUSTBAR is comprised of the following declarations:
In Support
Derek Michael Minus, Managing Director of ABC, made on 7 October 2014, with exhibits DMM-1 to DMM-33;
In Answer
Phillip Boulton SC, Honorary Treasurer of the Australian Bar Association and the President of the New South Wales Bar Association, made on 18 July 2013, with exhibits PB-1 to PB-30;
Philip Selth, Executive Director of the New South Wales Bar Association (NSWBA), the delegate of the Australian Bar Association (ABA) and (since 1 January 2015) the acting Chief Executive Officer of the ABA, made on 9 January 2015, with annexures PS-1 to PS-5;
Wayne Covell, solicitor and trade marks attorney, made on 13 January 2015, with annexures WC-1 to WC-13; and
In Reply
Derek Michael Minus, legal counsel representing ABC, made on 18 April 2015, with annexures DMM-1 to DMM-5
The evidence in relation to 1650033 AUST BAR is comprised of the following declarations:
In Support
Derek Michael Minus, Director of the Opponent, made on 19 November 2015, with exhibits DMM2-1 to DMM2-20;
In Answer
Phillip Boulton SC, Honorary Treasurer of the Australian Bar Association and the President of the New South Wales Bar Association, made on 18 July 2013, with exhibits PB-1 to PB-30;
Philip Selth, Executive Director of the New South Wales Bar Association (NSWBA), the delegate of the Australian Bar Association (ABA) and (since 1 January 2015) the acting Chief Executive Officer of the ABA, made on 9 January 2015, with annexures PS-1 to PS-5;
Wayne Covell, solicitor and trade marks attorney, made on 13 January 2015, with annexures WC-1 to WC-13;
Mr Philip Selth, Executive Director of the New South Wales Bar Association and the Chief Executive Officer of the Australian Bar Association, made on 12 May 2016 with annexures PAS-1 to PAS-6; and
Wayne Covell, solicitor and trade marks attorney, made on 12 May 2016, with annexures WC-1 to WC-2.
Although some of the evidence filed in respect of both matters before me is particular to those individual matters, there is much in common between these matters (in both the evidence and grounds relating thereto) which is why they were heard jointly, at the one hearing. To the extent that I may refer to the evidence filed in relation to one matter while discussing the other, it is because it is evidence I consider reasonably appropriate to take into account for both matters in terms of regulation 21.15(4) of the Trade Marks Regulations 1995 (‘the Regulations’). I add that both parties were aware that I intended to take this approach before the hearing of the matters.
The Opponent
There are certain difficulties in discussing the Opponent and its business. This is because ABC (Australasian Barristers Chambers Pty Ltd), who the Opponent states assigned the right or interest on which the person relied to file the notice of opposition to the Opponent, was ordered to be wound up in insolvency by the Supreme Court of New South Wales[3] on 8 December 2015. Prior to the filing dates of both 1560119 AUSTBAR and 1650033 AUST BAR the potential user of any trade mark relied upon by the Opponent was therefore ABC. On 28 January 2016 Mr Minus wrote to the Registrar stating:
I am writing to advise IP Australia that on 17 September 2015, all of the rights and interests of Australasian Barrister Chambers Pty Ltd in the opposition to these trade mark applications were transferred to AUSTBAR Pty Ltd (ACN 608 133 768). The transfer was by way of assignment.
Persuant [sic] to section 53 of the Trade Marks Act 1995 and regulation 5.11 of the Trade Marks Regulations 1995, I request that the Registrar amend the notice of intention to oppose to record the new opponent’s name, AUSTBAR Pty Ltd.
[3] In the matter of Australasian Barrister Chambers Pty Ltd [2016] NSWSC 1767 at [1] per Brereton J; and noted in Minus v Selth [2016] FCA 834 at [5] per Kenny J; and, Selth v Australasian Barrister Chambers Pty Limited [2015] FCA 1494 at [6] per Greenwood J.
There is no mention by Mr Minus whether the ownership of any potential trade mark(s) relied upon by the Opponent in these proceedings passed from ABC to the Opponent nor is any documentation of the assignment mentioned by him in the evidence before me. I will proceed on the basis that any trade marks that might be relied upon by the Opponent are owned by a person other than the Applicant: it is not necessary to these decisions by the Registrar that she determine who owns any trade mark(s) that are relied upon by the Opponent.
Mr Minus in his declarations describes the inception of the business that was run by ABC. The concept was, I gather, of a ‘virtual’ Australia-wide barrister chambers in support of ‘new national practice rules’. To that end Mr Minus:
· Incorporated ABC (ACN 133 736 848) on 15 October 2008;
· Registered the business name AUSTBAR with the Australian Securities and Investments Commission (ASIC) on 29 May 2014;
· Registered the business name AUSTBAR Chambers with ASIC on 3 January 2014;
· Registered the domain name ‘austbar.com.au’ with au Domain Administration Ltd on 7 July 2011; and
· Registered the business name Australian Barristers Association with ASIC on 9 May 2014.
I note that Mr Minus states that the website is used to:
· provide Australia’s first ‘virtual chambers’ to promote Australian Barristers with a national practice;
· host the only national Roll of Australian Barristers in private practice. This list of over 5,000 barristers has been used by legal consumers, corporate counsel and general enquirers like the BBC (Annex DMM-5) seeking information about Australian barristers. There is no charge for barristers to have their name and contact details recorded and the list is updateable by the barristers themselves;
· feature information, news and views from relationships with international legal experts and with their permission reproducing it on the website. These include Dr George Beaton of Beaton Capital, one of the most respected commentators on the Australian legal scene, John Grimley covering Asia for the AsiaLawPortal and Neil Rose publisher of Legal Futures who reviews the UK legal scene which is currently undergoing dramatic changes relevant to all Australian barristers (Exhibit DMM-6)[4];
· provide links to resources (like Bar Rules) that barristers can refer to, or refer their clients to (Exhibit DMM-7); and
· disseminate information, news and stories, since August 2011, particularly about the introduction of the national legal practice and is developing a list of subscribers to its free newsletter (Exhibit DMM-8).
[4] I note that no date is ascertainable for the material at exhibit DDM-6.
