Axcl Holdings Pty Ltd v Athina Rougalas

[2009] ATMO 59

TRADE MARKS ACT 1995

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

Re:Opposition by AXCL Holdings Pty Limited to registration of trade mark application 1152494(4) – AXCL logo - filed in the name of Athina Rougalas.

Delegate:	Debrett Lyons
Representation:	Opponent: Sue Chrysanthou of counsel, instructed by Hazan Hollander, Solicitors Applicant:   Homer Nicholls
Decision:	2009 ATMO 59 Section 52 opposition: opposition succeeds under section 58 – Applicant not the owner of the trade mark ; section 42(b) and Copyright Act considered.

Background

1. On 15 December 2006 Athina Rougalas (the applicant) filed application number 1152494 in class 4 to register the trade mark shown below:

2. The application was examined and found acceptable for possible registration in respect of the following goods:

   Automotive lubricants for car engines; duct lubricants; graphited lubricants; industrial lubricants; lubricants; lubricants being gear oils; lubricants containing low friction additives; lubricants for agricultural implements; lubricants for industrial apparatus; lubricants for machines; lubricants for motor vehicles; lubricants for use in industrial processes; lubricants for use in machine cutting; lubricants in the nature of oils; motor vehicle lubricants; oil well drilling lubricants; synthetic lubricants; greases for the lubrication of exposed gears; greases for the lubrication of joints; greases for use with ball-bearings; high pressure greases; lubricating grease; marine greases.

3. Acceptance of the application was advertised in the Australian Official Journal of Trade Marks on 26 April 2007.

4. On 23 July 2007, AXCL Holdings Pty Limited (the opponent) lodged a Notice of Opposition to registration under section 52 of the Trade Marks Act 1995 (the Act), listing most grounds of opposition available under the Act.

5. The parties served and filed evidence.  The evidence-in-support comprises:

   (a) the statutory declaration of William Baker dated 23 April 2008 ; and

   (b)the statutory declaration of Ali Murtaza dated 3 June 2008.           

   The evidence-in-answer comprises the statutory declaration of Theodore        Rougalas dated 23 October 2008.

6. A hearing was convened in Sydney on 9 July 2009 before me, Debrett Lyons, a delegate of the Registrar of Trade Marks.

7. At the hearing, the opponent was represented by Ms. Sue Chrysanthou of counsel, instructed by Hazan Hollander, Solicitors.  The applicant appeared in person and was accompanied by her father, Mr. Theodore Rougalas, and by Mr. Homer Nicholls.  Although Mr. Nicholls was the nominated representative of the applicant, both Mr. Rougalas and the applicant were also heard on various matters.

8. At the hearing, the opponent presented the applicant with outline submissions. The grounds of opposition pressed were those under sections 42(b), 58, 59, 60 and 62A of the Act.

9. It was clear to me at the hearing that the applicant had so little appreciation of the opponent’s arguments that I wrote to the parties indicating that I regarded it as procedurally fair to allow the applicant further time in which to lodge written submissions with the office.  Further time was given.  Nothing was received.

   Discussion

10. The heart of this matter is disputed ownership of a trade mark in consequence of what appears to have been a largely unregulated arrangement between a foreign manufacturer of goods and the Australian distributor of those goods. 

11. The foreign manufacturer gave evidence on behalf of the opponent but is not party to the proceedings.  The opponent is the currently appointed Australian distributor of the foreign made goods and the applicant is the daughter of a director of the Australian company which was the original Australian distributor of those same goods.  The remaining facts of relevance are to be found in the following discussion.

12. In order for the opponent to succeed, it bears the onus of establishing at least one of its grounds of opposition based on the balance of probabilities.

    Section 42(b)

13. Section 42(b) states that the application “must be rejected if its use would be contrary to law”. 

14. In the case of Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 it was held that, for the purposes of section 42(b), the Registrar is obliged to take into account the operation of laws and legislation in addition to the Act.

15. Ms. Chrysanthou submitted that use of the trade mark by the applicant would be contrary to the Copyright Act 1968, contrary to the Trade Practices Act 1974 and would constitute the tort of passing off at common law.

16. I turn to examine the claim that the applicant’s use of the trade mark would be contrary to the Copyright Act 1968 (CA).  The opponent’s evidence relevant to that enquiry is this - AXCL Gulf FZE (AXCL Gulf) is a “free  zone establishment” located in the United Arab Emirates (UAE) which manufactures, sells and exports automotive, marine and industrial lubricants under the trade mark appearing below:

    (the AXCL Gulf logo).

