Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky
[2013] ATMO 97
•22 November 2013
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Australian Boutique Markets Pty Ltd to registration of trade mark application 1397940(35) - BOUTIQUE MARKETS LOGO - filed in the name of Rachael Zelensky and Jeffrey Zelensky.
Delegate: | Robert Wilson |
Representation: | Opponent: Marc Saadie of Kemp Strang Lawyers. Applicant: David Logan of Counsel, instructed by Go Trademarks. |
Decision: | 2013 ATMO 97 Section 52 opposition: ss 41, 42(b), 59 and 60 considered – opposition unsuccessful – trade mark to proceed to registration. |
Background
This is an opposition brought by Australian Boutique Markets Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (the Act) to registration of the trade mark subject of the application detailed below (‘the Application’) in the names of Rachael Zelensky and Jeffrey Zelensky (collectively referred to as ‘the Applicant’):
Application Number: | 1397940 | |
Trade Mark: | (‘the Applicant’s Trade Mark’) | |
Priority Date: | 3 December 2010 | (‘the Priority Date’) |
Services: | Class 35: Retail services; wholesaling of goods (by any means); presentation of goods on communication media, for retail purposes; logistics services (business management and organization of facilities and resources); marketing; advertising; promotional services; business management; business administration; providing information, including online, about advertising, business management and administration and office functions | |
The Opponent filed a Notice of Opposition (‘the Notice’) on 29 September 2011. The Notice nominated a number of grounds of opposition pursuant to various sections of the Act. As discussed below, this decision is confined to discussion only of those grounds pursuant to ss 41, 42(b), 59 and 60 of the Act.
The Evidence
The parties served and filed Evidence in Support, Evidence in Answer and Evidence in Reply as follows:
Evidence in Support
Statutory Declaration by the founder, sole director and secretary of the Opponent, Elena Gina Saadie made 27 September 2012, with Exhibits A to T and Sealed Exhibits A and B (‘the First Saadie Declaration’).
Evidence in Answer
Statutory Declaration by freelance graphic designer and illustrator, Michelle Helen Freer made 20 September 2012, with Exhibits MHF1 to MHF2 (‘the Freer Declaration’); and
Statutory Declaration by one of the co-applicants, Rachael Mary Zelensky made 23 October 2012, with Exhibits RMZ-1 to RMZ-35 (‘the Zelensky declaration’).
Evidence in Reply
Statutory Declaration by Elena Gina Saadie made 29 May 2013, with Exhibits A to C (‘the Second Saadie Declaration’); and
Statutory Declaration by graphic designer and illustrator, Arthur Sclavenitis made 29 May 2013, with Exhibits A-1 to A-5 (‘the Sclavenitis Declaration’).
Once the time allowed for filing and serving evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. The Applicant requested a hearing, and the Opponent indicated its intention to attend the same. Prior to the hearing the Opponent provided written submissions, to which the Applicant responded with submissions of its own.
The Applicant, or associated entities, has operated markets since 2007. This appears to involve obtaining a venue for the markets and leasing stalls within the venue to various boutique retailers: such markets being single day events. The Applicant also undertakes promotion of the market events. According to the Zelensky Declaration, since 2009 over sixty such markets have been held utilising the Applicant’s Trade Mark.
The Opponent has been trading under the business name Sydney Boutique Markets since July 2010. The business activities of the Opponent appear to be similar to those of the Applicant, and are described in the First Saadie Declaration as:
[T]he management and promotion of market events which comprise of multiple boutique retailers in the fashion and speciality retail industries. The Opponent’s customers include both the market stall holders and the patrons who attend the market events.
According to the First Saadie Declaration the Opponent has ‘since the commencement of the business in July 2010 prominently displayed [the trade mark detailed below] on the Opponent’s business, advertising, and promotional materials’.