Mr Minus further states that:
[ABC] is a prominent Twitter user. All blog articles or new member information is posted to the Internet by the use of the Twitter hash tag @AustBar for AustralianBarrister. [ABC] has used the @AustBar hashtag since early 2013 and has 141 followers, mostly law firms and lawyers (Exhibit DMM-10).
I note that Mr Minus does not expressly mention use by either ABC or the Opponent of the trade marks AUSTBAR or AUST BAR in this portion of his evidence but that the trade mark below appears on the undated webpage in exhibit DMM-6 mentioned above:
The balance of Mr Minus’s declaration in support of the opposition to registration of 1560119 AUSTBAR amounts to submission evidence concerning his perceptions of the validity of that application. I will discuss this material as and when it becomes relevant to the grounds of opposition. I note, however, that in this material Mr Minus also addresses a ground under section 62 of the Act which is not a ground detailed in the Statements of Grounds and Particulars, (nor has the Opponent made applications to amend the Statements of Grounds and Particulars), so consequently that material is not relevant to these proceedings.
The Applicant
Mr Boulton explains the background to the Trade Marks in the following way. The Australian Bar Association (‘the Association’) has a constitution which provides at clause 5 that ‘There shall be an Australian Bar Council [‘the Council’] which shall control and manage the business and affairs of the Australian Bar Association.’ As correctly identified, it was the then Council members as the Trustees for the Association who filed application 1560119 AUSTBAR on 30 May 2013.
The Association was formed in 1962 by the Bar Associations of New South Wales, Victoria and Queensland. The bar associations of the other States and Territories have subsequently joined the Association. The Association is the peak representative body for all Australian barristers.
Mr Boulton goes on to explain that since 1963 the abbreviated names AUSTBAR and AUST BAR have been used by and in relation to the Association:
The abbreviated name AUST BAR has been used in relation to the official citations for journals published with the approval of the Applicant, namely the Australian Bar Gazette (1963-1970, 1996-2007) and the Australian Bar Review (1985 - to date). The official citation for the Australian Bar Gazette (1963 - 1970, 1996 - 2007) is AUST BAR GAZ. The official citation for the Australian Bar Review is AUST BAR REV.
AUSTBAR is also the distinguishing feature in the Applicant’s website address, namely austbar.asn.au and its email address [email protected] [since 2001].
I add that the Association was, at the date Mr Boulton made his declaration, also the beneficial owner of the domain names ‘ and ‘>
Mr Boulton gives examples of the usages of the abbreviations Aust Bar Gaz and Aust Bar Net in his evidence. For example a search of the legal database LexisNexis® will return results with the reference Aust Bar Rev ‘NN’ (where ‘NN’ is a number specific to an individual article within the search results). A search of the website ‘The Hon Michael Kirby AC CMG’, former judge of the High Court of Australia, gives a list of references with Aust Bar Rev ‘NN’ citations under the heading ‘Australian Bar Review’.
Further examples given by Mr Boulton are:
(a) The Library Guide at Monash University which shows on page 17 that the accepted abbreviation that applies exclusively to Australian Bar Review is AUST BAR REV; and that the accepted abbreviation that applies exclusively to Australian Bar Gazette is AUST BAR GAZ.
(b) An extract from The Black Book Universal Guide to Uniform Citations which shows that the accepted abbreviation that applies exclusively to Australian Bar Review is AUST BAR REV.
(c) A copy of Thomson Reuters FIRSTPOINT TABLE OF ABBREVIATIONS which shows on page 4 that the accepted abbreviation that applies exclusively to Australian Bar Review is AUST BAR REV; and that the accepted abbreviation that applies exclusively to Australian Bar Gazette is AUST BAR GAZ.
(d) An extract copy of the 2006 The Sydney Law Review Style Guide which shows on page 20 that the accepted abbreviation that applies exclusively to Australian Bar Review is AUST BAR REV.
(e) A copy of the Legal Abbreviations for RMIT University Students (2002). As explained in the Introduction “This list expands on some of the more commonly occurring abbreviations of the titles of law reports (of cases), law journals (periodicals) and judicial positions likely to be encountered by university students studying law courses in Faculties of RMIT.” It shows on page 3 that the accepted common abbreviation that applies exclusively to Australian Bar Review is AUST BAR REV; and that the accepted common abbreviation that applies exclusively to Australian Bar Gazette is AUST BAR GAZ.
(f) An extract from the Australian and New Zealand Legal Abbreviations, second edition, published by the Australian Law Librarians’ Group in 1995. This shows on page 43 that the accepted abbreviation that applies exclusively to Australian Bar Review is AUST BAR REV; and that the accepted abbreviation that applies exclusively to Australian Bar Gazette is AUST BAR GAZ.
Concerning the Association’s website ‘austbar.asn.au’, Mr Boulton says:
For the past twelve (12) years[5] the [website] has published information about the Applicant, the Applicant’s media releases, speeches by members of the Applicant, the Applicant’s conference information, member benefits, publications as well as news about the legal profession and many other related matters that affect the national profession concerning advocates. From 1 January 2013 to 15 July 2013 the Austbar website [ has received 41,699 visits and unique visitors totalling 27,589.
[5] This places the first public use by the Association of the website ‘austbar.asn.au’ in 2001.
Mr Boulton also includes numerous examples of both the use by the Association of its web-address and its email addresses on printed material which have circulated widely amongst the members of the Association and possibly legal professionals and law students.
The Association also has an associated website ‘advocacytraining.com.au/’ that was created in 2005. That website contains an email contact address ‘[email protected]’.
Additionally, both the Association’s website and email addresses were at various times, before the priority dates, found on (inter alia) the websites of the Law Council of Australia, the Australian Capital Territory Bar Association, the New South Wales Bar Association, the Bar Association of Queensland, within the West Australian Bar Association Review, on ‘theworldjustice.blogspot.com.au’ which promoted the Austbar website and within other material directed at students, legal professionals, to members of the Association and to a wider international audience of legal professionals.
Mr Boulton’s declarations also evidence use of the abbreviation Aust Bar in relation to the Association by third parties and the media. Mr Boulton states:
Attached hereto and marked Exhibit “PB-28” is a 3 September 2003 FairfaxDigital online article referring to Trevor Morling QC being the President of the “Aust.Bar Assn 1978.”