17. I say here that I regard the difference between the applicant’s trade mark and the AXCL Gulf logo to be  immaterial to my further analysis of this case.

18. Mr Murtaza is the Chief Executive Officer of AXCL Gulf.  He declares that the AXCL Gulf logo “was designed by the founder of Axcl Gulf FZE, Asad Murtaza in June 1993.”  He states that the AXCL Gulf logo has since been used continuously by AXCL Gulf.

19. There was no relevant evidence from the applicant on the copyright claim.

20. Ms. Chrysanthou submitted that the AXCL Gulf logo is an “artistic work” within the meaning of the CA; that copyright subsists in it; and that its use by the applicant would contravene the infringement provisions of the CA.

21. An artistic work is defined in section 10(1)(a) of the CA to “include a drawing, whether it is of artistic quality or not.”  Simple geometric shapes have been held  to be artistic works in which copyright might subsist: see Re Karo Step Trade Mark [1977] RPC 255 per Whitford J at 273; see Debrett Lyons, Copyright in Trade Marks [1994] 1 EIPR 21.  I am satisfied that the AXCL Gulf logo qualifies as an “artistic work” as understood by section 10 of the CA.

22. Section 29(1)(a) of the CA states:

    29Publication

    (1)Subject to this section, for the purposes of this Act:

    (a)a literary, dramatic, musical or artistic work, or an edition of such a work, shall be deemed to have been published if, but only if, reproductions of the work or edition have been supplied (whether by sale or otherwise) to the public;

23. The artistic work has clearly been published and so section 32 of the CA states, relevantly:

    32Original works in which copyright subsists

    (1)…

    (2)Subject to this Act, where an original literary, dramatic, musical or artistic work has been published:

    (a)copyright subsists in the work; or

    (b)if copyright in the work subsisted immediately before its first publication—copyright continues to subsist in the work;

    if, but only if:

    (c)the first publication of the work took place in Australia;

    (d)the author of the work was a qualified person at the time when the work was first published; or

    (e)the author died before that time but was a qualified person immediately before his or her death.

    (3)…

    (4)In this section, qualified person means an Australian citizen or a person resident in Australia.

24. For copyright to subsist in an artistic work, the work must be “original”, but as observed by Madgewick J. in the Advantage Rent-a-Car case (supra):

    The concept of originality is also not a particularly rigorous one.  What is required is that the creator of the work should not have copied it from some other work: see University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 608–10; (1916) 1B IPR 186 at 191, and Victoria Park Racing & Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 at 511; 1A IPR 308 at 320 per Dixon J.

25. I am satisfied that the AXCL Gulf logo is an “original” artistic work, there being no evidence before me to suggest that Asad Murtaza copied it from some other work.

26. Section 32(4) of the CA defines a “qualified person” as an Australian citizen, an Australian protected person or a person resident in Australia.  There is no evidence of the nationality or residency status of Asad Murtaza;  certainly nothing to suggest that it might be Australian.  Nevertheless, section 184(1)(c) of the CA extends, by way of regulations, the provisions of the CA to citizens of other countries in the same manner that they apply to persons who are Australian.

27. Section 184(1)(c) states:

    184Application of Act to countries other than Australia

    (1)Subject to this section, the regulations may make provision applying any of the provisions of this Act (other than those of Part XIA) specified in the regulations, in relation to a country (other than Australia) so specified, in any one or more of the following ways:

    (a)…

    (b)…

    (c)so that the provisions apply in relation to persons who, at a material time, are citizens or nationals of that country in like manner as those provisions apply in relation to persons who, at such a time, are Australian citizens;

28. Regulation 4 of the Copyright (International Protection) Regulations 1969 does what is allowed by section 184(1)(c).  It states, relevantly:

    (3)Subject to these Regulations, a provision of the Act relating to a work or subject-matter other than a work that applies in relation to a person who, at a material time, is an Australian citizen applies in relation to a person who, at a material time, is a citizen or national of a Berne Convention country, a Rome Convention country, a UCC country, a WCT country, a WPPT country or a WTO country (a foreign citizen):

    (a)in the same way as the provision applies, under the Act, in relation to an Australian citizen; and

    (b)as if the foreign citizen were an Australian citizen.