Trade Mark Number: | 1405672 | ||
Trade Mark: | (‘the Opponent’s Trade Mark’) | ||
Priority Date: | 26 January 2011 | ||
Services: | Class 35: Event management services (organisation of exhibitions or trade fairs for commercial or advertising purposes, market organisation and management services, marketing, advertising and promotion of markets and stallholders, retail services | ||
Status: | Lapsed/Not protected | ||
I heard the matter as a delegate of the Registrar of Trade Marks on 9 October 2013. Marc Saadie of Kemp Strang appeared by telephone for the Opponent. Mr Saadie’s oral submissions were supported by written submissions emailed to the Applicant’s representative and to me on 30 September 2013. Mr David Logan of Counsel, instructed by GO trademarks, appeared for the Applicant. Mr Logan’s oral submissions were supported by written submissions emailed to the Opponent’s representative and to me on 8 October 2013.
Grounds of Opposition, Onus and Standard of Proof
To succeed, the Opponent bears the onus of establishing at least one of the grounds nominated in the Notice, with the relevant standard of proof required being the ordinary civil standard based on the balance of probabilities.[1] The date at which the rights of the parties are to be determined is 3 December 2010: this being the filing date of the application.[2]
[1] Pfizer Products Inc v Karam (2006) 70 IPR 599 [6]-[26].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
The Notice lists some eleven grounds corresponding to various provisions of the Act. The Opponent’s written submissions specifically addressed only those grounds pursuant to ss 41, 42(b), 59 and 60. At the hearing the Opponent’s oral submissions were confined to matters relevant to ss 41 and 60. The Applicant, at the commencement of its oral submissions requested clarification from the Opponent as to whether it was continuing to rely on grounds pursuant to ss 42(b) and 59. The Opponent indicated that it would not be exploring those grounds any further. Both the Opponent’s and the Applicant’s written submissions addressed grounds pursuant to ss 42(b) and 59. Notwithstanding that these grounds were not explored further during oral submissions I consider it necessary that I address them below along with the grounds pursuant to ss 41 and 60. It is not necessary for me to consider the remaining grounds as they were not pursued by the Opponent.
Discussion
Section 41
Section 41 has recently been amended (15 April 2013) however it is the section as it stood at the Priority Date which is applicable. So far as was relevant, the section provided:
Trade mark not distinguishing applicant’s goods or services
(1) …
(2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note:For goods of a person and services of a person see section 6.
(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a)the Registrar is to consider whether, because of the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.
Note 1:For goods of a person and services of a person see section 6.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
The test for determining whether a trade mark is inherently adapted to distinguish was set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks:
[W]hether a mark is adapted to distinguish [will] be tested by reference to the likelihood of other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[3]
[3] (1964) 111 CLR 511, 514.
Where a trade mark is a composite mark consisting of a graphic device and words, whether the trade mark is inherently adapted to distinguish is to be assessed by considering the trade mark as a whole, rather than dissecting the trade mark into its component parts and considering the distinctiveness of each component part.
The Opponent has submitted that the Applicant’s Trade Mark is not capable of distinguishing the Applicant’s services from the goods and services of other traders. To support this argument the Opponent pointed to the descriptive nature of the word elements of the Applicant’s Trade Mark, and submitted that:
The words ‘boutique markets’ (when used singularly or collectively) are presently in common use and have become synonymous in the trade which the Applicant and Opponent operate to describe the qualities and characteristics of the goods and/or services of traders in the industry.
and that:
The words ‘boutique markets’ are clearly required by other traders in the ordinary course of their business.
The evidence to support these submissions is contained in Exhibits O and P of the Saadie Declaration. Exhibit O contains printouts of the Macquarie Dictionary definitions of the words ‘boutique’ and ‘market’ which show that they are English words with straightforward meanings. Exhibit P is described by Ms Saadie to be ‘a selection of examples in which [a number of] Australian traders utilize the words ‘boutique markets’ to describe their goods and services’. Examples of these include: Muddie Boutique Markets, Mumz Share the Love Boutique Market, and Twig & Bloom Boutique Market.