Attached hereto and marked Exhibit “PB-29” is an online article published on 3 April 2010 referring to a “Judicial Legitimacy speech given by Murray Gleeson CJ, HC of Aust 1998-2008; CJ Sup Crt NSW 1988-98 to AUST. BAR ASSOC. 2 July 2000 in New York.”
Attached hereto and marked Exhibit “PB-30” are extracts from Law Reform Commission Paper with 29 November 1995 Terms of Reference by Michael Lavarch, Attorney-General of Australia and 1997 Altered Terms of Reference by Darryl Williams AM QC, Attorney-General of Australia. On page 135 the Applicant is referred to as the “Aust Bar Assoc.”
In the Wikipedia entry for former ABA President 1984 and former Justice of the High Court of Australia, The Hon Ian Callinan AC QC, there is a reference set out as follows:
The Australian Broadcasting Corporation referred[6] to the Applicant in 2008 as follows:
[6] >
Mr Selth in his declarations adds more detail to the history of the Association and its evolution from its beginnings in 1962. I note that this information is available within A History of the New South Wales Bar, 1969, pp 184-6 and the article The Founding of the Australian Bar Association (1968) 2(3) Aust Bar Gaz 3 by Justice G Hart and John Helman.
Mr Selth’s declarations corroborate those of Mr Boulton concerning the widespread use of the abbreviations AUST BAR GAZ and AUST BAR REV in legal citations and Mr Selth provides additional detail concerning the publications which have used these abbreviations.
Mr Selth also provides additional detail of use of the abbreviation AUST BAR as a reference to the Association in various media. As an example, he provides:
Mr Covell’s declarations provide information on the background to the dispute between the parties to these proceedings including correspondence between the parties. Some indication of the extent and nature of this dispute is indicated by the proceedings in Selth v Australasian Barrister Chambers Pty Limited[7]; Selth in a Representative Capacity for the Members of the Australian Bar Association v Australasian Barrister Chambers Pty Limited[8]; Minus v Selth[9]; and, Selth v Australasian Barrister Chambers Pty Limited (No 2)[10]. Additionally, Federal Court proceedings NSD 975/2014 were heard before Greenwood J from 1 February 2016 to 5 February 2016.
[7] [2015] FCA 1494.
[8] [2015] FCA 1008.
[9] [2016] FCA 834.
[10] [2016] FCA 46.
The Issues
Central to the matters before me is the question (as regards 1560119 AUSTBAR) whether the Association can (as an unincorporated group of people) own a common law trade mark, or trade marks, used by it. Did any equities in signs connected with the Association redound to the Association although it had no legal personality? The answer to these questions must inform the Registrar’s decision on each ground under which the registration of the Trade Marks has been opposed. That said, there are further underlying issues:
· the Opponent in this matter appears to point to the registration of various signs as being use by ABC of trade marks prior to the relevant dates;
· the Opponent asserts that the earlier uses of almost identical signs by the Association do not constitute use of trade marks and, further, there was no person to own those trade marks; and
· the Opponent has not fully documented any transmission of the rights on which it relies to pursue the oppositions from ABC (which is in liquidation) to itself but has merely asserted this to be so.
Underlying each of the grounds as argued by the Opponent is the question of the ownership of the Trade Marks. It is logical, therefore, to start with a consideration of the ground under section 58 of the Act.
Before addressing the grounds under section 58, I again observe that although there are differences between the grounds and the evidence filed in relation each of these matters, the underlying principles and their application in relation to the matters have marked similarities. In particular, I note that, as regards the Trade Marks themselves, section 7 of the Act provides:
7Use of trade mark
(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.
Note:For prescribed court see section 190.
The expression ‘with additions or alterations that do not substantially affect the identity of the trade mark’ was considered in Optical 88 Ltd v Optical 88 Pty Ltd (No 2)[11] where Yates J treated the issue of ‘additions or alterations’ under subsection 7(1) as being in essence the same as the question of ‘substantial identity’ which occurs within section 44 of the Act[12]. He stated:
Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? In order for that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival[13] at 391; Shell[14] at 414. In my view a total impression of similarity does emerge from a comparison of the modified ‘707 mark with the ‘707 mark itself.
[11] [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 at [256].
[12] See also Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519; (2010) 87 IPR 300; [2010] AIPC 92-388 per Kenny J at [154].
[13] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495.
[14] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1961) 109 CLR 407.
In Shell the question of ‘substantial identity’ was posed in the following way:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.
When considering the Trade Marks side-by-side, AUSTBAR and AUST BAR are, to all intents, identical. The space between the elements ‘aust’ and ‘bar’, or elision of that space, makes little difference to the identity or import of the essential features of the Trade Marks as might occur, for example, with the elision of spaces in the postulated trade mark TO GET HER as compared with either of the hypothetical trade marks TOG ETHER or TOGETHER where the omission of the spaces in either submerges the identity of the elements of the original.
Thus, when viewing the Trade Marks there is a ‘total impression of resemblance’ rather than dissimilarity and accordingly the use of the one may be accepted by the Registrar as a use of the other in relation to the contended Association Services.
Section 58
In relation to application 1560119 AUSTBAR, the Statement of Grounds and Particulars contends:
The applicant is the [Association][15] which is represented by 12 trustees as the [Association] is an unincorporated, unregistered and unrepresentative private association which has no legal right to own property, including trade marks.
To the extent that the [Association] is a trading entity engaged in providing legal services, it is trading without a registered business name in breach of the federal, Business Names Registration Act 2011.
The [Association] is managed by a Council made up of the representatives of the various state and territory Bar Associations. But they are not “the members” of the Association, who may own the rights to any ‘trademark’. As made clear by the ABA constitution, it is the individual barristers who are the members of the unincorporated association who are the members and owners of any intellectual property rights.
[15] I note that at the time of filing of the Statement of Grounds and Particulars, the owner of the Trade Mark was the Trustees.
In relation to application 1650033 the Statement of Grounds and Particulars contends:
The Applicant is an individual who is not a lawyer nor a barrister nor the owner of a trade mark in the name ‘AUST BAR’ yet is applying to provide “association services” for an unidentified association.