29. The Copyright (International Protection) Regulations also contain the following definition of the phrase, “at a material time”:

    3Interpretation

    (1)In these Regulations, unless the contrary intention appears:

    at a material time means:

    (a)in relation to, or in relation to the application of the Act in respect of, a work or subject matter other than a work that is unpublished:

    (i)at the time when the work or subject-matter other than a work was made;

30. The UAE is a constitutional federation of seven emirates, established in 1971.  In terms of the conventions and treaties listed in the Copyright (International Protection) Regulations, the timing of the UAE’s memberships and accessions to those conventions and treaties is set out below:

    ·              Berne Convention  14 April, 2004

    ·              Rome Convention  14 January, 2005

    ·              UCC (Universal Copyright Convention)  Non - member

    ·              WCT (WIPO Copyright Treaty)  14 April, 2004

    ·              WPPT (WIPO Performances and Phonograms Treaty)    9 June, 2005

    ·              WTO  (World Trade Organisation)     10 April 1996    

31. Even assuming that Asad Murtaza was a citizen or resident of the UAE (a matter of which there is no evidence, but a finding I would have been prepared to make on the balance of probabilities and in the absence of any contest by the applicant), I am not satisfied that he was a “qualified person” within the meaning of the CA and the Copyright (International Protection) Regulations 1969 since the UAE was not a member of any relevant convention, nor had it acceded to any relevant treaty, at the time the AXCL Gulf logo was created.

32. Accordingly, by reason of section 32(2) of the CA, copyright does not subsist in the AXCL Gulf logo.

33. Section 36(1) of the CA states that :

    36 Infringement by doing acts comprised in the copyright

    (1) Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright.

34. Since there is no copyright in Australia in the AXCL Gulf logo, its use by the applicant can not be an infringement of copyright under section 36 of the CA and therefore can not be contrary to law under section 42(b) of the Act.  The opponent has not established its ground of opposition under section 42(b) of the Act based on its claim to breach of the CA.

35. That leaves for consideration the opponent’s claims that use of the trade mark would be contrary to the Trade Practices Act 1974 and would constitute the tort of passing off at common law.

36. Those claims, together with the opponent’s ground of opposition under section 60 of the Act, each hinge on a reputation in Australia in a relevant trade mark and I prefer to postpone consideration, if necessary, of that matter until I have considered the remaining grounds of opposition.

    Section 58

37. Section 58 of the Act states that “the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.”

38. The word “owner” is not defined in the Act, although there are many decisions where courts have considered its meaning.  It is well established that in the absence of fraud the owner of a trade mark in Australia for particular goods is taken to be the first person to use it (or one “substantially identical” to it) in the course of trade in Australia in relation to those goods.  In the absence of any use, the first person to apply to register a trade mark will, in most cases, be entitled to claim to be the owner.

39. To establish its section 58 ground the opponent must therefore show that a party other than the applicant first used the trade mark (or one “substantially identical” thereto) in Australia for the same kind of goods as those covered by the application before the 15 December 2006 filing date of the application, or before the applicant’s first use of the opposed trade mark for relevant goods, whichever is the earlier.

40. There is no evidence before me that the applicant herself has ever used the opposed trade mark for any goods or services.  Accordingly, the earliest date at which the applicant’s claim to ownership can be assessed is the 15 December 2006 filing date of the application.

41. Theodore Rougalas, the applicant’s father, is and was at all material times a director of AXCL Gulf Australia Pty Limited (AXCL Gulf Australia), a company which was the exclusive distributor of AXCL Gulf’s goods in Australia from a time in June 2003.  There is evidence before me that shows that this distributorship entailed use of a relevant trade mark in Australia.

42. It is said by the opponent that this distributorship agreement was terminated on 10 December 2006, but for reason which follow it is not necessary for me to decide whether that was so or not.

43. On 1 January 2007, AXCL Gulf appointed the opponent as the exclusive distributor of its products in Australia.

44. For the purposes of section 58, it is not necessary for me to determine ownership of the trade mark as at 15 December 2006 as between AXCL Gulf and AXCL Gulf Australia.  All that I need decide is that, on that date, the applicant was not the owner of the trade mark.  I make that finding. 

45. For the sake of completeness I add only that if the first use in Australia by a person other than the applicant was of the AXCL Gulf logo, then I regard that logo and the trade mark of the application as being substantially identical for the purposes of section 58.

46. I find that the opponent has established the ground of opposition under section 58 of the Act.

    Decision

47. Section 55 of the Act provides:

    55Decision

    (1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a)to refuse to register the trade mark; or

    (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:For limitations see section 6.

    (2)Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.

    Note:For examine and this Act see section 6.

48. I refuse to register application 1152494.

    Costs

49. The opponent is entitled to its costs which I award at the official scale.

    Debrett Lyons
    Hearing Officer
    Trade Marks Hearings
    18 August 2009