The Opponent has further submitted that:
[T]he Vine Device is not sufficient to overcome the descriptiveness of the words ‘BOUTIQUEMARKETS’ which remain the prominent and memorable element, and focal part, of the Opposed Mark.
To support this submission the Opponent has provided Exhibits Q and R of the Saadie Declaration. Exhibit Q shows examples of the vine device, or something very similar, being used in a variety of places including: the covers of books; on the outside of an envelope used for donations; an advertisement in connection with goods unrelated to those of either the Applicant or Opponent; and as the artwork on the cover of an album of musical recordings. Exhibit Q also shows examples of graphic devices which are declared by Ms Saadie to be ‘available to download in vector form and be used in personal (non-commercial) applications’. Exhibit R is a copy of the TM Headstart Results Report which was provided to the Opponent in connection with the TM Headstart Application for the Opponent’s Second Trade Mark (below). This report indicates that the examiner considered that the Opponent’s Second Trade Mark lacked distinctiveness and was one which was likely to be needed by other traders.
| ‘the Opponent’s Second Trade Mark’ |
In response, the Applicant has submitted that its trade mark is inherently adapted to distinguish. Mr Logan referred me to Part 22, Section 27 of the Trade Marks Office Manual of Practice and Procedure which concerns composite trade marks and the indication therein that when assessing a trade mark’s inherent adaption to distinguish it is necessary to consider the trade mark as a whole. Mr Logan emphasized the importance of the vine device in the Applicant’s Trade Mark. Mr Logan further responded to the Opponent’s evidence regarding the use of the vine device in other contexts and submitted that;
The fact that the vine device may have been used by others in other contexts … is not relevant. The question is whether other traders in the designated or similar services (not other unrelated industries or contexts – building industry or music) would be wanting to use this composite trade mark.
Mr Logan also submitted that:
What is significant is that there is in fact no evidence of anyone else engaged in the provision of the designated or similar services actually using the words ‘Boutique Markets’ and the vine device, before the priority date, or even after the priority date.
That other traders are not using a particular trade mark or element of a trade mark is relevant but is not determinative. A similar question was considered by the Delegate in Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd:
The fact that no other trader is using the trade mark in the ordinary course of trade … is not determinative, per se, of the inherent adaptability of the proposed trade mark to distinguish …[4]
[4] [2010] ATMO 37, [38] (Thompson).
There is a tendency for trade marks which include a device element alongside word elements to be remembered and referred to by the word elements of the trade mark. In this case, however, due to the comparative size of the device, the detail in the device, and that it is not a mere embellishment or flourish is sufficient such that when considered overall the Applicant’s Trade Mark is inherently adapted to distinguish. The Opponent has failed to satisfy me that the Applicant’s Trade Mark is not inherently adapted to distinguish the Applicant’s services from the goods or services of other persons. Consequently, the ground of opposition pursuant to s 41 has not been established.
Section 42(b)
Section 42(b) of the Act provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law.
In assessing whether use of a trade mark would be contrary to law the Registrar is obliged to take into account the operation of law and legislation other than the Act.[5] The test to be satisfied is that the use of the opposed trade mark would, rather than could, be contrary to law on the balance of probabilities.[6]
[5] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
[6] Ibid.
The Opponent has submitted that it relies on the evidence provided in the First Saadie Declaration and the Second Saadie Declaration ‘in support of the statement that the Opposed Mark contains elements which are in breach of Copyright Law’. Ms Saadie declared in her first declaration that:
I believe that the use of the Opposed Mark by the Applicant would be contrary to law as the use of the Vine Device in the Opposed Mark would contravene section 31 of the Copyright Act 1968 (Cth).
Copyright can exist in a number of different types of original works. It seems likely that the vine device would be considered an artistic work. For the sake of simplicity, in the following discussion I refer to copyright in artistic works but the principles apply to other types of original works.