The Opponent is the owner and user of the trade mark ‘AUSTBAR’ and the first user of the trade mark in respect of commercial services to Australian barristers which has been used in its domain name <austbar.com.au> registered 7 July 2011 and in its business names, AUSTBAR CHAMBERS, registered 3 January 2014 and AUSTBAR, registered 29 May 2014. All of these dates and the first use of the trade mark are prior to the priority date of the opposed application.
I note that the Opponent’s contention concerning the Business Names Registration Act 2011 does not have any obvious bearing on whether or not the Applicant is the owner of 1560119 AUSTBAR and the contention thus has no immediate relationship to the ground. While a business name may be used as a trade mark, not all trade marks are business names and, further, the name of the Association (Australian Bar Association) is not one of the trade marks presently under consideration.
Section 58 of the Act provides:
58Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note:For applicant see section 6.
The terms ‘applicant’ and ‘person’ are defined within section 6 of the Act:
applicant, in relation to an application, means the person in whose name the application is for the time being proceeding.
person includes a body of persons, whether incorporated or not.
Further, section 27 of the Act relevantly provides:
27Application—how made
(1)A person may apply for the registration of a trade mark in respect of goods and/or services if:
(a)the person claims to be the owner of the trade mark; and
(b)one of the following applies:
(i)the person is using or intends to use the trade mark in relation to the goods and/or services;
(ii)the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;
(iii)the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.
Note:For use see section 7.
Of course, the word ‘person’ in section 27 of the Act, above, must (in terms of the section 6 definition of ‘person’) be read as referring to a body of persons[16].
[16] See also Acts Interpretation Act 1901 subparagraph 23(b).
Prima facie, at the priority date of 1560119 AUSTBAR, the Association was a body of people. The Trustees, Michael Colbran QC, Mark Livesey QC, Philip Walker, Phillip Boulten SC, Roger Traves SC, Greg Stretton SC, Peter Quinlan SC, Bruce Taggart, Fiona McLeod SC, Patrick O’Sullivan QC, John Lawrence SC and Philip Greenwood SC were a group of people, each with legal personality, and were members of the Council of the Association in accordance with the Association’s Constitution. It is not of present concern whether either that group of individuals or the Association applied to register trade mark application 1560119 AUSTBAR for reasons which will shortly become apparent.
In a recent decision of the Federal Court[17], Davies J considered the meaning of the word ‘applicant’ and whether there had been a valid assignment of the trade mark in circumstances where the applicant at the priority date for that application was not the true owner of the trade mark. His Honour said[18]:
Reliance was placed on Mobileworld Communications Pty Ltd v Q & Q Global Enterprise [2003] FCA 1404; (2003) 61 IPR 98 (“Mobileworld”). The facts of that case in broad compass were that a company, Aust Pty Ltd, was running a retail business and using the phrases “Crazy John” and “Crazy John’s” in its advertising and promotion. Aust Pty Ltd applied for registration of the marks as trade marks. Subsequently it was realised that those marks were owned by another company in the same corporate group, Crazy John Pty Ltd, and that Crazy John Pty Ltd should have made the application. The Trade Marks Office was informed of the error and a request was made to record the correct applicant as Crazy John Pty Ltd, which the Registrar authorised. Crazy John Pty Ltd then assigned its interest in the application to Aust Pty Ltd. Allsop J (as His Honour then was) held that the time to judge the satisfaction of s 27(1)(a) is during the application. At [83] His Honour held:
The ground of opposition is s 58 (see s 88(2)(a)). Bearing in mind the definition of applicant in s 6 as meaning the person in whose name the application is for the time being proceeding, the time to judge the satisfaction of s 27(1)(a) is during the application. Aust P/L initially, implicitly, claimed to be the owner, by being identified on the application form as the applicant. Later, this was changed to Crazy John Pty Ltd: see the November letter, which made an express claim on Crazy John Pty Ltd’s behalf that Crazy John Pty Ltd was the owner. I think on the evidence that Crazy John Pty Ltd was the owner. The respondents seek to hoist the applicants upon a proposition put by the latter in submission that notwithstanding that Aust P/L first applied for the mark, the position should be considered as if Crazy John Pty Ltd was the original applicant. Since Crazy John Pty Ltd did not, as at 17 August 1999, claim to be the owner of the mark, but did so only later, in November, it is said s 27(1)(a) was not satisfied. I do not agree. Crazy John Pty Ltd was a person who, while the application was proceeding, claimed to be the owner and who claimed to be the owner at the time of grant. Aust Pty Ltd before then claimed to be the owner, but withdrew that claim. To make the application fail because of innocent error of the kind displayed in the evidence would impermissibly narrow the power of amendment in Part 6 of the TM Act. Crazy John Pty Ltd claimed to be the owner during the registration process. It was an applicant. Section 27(1)(a) was satisfied.
On appeal, the decision was set aside but not on this point: Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196; (2004) 209 ALR 1. At [128], the Full Federal Court agreed with Allsop J on this point stating:
In the light of the findings made by the primary Judge, it is tolerably clear that, while the application was still on foot and at the time of grant, Crazy John Pty Ltd claimed to be, and was the owner of, the 1999 Mark. Crazy John Pty Ltd intended to use the 1999 Mark by licensing it. There was material upon which his Honour could conclude that Crazy John was the owner of the 1999 Mark and intended to authorise another member of the group to use it. The grounds of invalidity referred to in ss 58 and 59 are not made out.
[17] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406 (‘Insight’).
[18] Op cit at [67].
See too Global Brand Marketing Inc v YD Pty Limited [2008] FCA 605; (2008) 76 IPR 161 at [131]–[134]. The facts of that case, relevantly, were that an application for the registration of a trade mark owned by Diesel Spa was made in the name of the licensee, Global Brand, when Global Brand did not have the right under the licence agreement to apply for registration. Whilst the application was proceeding, Global Brand assigned the application to Diesel Spa. Registration of the mark was opposed under s 58 on the ground that Global Brand was not the owner of the mark. Sundberg J, applying Mobileworld, held that the ground of opposition failed by reason that as a result of the assignment of the application, Diesel Spa had become the applicant for registration as “the person in whose name the application is for the time being proceeding”.