Section 31 of the Copyright Act 1968 is headed ‘Nature of copyright in original works’. This section describes the nature of copyright and provides, for example, that:
[C]opyright … is the exclusive right in the case of an artistic work, to reproduce the work in a material form.[7]
[7] Copyright Act 1968 s 31(b)(i).
It seems to me that it is not possible, as suggested by Ms Saadie, to contravene s 31 itself: this section merely defines the scope of the copyright associated with various forms of original works. The relevant infringement provisions of the Copyright Act1968 appear in ss 36 to 39. The Opponent has not stated which of the infringement provisions are relevant or which of the particular rights amongst the bundle of rights which constitute copyright have been infringed. In any event, it is necessary, in simplest terms, for the Opponent to establish, firstly, that copyright subsists in the vine device and, secondly, that use of the vine device in the Applicant’s Trade Mark by the Applicant would infringe that copyright.
To establish that copyright subsists in the vine device in Australia the Opponent needs to at least establish who the owner of the copyright is, or show that first publication of the vine device occurred in Australia. The Opponent has gone no further than the declaration of Ms Saadie that, ‘I believe that the original owner of the Vine Device is a contributor to the “Graphic Hive” website’, and Ms Saadie has provided some examples of use of the vine device by person’s other than the Applicant. The Opponent has, in effect, fallen at the first hurdle; and I find that the ground of opposition under s 42(b) has not been established.
Section 59
Section 59 of the Act is reproduced below:
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia, or
(b) to assign the trade mark to a body corporate for use by the body Corporate in Australia;
in relation to the goods and/or services specified in the application.
As observed by Jacobson J, s 59 is a challenging ground for an Opponent to establish because of
the subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent.[8]
[8] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] 75 IPR 478, [161]-[163].
Additionally, the onus of establishing the ground remains with the Opponent until it has established a prima facie case of the Applicant’s lack of intention, at which stage the onus moves to the Applicant for rebuttal.[9]
[9] Ibid [163].
The Opponent has submitted that in respect of s 59 the point in time at which the requisite intention is to be assessed is when the last evidence is filed. The Opponent has referred me to the 2008 decision of the Registrar’s delegate in Americana International Ltd v Suyen Corporation in this regard, wherein the Delegate stated:
What is clear is that the intention of the applicant is an ongoing intention not limited by its state of mind at the filing date of the application. … [I]t seems to me that the correct ‘cut-off’ date is when the last evidence is filed.[10]
This question was addressed most recently by the Full Federal Court in Food Channel Network Pty Ltd v Television Food Network GP.[11] In that decision it was determined that the intention to use a trade mark ‘must exist at the date of application’.[12] It was further stated that use after the date of application ‘may be relevant in drawing inferences as to the issue of intention as at the date of application’.[13] Consequently, it is incumbent upon the Opponent to establish that the Applicant did not intend to use the trade mark at the date of application.
[10] [2008] ATMO 4, [27] (Lyons).
[11] [2010] FCAFC 58.
[12] Ibid, [74] (Keane CJ, Stone and Jagot JJ).
[13] Ibid.
In the Opponent’s written submissions Mr Saadie argued that:
The Opponent relies on the evidence provided by the Applicant in its evidence in reply to claim that the Applicant has not shown use of the Opposed Mark at the date the evidence was provided.
and that:
The Applicant has failed to show use of the Opposed Mark and instead showed a number of variants of the Opposed Mark which are not the subject of this opposition.
The evidence of use of the Applicant’s Trade Mark across the various exhibits shows use of either the Applicant’s Trade Mark, or a variation of it with some additional words. The additional words include, variously: ‘portside wharf’; ‘Portside Wharf, Hercules Street, Hamilton’; or ‘design, craft, fashion’. Some of the example flyers have the vine device to the left of the words BOUTIQUE MARKETS rather than above. The relative size of the vine device and the words remains about the same across the exhibits.
The Opponent has submitted that when considered as a whole the addition of words to the Applicant’s Trade Mark and the re-arrangement of the elements of the Applicant’s Trade Mark affect the identity of the trade mark to such an extent that use of the trade mark in those forms does not amount to use of the trade mark for the purposes of the Act. I disagree with this proposition.
Section 7(1) of the Act states that:
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.
The words added to the Applicant’s Trade Mark have a low level of inherent adaptation to distinguish the services as they are indicators of geographic origin or describe the nature of the goods being sold in the markets. While the addition of these words may affect the identity of the mark to a minor extent they are far from being additions which substantially affect the identity of the Applicant’s Trade Mark. Moving the vine device from above BOUTIQUE MARKETS to the left of the words is an alteration of the trade mark which also may affect the identity of the trade mark to some minor extent, but, again, is far from an alteration which substantially affects the identity of the Applicant’s Trade Mark.
As there is no other evidence provided by the Opponent in respect of this ground of opposition, the Opponent has failed to establish a prima facie case of the Applicant’s lack of intention to use its trade mark as at the date of filing. Even if the Applicant had established a prima facie case, the demonstrated use by the Applicant of its trade mark before, and since the date of application would have been sufficient to enable me to be satisfied that the Applicant had the requisite intention as at the date of filing. Consequently, the Opponent has been unsuccessful in respect of the ground of opposition pursuant to s 59 of the Act.
Section 60
Section 60 of the Act is reproduced below:
Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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.
To establish a ground of opposition under s 60 an opponent must be able to demonstrate that at the relevant date (the priority date of the trade mark) there was another trade mark which had acquired a reputation in Australia amongst a significant section of the public such that use of the opposed trade mark would be likely to deceive or cause confusion. The Opponent has stated that its trade mark – ‘the Opponent’s Trade Mark’ (shown again below) – had such a reputation at the priority date.
| Trade Mark No.: 1405672 | ‘the Opponent’s Trade Mark’ |
In McCormick & Co Inc v McCormick, Kenny J considered what might be intended by the word ‘reputation’.[14] Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally.’ Her Honour quoted the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[15]
[14] (2000) 51 IPR 102.
[15] (1992) 33 FCR 302, 343.
On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has a very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[16]
[16] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.
An important factor for deciding an opposition under the provisions of s 60 is the consideration of what should be regarded as a ‘significant section of the public’. In Le Cordon Bleu BV v Cordon Bleu International Ltee, Heerey J observed: [17]
What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.
[17] (2000) 50 IPR 1, 20.
In looking at the evidence provided by the Opponent it is important that sight is not lost of the requirement that the Opponent must establish the reputation as at the Priority Date. From this point of view, evidence of use of the Opponent’s Trade Mark after the Priority Date does not assist that determination.
Ms Saadie declared in her first declaration that:
Since the commencement of the business in July 2010 ... [the Opponent’s Trade Mark] was prominently displayed on the Opponent’s business, advertising, and promotional materials, and was continuously utilised by the Opponent up to and beyond the date [the Opponent’s Trade Mark] was lodged for registration.
For the purposes of clarity, I list some relevant dates:
| Date of declared first use of Opponent’s Trade Mark: | July 2010 |
| Priority Date of the Applicant’s Trade Mark: | 3 December 2010 |
Contrary to Ms Saadie’s declaration, the lodgment of an application for registration of its trade mark by the Opponent after the Priority Date has no bearing on the reputation of the Opponent’s Trade Mark at the Priority Date. Indeed, it is only evidence of use of the Opponent’s Trade Mark in the roughly five month period from July 2010 to 3 December 2010 which is relevant.
In support of this ground of opposition the Opponent has referred to a number of exhibits in the First Saadie Declaration. I will discuss the more relevant below.
Exhibits E, G, H, I and J are all declared to be dated after the Priority Date, and are of no assistance to the Opponent.