A distinguishing feature of both those cases from the present case is that in both those cases the “true” owner of the mark claimed to be the owner of the mark prior to acceptance of the application for registration, whereas in the present case the assignment to Insight Radiology did not occur until after acceptance of the application. Insight Clinical Imaging drew on that distinction to contend that Mobileworld is not authority for the proposition that the relevant date for assessing ownership extends beyond acceptance of the application and into the opposition period. Insight Clinical Imaging also sought to distinguish Mobileworld on the basis that the application in the name of the original applicant was a mistake and should have been another company within the same corporate group. However, the decision in Mobileworld was not based on those distinctions but upon the meaning of “applicant” in s 6 of the Trade Marks Act. Crucially the opposition failed because Crazy John Pty Ltd claimed to be the owner while the application was still proceeding. The decision did not depend upon the reasoning that the original applicant, Aust Pty Ltd, had been substituted before acceptance of the application. Nor did the decision depend upon the reasoning that application was made in the wrong company name in error.
In the later decision of Food Channel Network, the Full Federal Court, without reference to Mobileworld, stated at [74] that the requisite intention must exist at the date of the application. Although concerned with s 27(1)(b), paragraph [74] would appear to be inconsistent with the decision in Mobileworld, but the decisions are capable of reconciliation in that the issue dealt with in Mobileworld did not arise for consideration in Food Channel Network. On that basis, I should follow Mobileworld and thus, the s 58 and s 59 grounds of opposition fail if the assignment was valid and effective.
Was there a valid assignment?
Insight Clinical Imaging’s fall back argument was that the assignment was ineffective because it was made by letter without consideration and/or because Mr Pham had no rights of ownership to assign. Neither contention is accepted. Valuable consideration did not have to pass for the assignment to be effective. What was required was a document evidencing the intention to transfer the trade mark application and clearly identifying that application, which was the case here, and the effecting of the assignment in accordance with Part 10 of the Trade Marks Act, which also occurred: Shanahan’s Australian Law of Trade Marks and Passing Off 5th ed at [75.2035]. Section 107(1) provides if a trade mark whose registration is being sought is assigned either the applicant for registration, or the person to whom it has been assigned must apply to the Registrar for the assignment to be recorded. Under s 107(2) the application must be filed in accordance with the regulations. Section 108(2) provides that, on and after the day on which the Registrar records the particulars of the assignment, the person to whom the trade mark has been assigned or transmitted is taken, for the purposes of the Trade Marks Act, to be the applicant for the registration of the trade mark. The evidence showed that on or about 4 July 2013 Insight Radiology applied to the Registrar for the assignment to be recorded and the assignment was accepted and recorded by the Registrar on 17 July 2013. Thus Insight Radiology was, after 17 July 2013, “taken, for the purposes of [the Trade Marks Act], to be the applicant for the registration”.
The Applicant here is in likewise position in relation to the Applications as was Insight Radiology to the application discussed in Insight, above: the Applicant here is the person in whose name the Applications are proceeding. Inasmuch as the ground under section 58 is founded upon the Opponent’s concerns that the Association or the members of its Council did not have legal personality in relation to 1560119 AUSTBAR, (or that Mr Selth did not have either authorship or the requisite intention to use 1650033 AUST BAR), these concerns are misplaced. The question is whether the Applicant presently qualifies as an applicant for the registration of the Trade Marks and (having legal personality) it does. I will further discuss the question of legal personality in due course.
I turn now to the question of the ownership of the Trade Marks vis-à-vis the parties.
Ownership of a trade mark may arise in two ways: firstly, by use of a sign as a trade mark; or, secondly, by the filing of an application for registration as a trade mark. In the case of a dispute as to the ownership of a trade mark, the first person to publically use the trade mark in the course of trade in relation to particular goods or services, or to apply to register it as a trade mark for those goods or services (whichever is the earlier) is the owner of the trade mark. In order to displace a statutory claim to ownership, an opponent must show first use of a trade mark which is at least substantially identical[19] to the impugned trade mark in relation to goods or services which are, as a minimum, ‘the same kind of thing’[20].
[19] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049 at [62].
[20] Re Hicks’ Trade Mark (1897) 22 VLR 636.
At the outset, it must be observed that the initial question here is not whether the Applicant has used the Trade Marks as trade marks. Rather, the first question is whether a person other than the Applicant had use of a trade mark substantially identical to the Trade Marks before the filing dates of the Applications in relation to goods or services which are ‘the same kind of thing’ such that the other person’s claim to ownership of the Trade Marks prima facie displaces that of the Applicant.
If the answer is ‘yes’ to the above question, the question then becomes whether the Association used the Trade Marks prior to the use by that person other than the Applicant and a consideration of the implications that might then flow from any earlier use the Association might have made of the Trade Marks.
Section 17 of the Act defines the expression ‘trade mark’:
17What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note:For sign see section 6.
Section 6 contains the definition of the word ‘sign’.
sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
Mr Minus here seemingly points to the registration by ABC of various business names and a company name which include the sign ‘austbar’ or ‘AUSTBAR’ as well as the ABC registration of the domain name ‘austbar.com.au’ as evidence of use of the sign ‘austbar’ by a person other than the Applicant as a trade mark before the relevant dates.
The assumptions underlying this approach are flawed for two reasons.
Firstly, the mere registration of a company name, domain name and business name does not give rise to trade mark rights. In Mantra Group Pty Ltd v Tailly Pty Ltd (No 2)[21] [22] (‘Mantra’) Reeves J observed of domain names:
It has been doubted whether the mere registration of a domain name containing the words of a trade mark constitutes the use of those words as a trade mark for the purposes of s 120 of the Trade Marks Act: see CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279; (2003) 128 FCR 408 (“CSR Ltd”) at [42] per Hill J and the cases referred to. However, if the registered domain name is linked to a website that contains advertising material that promotes goods or services in relation to which the trade mark is registered, this combination of use could constitute use as a trade mark under s 120 of the Trade Marks Act. This is all the more so if the advertising material on the website also uses the words of the trade mark to promote the goods or services concerned. In considering whether these situations constitute trade mark use, it will be necessary to apply the general principles set out above to the particular circumstances: see the discussion in Shanahan at [115.1050].