Exhibit F is declared to be a copy of a printed flyer bearing the Opponent’s Trade Mark and of which ’30,000 copies where [sic] produced on 15 October 2010 and distributed throughout Sydney between 15 October 2010 and 12 December 2010’. The flyer prominently bears the Opponent's Trade Mark and is advertising a market event to be held on 12 December 2010. The Applicant has submitted that ‘it is not said how many (if any) were distributed before the priority date’. I agree with the Applicant that this is a shortcoming of this evidence. There is also no evidence of how or where these flyers were distributed. Without additional information about this exhibit, I find it difficult to afford it much weight.
Exhibit K is declared to be ‘a newspaper editorial in the “Hills Shire Times” newspaper … on 2 November 2010’. The exhibit appears to be a copy of the third page of the newspaper. There are a number of single paragraph articles in the right hand column under the heading ‘Briefly’. The third paragraph begins ‘SYDNEY Boutique Markets will bring fashion and accessories to the Hills on December 12 …’. This article does not include the Opponent’s Trade Mark, in the manner depicted above, and is of little assistance to the Opponent.
Exhibit L is declared to be ‘a screen shot of the website which displayed [the Opponent’s Trade Mark] in this manner between July 2010 and May 2011’. The screenshot prominently displays the Opponent’s Trade Mark. There is no evidence about the amount of traffic that visited the website during the period stated. This exhibit is of limited assistance to the Opponent.
Exhibit M consists of three parts, all of which are declared to be ‘promotional and business material that utilised [the Opponent ‘s Trade Mark]’. The first part is a photograph of two tote bags, one dark coloured, one light coloured. Both bear the Opponent’s Trade Mark. It is declared that 500 of these tote bags:
were produced before and distributed during the market event on 12 December 2010, and 500 of which were produced before and distributed during the market event on 10 April 2010.
This second date must be an error and I assume that it should read 10 April 2011. The mere production of tote bags does little to create a reputation, and as the distribution of the tote bags occurred in both instances after the Priority Date this particular evidence is of little assistance to the Opponent.
The second part of Exhibit M is two photographs of two different vinyl banners. Both bear prominently the Opponent’s Trade Mark and both are advertising market events being on Sunday 12 December and Sunday 10 April respectively. The first banner is declared to have been:
erected between 27 November 2010 and 12 December 2010 … on the corner of Showground Road, Castle Hill NSW 2154, which has an Annual Average Daily Traffic of approximately 36,715 vehicles.
The photograph provided shows the banner, not in situ, but on the floor in what could be an office. The Opponent has submitted that there is no corroborating evidence in respect of this exhibit, and Mr Logan appears to be correct in this. Nevertheless, I accept the declaration of Ms Saadie regarding this exhibit and have taken this use of the Opponent’s Trade Mark into account in arriving at my decision. The second banner is declared to have been on display from 19 March 2011 to 10 April 2011. This period is after the Priority Date, and this evidence of no assistance to the Opponent.
The third part of Exhibit M is a copy of a ‘stall holder information package which was provided to each stall holder prior to the 12 December 2010 market event and 10 April 2010 market event’. This part of the exhibit consists of three pages. The Opponent’s Trade Mark appears prominently at the top of each page. Each page indicates that it refers to the market event of 12 December 2010. It seems reasonable to assume that these particular documents were provided prior to the 12 December 2010 market. There is, however, nothing in the declaration or other evidence which supports a view that these documents were provided to stallholders before the Priority Date. Consequently, this evidence is of little assistance to the Opponent.
There is insufficient evidence provided by the Opponent to support a view that at the Priority Date the Opponent’s Trade Mark had acquired a reputation in Australia amongst a significant section of the public such that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. Consequently, the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.
Decision
Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:
[T]he Registrar must, at the end, decide:
(a) to refuse to register the trade mark: or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application; having regard to the extent (if any) to which any ground on which the application was opposed has been established.
I have found that the Opponent has failed to establish any of the grounds of opposition it raised pursuant to ss 41, 42(b), 59 or 60. The Trade Mark may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.
Costs
As the successful party the Applicant is entitled to its costs and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.
Robert Wilson
Hearing Officer
Trade Marks Hearings
22 November 2013
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