[21] [2010] FCA 291; (2010) 183 FCR 450; (2010) 267 ALR 347; (2010) 86 IPR 19; (2010) 51 AAR 458; [2010] AIPC 92-376 at [50].
[22] See also Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554 (‘Accor’) at [315]; Sports Warehouse, Inc. v Fry Consulting Pty Ltd [2010] FCA 664, at [141] to [153].
Moreover, concerning the registration of business names, in Lone Star Steakhouse & Saloon Inc v Zurcas[23][24] Lindgren J observed:
By duly registering the business name “Lonestar Saloon”, Ms Zurcas avoided contravening s 5 the Business Names Act 1962 (Vic) but this did not give her a “right” to carry on business under that name, let alone a right to do so in infringement of the trade marks of others.
[23] [2000] FCA 29; 48 IPR 325.
A feature of Mr Minus’s evidence is that, while he states that he has registered the company name, business names and domain name which include the sign ‘austbar’, he does not expressly claim within his declarations to have used those signs as trade marks or provide corroborated dates of the first uses of those signs as trade marks. While a domain name may function as a ‘shop-front’ trade mark[25], the date of first use of that domain name as a trade mark is not the date of its registration but may (if all other requirements are satisfied) be the date on which it was first publically used within the domain name when the website goes ‘live’. To pursue the ‘shop-front’ analogy, the first use of the sign as a trade mark is not when the sign was painted in a sign-writer’s workshop but when it was publically hung up upon the shop, the shop was stocked and displayed ready for business, and it was thus brought to public notice. (That it was brought to public notice is generally established via evidence of sales, or in the instance of domain names, by evidence of visits to the website or purchases from it). Letters, dated 15 May 2013, addressed to various Bar Associations and attached to Mr Minus’s declaration refer to ‘the imminent launch’ of the ABC website ‘ but it is not apparent whether the launch was before 30 May 2013 (the filing date of 1560119 AUSTBAR).
[25] Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 281 ALR 544; 92 IPR 165 at [50] per Perram J.
Significantly, the extensive print-outs exhibited to Mr Minus’s declarations of the contents of the Opponent’s website ‘ are undated and, to judge by the contents of that material which includes reference to the filing of 1560119 AUSTBAR, the print-outs are from a time after the filing date of that application. It follows that this material cannot show use of a trade mark before the filing date of 1560119 AUSTBAR.
Similarly, the printouts of the home page of ABC’s Austbar ADR website and other related materials from the Internet within Mr Minus’s declarations are undated and cannot be relied upon to establish earlier use of a trade mark to be relied upon by the Opponent under section 58.
It follows that the Opponent has not shown use of a sign substantially identical to the Trade Marks (or the use of that sign as a trade mark) by a person other than the Applicant before the filing date of 1560119 AUSTBAR.
A further issue associated with the materials exhibited to Mr Minus’s declarations is that, they do not, in any event, establish use in relation to goods or services which ‘are the same kind of thing’ as the ‘Association Services’ which are in contention.
Mr Minus in his declarations does not give any details of ABC’s ‘members’ nor does he provide any details of services that were actually provided to those members. There are differences between both the placing of a listing of barristers upon a website and having an actual membership, and a further difference in the actual provision of services to those members/barristers[26]. These observations go to the necessity that to qualify as a trade mark a sign must be used in relation to goods or services dealt with or provided ‘in the course of trade’[27]. The only detail of any activity provided in Mr Minus’s declarations is an inquiry by a person working for the BBC concerning an Australian barrister – this enquiry is dated Monday, 31 March 2014 – after the filing date of 1560119 AUSTBAR.
[26] See for example Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278; [2005] AIPC 92-132.
[27] See definitions of ‘goods’ and ‘services’ at section 6 of the Act.
It follows that the Opponent has not shown:
· use by a person other than the Applicant of a substantially identical trade mark to the Trade Marks before the filing date of 1560119 AUSTBAR; and
· use of a trade mark in relation to goods or services which are ‘the same kind of thing’ before the filing date of 1560119,
Accordingly, the ground under section 58 of the Act is not established in relation to 1560119 AUSTBAR. It logically follows that because 1650033 AUST BAR is substantially identical to 1560119 AUSTBAR and in respect of the same contended Association Services, the ground under section 58 in relation to 1650033 AUST BAR is not established.
The Opponent has not established its ground under section 58 of the Act in relation to 1560119 AUSTBAR and 1650033 AUST BAR on either of the footings on which it was argued.
Notwithstanding my findings immediately above, I will go on to discuss the second problem with the assumptions underlying the approach to the section 58 ground suggested by Mr Minus. This concerns the Association’s purported use of signs which include the elements ‘aust bar’ or ‘austbar’ prior to any use that ABC might have made of the signs on which the Opponent relies. This discussion will feed into my findings in relation to the other grounds detailed in the Statements of Grounds and Particulars by the Opponent.
As I understand it, the Opponent’s argument here has two parts: firstly, that the Association was not capable of owning trade marks (and thus could neither rely on their use nor assign them); and, secondly, that the signs relied upon by the Applicant are not trade marks.
As I understand it, a part of the Opponent’s concerns here is whether the Association in fact functioned as an association for all Australian barristers or as an association of the State Bar Associations. However, there is a paucity of evidence before the Registrar as to what the true situation was in this regard; the constitutions of the State Bar Associations are not in evidence so that their members’ interests (if any) in these matters can be determined, and it is not clear to me how this distinction should affect the outcome of these proceedings when the memberships of the State Bar Associations and the Association are seemingly one and the same. It would appear to me that, whatever the true situation was, if the Council had authority to act on behalf of the Association it matters little whether that authority derived from the State Bar Associations or a wider membership.
At the hearing of these matters Mr Covell made extensive submissions concerning what might termed the Association’s ‘equities’ in signs associated with it. In my view these issues are crystalised by the question:
If the Association’s activities were connected to a sign to the extent that the use of that sign by any other person would be confusing or deceptive as to the source of those services, was that sign functioning as a trade mark?
If the answer is ‘yes’, it follows firstly that the sign relied upon by the Applicant functioned as a trade mark (as it served so as to indicate a connection in the course of trade between the Association and the services provided thereunder and so distinguished those services from the similar services provided by any other association to its members) and, secondly, there is a clear conclusion to be drawn that there had also arisen, through use, equities or rights in relation to that trade mark.
In my view of the evidence, the plain answer to the question at [80] is ‘yes’. Focusing only on the use since 2001 by the Association of its domain name (‘austbar.asn.au’) it is apparent that the relevant part of that domain name (‘austbar’) functioned as the hypothetical shop-front sign that hangs over the portal to the Association’s virtual rooms and the services provided therein. My understanding of Mr Minus’s declarations, submissions, and his disputes in Court with, inter alia, Mr Selth, is that he has a grievance concerning his payment of fees to his State Bar Association and the contributions that his State Bar Association then makes (or made) on his behalf to the Association. This may be taken as confirmation that such fees are paid and that the services provided under the proverbial shop-front sign and within the virtual rooms are ‘in the course of trade’.
The significance and recognition of Association’s usage of the domain name ‘austbar.asn.au’ is, in my consideration, strengthened by both the references on other websites to the domain name ‘austbar.asn.au’ documented in the evidence in answer, the use of the sign within the Association’s various email addresses, and the use of the similar signs AUST BAR GAZ and AUST BAR REV in relation to legal articles originated by or through the Association. Although the signs AUST BAR GAZ and AUSTBAR GAZ are not trade marks, these pre-existing usages of the similar signs AUST BAR GAZ and AUST BAR REV in legal citations associated with the Association would increase immediate market recognition of the sign ‘austbar’ within the domain name ‘austbar.asn.au’ as being a trade mark functioning so as to distinguish the services of the Association in the course of trade from the similar services of other traders. The scarce reference within the website ‘austbar.asn.au’ to the sign ‘austbar’ is not, in my consideration, fatal to the Applicant’s claims that the sign ‘austbar’ functioned as a trade mark: in Mantra, Reeves J referred to usage of the corresponding trade mark within a website as strengthening the claims that a domain name functioned as a trade mark, not as being a requirement or prerequisite.
Accordingly, in my consideration, there is sufficient evidence before the Registrar to satisfy her that, since at least 2001, the sign ‘austbar’ functioned as a trade mark in relation to the contended Association Services provided by the Association.
However, could the Association have ‘owned’ the Trade Marks?
I return to Mr Covell’s submissions. He submitted:
Throughout the common law world unincorporated associations have been found to have protectable common law trade mark rights: British Legion v British Legion Club (Street) Ltd (1931) 48 RPC 555; British Medical Association v Marsh (1931) 48 RPC 565; The Holy Apostolic and Catholic Church of the East (Assyrian) NSW Parish Association v Attorney General (1989) 16 IPR 619; Burge v Haycock [2002] RPC 28; Southern California Darts Association v Zaffina, Case No. 13-55780 (9th Cir, Aug 11, 2014). A representative action may be brought on behalf of the Association’s members to protect the goodwill in its trade marks: Artistic Upholstery Ltd v Art Forma (Furniture) Ltd [2000] RPC 31 [1999] All ER (D) 913 [2001] FSR 311 at [31]-[40].
The facts in British Legion shed light on the touchstone issue of ownership in relation to unincorporated associations. In 1921 the British Legion was formed as an unincorporated association to promote the welfare of war veterans. In 1925 it was incorporated by Royal Charter and this body took over the association and its property. Many branches and clubs were formed and were authorised to use the name British Legion. In October 1922 the defendant British Legion Club (Street) Ltd, was registered as a social club in Street, Somerset. The British Legion sued for passing off and said that the use of British Legion in the defendant’s company name was not authorized and would inevitably cause confusion. The defendant claimed it was “first in the field” when it incorporated in 1922 because at that date there was no legal entity in existence which could have sued it in the name of the British Legion and restrain it from using that name. This was rejected and the plaintiff was granted an injunction restraining the Defendant’s use of British Legion.
At 562-563 of British Legion v British Legion Club (Street) Ltd, Farewell J rejected the defence and found that there was an association of persons known as the British Legion, and that the words ‘British Legion’ had become well-known all over the country as meaning the association of persons associated for its purposes. He further stated that it is a fallacy to say they could not prevent the defendant from registering its name if there was proved to be a serious risk of damage to the association or that prior to grant of the Royal Charter the persons forming that association could not have sued for the relief that was sought before him.
In effect the sign ‘British Legion’ was owned by the then collective members of the association of the British Legion. Similarly, the trade mark AUSTBAR was owned by the collective members of the Association (whether in fact those members were the State Bar Associations or the individual barristers who derived their memberships of the Association through the State Bar Associations).
In the matters before me, the Association had a constitution which provided at clause 5 that ‘There shall be an Australian Bar Council which shall control and manage the business and affairs of the Australian Bar Association.’ The equity which had arisen in the trade mark AUSTBAR through its use formed a part of the ‘business and affairs’ of the Association and (as identified by the amendment to the application) the members of the Council were a proper applicant to register 1560119 AUSTBAR and to assign that trade mark as trustees on behalf of the members of the Association (and to apply to the Registrar of Trade Marks to record the change of change of that ownership).
Mr Minus, in his submissions, also draws the Registrar’s attention to the fact that applications for registration of trade marks should not be made in the name of trusts. In this he is correct. However, applications may be made in the names of the trustees of trusts.
I note that the Trade Marks Office Manual of Practice and Procedure states at 1.1.9:
• 1.1.9 Trusts -
Where the name of an applicant appears to be the name of a trust, this should be queried. The trust’s name as applicant should be replaced by the name(s) of the trustee(s). A trust imposes a personal equitable obligation on the trustee to deal with the property for the benefit of the beneficiaries or for the advancement of certain purposes (e.g. a charity). Because a trust is a relationship, it is a legal and factual impossibility for a trust to be an applicant or registered owner of a trade mark. It is the trustee who should be specified as the applicant, with the ownership details also likely to reference the trust that the applicant is the trustee of. The trustee will be bound by its common law and equitable duties, as well as the terms of the trust deed, to deal with the property of the trust (including any trade marks) appropriately. Please note however, continuing to reference the trust detail as part of the owner name is not compulsory as any amendment to applicant details is only limited to satisfying the requirement of legal personality.
Class 16: Directories (printed matter); Printed matter; Books; Educational materials in written form; Magazines (periodicals); Newsletters; Books for celebrating important events; Membership certificates; Journals
Class 35: Association services being the promotion of the interests of members of the association; Association services being the provision of business support or advice; Career information and advisory services (other than educational and training advice); Compilation of directories for publishing on the Internet; Compilation and provision of online directories; Compilation of business directories; Online promotion on a computer network; Market research; Sponsorship (promotion and marketing services); Marketing; Advertising; Compilation of information into computer databases; Vocational guidance (employment advice and information); Lobbying (promoting, publicising or otherwise representing the interests or concerns of others)
Class 41: Association services being the provision of training and education to members of the association; Legal education services; Education services; Publication of magazines; Publishing of newsletters; Publishing services; Event management services (organisation of educational, entertainment, sporting or cultural events); Organisation of ceremonial events; Arranging and conducting of conferences; Conducting of educational conferences; Providing online electronic publications (not downloadable); Online (electronic) publication of news; Providing information, including online, about education, training, entertainment, sporting and cultural activities; Provision of education services via an online forum; Publication of electronic books and journals online; Publication of multimedia material online; Weblog (blog) services (online publication of journals or diaries); Arranging and conducting of lectures; Arranging and conducting of seminars; Arranging and conducting of symposiums; Arranging and conducting of workshops (training); Conducting of conventions; Conducting of exhibitions for educational purposes; Conducting seminars; Mentoring (training); Multimedia production, other than for advertising purposes; Electronic publication of information on a wide range of topics, including online and over a global computer network; Career advisory services (education or training advice); Vocational guidance (education or training advice); Publication of journals
Class 45: Association services (providing legal representation or legal advice to members of the association); Compilation of legal information; Information services relating to legal matters; Legal advice; Legal advocacy services; Legal consultancy services; Legal enquiry services; Legal lobbying services; Legal mediation services; Legal research; Legal services; Legal support services; Providing information, including online, about legal services; Provision of judicial information; Barrister services; Alternative dispute resolution services; Dispute and conflict resolution (arbitration services); Mediation; Forensic advice for criminal investigations; Litigation advice; Lobbying services relating to legislation and regulation
Specification of Goods and Services for 1650033 AUST BAR
Class 9: Education software; Films bearing recorded educational material; Interactive education software; Directories (electric or electronic); Magazines downloaded via the internet; Holograms; Computer programmes (programs) and recorded software distributed online; Computer programs (downloadable software); Computer programs for planning conferences; Computer software applications (downloadable); Downloadable image files; Downloadable software applications (apps); Downloadable webcasts; Electronic publications (downloadable); Pre-recorded audio discs; Pre-recorded discs; Pre-recorded films; Recordings of television programmes; Sound recordings; Computer software; Computer databases; Data compilations; Training materials (apparatus); Electronic and recorded multimedia publications; Carrying cases adapted for electronic media; Electronic diaries; Telecommunications apparatus; Apparatus for electronic publishing
Class 16: Diaries; Directories (printed matter); Printed matter; Books; Educational materials in written form; Magazines (periodicals); Newsletters; Books for celebrating important events; Membership certificates; Journals; Holograms (decals); Printed holograms; Decalcomanias
Class 35: Association services being the promotion of the interests of members of the association; Association services being the provision of business support or advice; Compilation and provision of online directories; Compilation of information into computer databases; Data compilation for others; Career information and advisory services (other than educational and training advice); Compilation of directories for publishing on the Internet; Compilation of business directories; Online promotion on a computer network; Market research; Sponsorship (promotion and marketing services); Marketing; Advertising; Vocational guidance (employment advice and information); Lobbying (promoting, publicising or otherwise representing the interests or concerns of others); Charitable services, namely organising and conducting volunteer programmes and community service projects; Charitable services, namely the recruitment, organisation and deployment of volunteers; Retail services; Event management services (organization of exhibitions or trade fairs for commercial or advertising purposes); Promotion (advertising) of travel
Class 41: Association services being the provision of training and education to members of the association; Educational services; Legal education services; Publication of magazines; Multimedia production, other than for advertising purposes; Publication of multimedia material online; Weblog (blog) services (online publication of journals or diaries); Organising of entertainment and social events; Career information and advisory services (educational and training advice); Vocational guidance (education or training advice); Charitable services, namely academic mentoring; Charitable services, namely education and training; Organising charitable fundraising events being the provision of entertainment, sporting and cultural services; Organisation of ceremonial events; Arranging and conducting of conferences; Electronic publication of information on a wide range of topics, including online and over a global computer network; Online (electronic) publication of news; Providing information, including online, about education, training, entertainment, sporting and cultural activities; Providing online electronic publications (not downloadable); Providing online videos, not downloadable; Provision of education services via an online forum; Publication of electronic books and journals online; Book publishing; Publishing by electronic means; Publishing of books; Publishing of newsletters; Publishing services; Event management services (organisation of educational, entertainment, sporting or cultural events); Conducting of educational conferences; Arranging and conducting of lectures; Arranging and conducting of seminars; Arranging and conducting of symposiums; Arranging and conducting of workshops (training); Conducting of conventions; Conducting of exhibitions for educational purposes; Conducting seminars; Mentoring (education and training); Career advisory services (education or training advice); Publication of journals
Class 45: Association services (providing legal representation or legal advice to members of the association); Online social networking services; Compilation of legal information; Information services relating to legal matters; Legal advice; Legal advocacy services; Legal consultancy services; Legal enquiry services; Legal lobbying services; Legal mediation services; Legal research; Legal services; Legal support services; Providing information, including online, about legal services; Lobbying services relating to legislation and regulation; Charitable services, namely mentoring (personal or spiritual); Provision of judicial information; Barrister services; Alternative dispute resolution services; Dispute and conflict resolution (arbitration services); Mediation; Mediation services (arbitration services); Forensic advice for criminal investigations; Litigation advice; Litigation services; Certification (licensing) services; Life coaching (personal mentoring and support services); Judicial advocacy services; Legislative advocacy services
[24] See Accor at [307].
5
25
0