B.J White & Wellington Lane Press Pty Ltd & John v Rex Dupain

[2007] ATMO 52

TRADE MARKS ACT 1995

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

Re:Opposition by Barbara Jill White and Chapter & Verse, Book Publishers to registration of applications 992548(19)(41) DUPAIN, 992549(41) MAX DUPAIN, 992928(19) MAX DUPAIN and 1065381(16) DUPAIN proceeding in the name of Rex Dupain and Danina Anderson.

Delegate:

Rachel Dunn

Representation:

Opponent
Angela Bowne of Counsel.
Applicant
No appearance

Decision:

2007 ATMO 52
1. Section 52 opposition. Sections 41, 43, 58, 59, 60 and 62 of the Act. Copyright in artistic works (photographs and negatives); copyright material not intrinsic to trade marks and not germane to the grounds of opposition. Opposition not established on evidence before hearing officer.

2. Costs ordered against opponent.

Background

1. The four applications below proceed in the names of Rex Dupain and Danina Anderson, of Sydney, as co-owners:

   Appn No:                   992548
   Priority Date:             9 March 2004 (‘the relevant date’)

   Goods/Services:         Class: 19 Buildings predominantly made of non-metal materials

   Class: 41 The management and operation of art galleries and the organisation of events pertaining to art

   Trade Mark:               DUPAIN

   Appn No:                   992549
   Priority Date:             9 March 2004 (‘the relevant date’)

   Goods/Services:         Class: 41 The management and operation of art galleries and the organisation of events pertaining to art

   Trade Mark:               MAX DUPAIN

   Appn No:                   992928
   Priority Date:             9 March 2004 (‘the relevant date’)

   Goods/Services:         Class: 19 Buildings predominantly made of non-metal materials

   Trade Mark:               MAX DUPAIN

   Appn No:                   992928
   Priority Date:             19 July 2005 (‘the relevant date’)

   Goods/Services:         Class: 16 Books, stickers, postcards, notebooks, greeting cards, diaries, calendars, address books and notepaper

   Trade Mark:               DUPAIN

2. The applications were accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks.  Barbara Jill White, of Sydney, and Chapter & Verse, Book Publishers, (‘the Opponents’) have filed Notices of Opposition to the registration of the trade mark.  The opponent’s evidence comprises the following declarations:

   ·     Barbara Jill White made 9 December 2004 with Exhibits BJW 1 to BJW 13;

   ·     Barbara Jill White made 9 August 2005 with Exhibits BJW 14 to BJW 16;

   ·     Barbara Jill White made 8 September 2005 with exhibit BJW 17;

   ·     Barbara Jill White made 12 May 2006

   ·     Carol Buck Dettmann made 9 December 2004 with Exhibits CBD 1 to CBD 20;

   ·     Carol Buck Dettmann made 9 August 2005 with Exhibits CBD 21 to CBD 22;

   ·     Carol Buck Dettmann made 12 May 2006 (evidence in support second opposition);

   ·     Eric Ilgvars Sierins made 8 December with Exhibits EIS 1 to El 3;

   ·     Eric Ilgvars Sierins made 12 May 2006;

   ·     Michael Jack Rakusin made 7 December 2004 with Exhibit MJR 1;

   ·     Michael Jack Rakusin made 10 May 2006;

   ·     Guy Marcel Abrahams made 8 December 2004 with Exhibit GMA 1;  

   ·      Guy Marcel Abrahams made 11 May 2006;

   ·     Nicholas Dettmann made 9 August 2005 with Exhibits ND 1 to ND 7;

   ·      Nicholas Dettmann made 10 May 2006.

3. The applicants have served and filed the following declarations:

   ·     Rex Dupain dated 9 May 2005

   ·     Rex Dupain dated 3 June 2005

4. The grounds pursued at the hearing were:

   (a)The opposed trade marks are not capable of distinguishing the goods or services in respect of which the trade marks are sought to be registered from the goods and/or services of another party (section 41 of the Trade Marks Act 1955 ("the Act").

   (b)The use of the opposed trade marks in relation to the applicants' goods or services or some of the applicants' closely related services or closely related goods would be likely to deceive or cause confusion as a consequence of a connotation possessed by the opposed trade marks (section 43 of the Act).

   (c)The applicants are not the owners and are not entitled to claim to be the owners or to be registered as the owners of the opposed trade marks (section 58 of the Act).

   (d)The applicants do not intend to use or to authorise the use of the opposed trade marks in Australia (section 59 of the Act).

   (e)The use of the opposed trade marks would be likely to deceive or cause confusion because they are substantially identical with or deceptively similar to a trade mark(s) that had acquired a reputation in Australia before the priority date of the opposed applications (section 60 of the Act).

   (f) The opposed trade marks were accepted for registration on the basis of evidence or representations made to the Registrar of Trade Marks that were false in material particulars (section 62 of the Act).

5. As a delegate of the Registrar of Trade Marks, I heard the submissions of the opponent, made by Angela Bowne of Counsel, on 18 October 2006.  The applicants did not appear or make written submissions.

   Evidence

6. The evidence shows that Max Dupain was a renowned photographer who died in July 1992.  This opposition is predicated in part upon the terms of the Will of Max Dupain who left some property in his artistic works to his family and some to one of the opponents, Barbara Jill White.  One of the applicants, Rex Dupain, is a well-known photographer in his own right. 

7. The evidence shows that both sides of the dispute have made use of photographic materials left to them by the late Mr Max Dupain.  Ms White, who was Mr Max Dupains’s assistant, was left the exhibition negatives and the copyright thereto; the family which comprises Mrs Diana Dupain (the widow), Danina Anderson (the daughter) and Rex Dupain (the son) were left the balance of the negatives – that is, the commercial negatives, and the exhibition prints, and the copyright thereto.  Both parties have produced or licensed exhibitions, books, calendars etc, which features the works of Max Dupain and prominently feature the name or sign MAX DUPAIN in relation to the productions.  As the law presently stands, there is a relatively complex matrix of factors which go to decide the question of whether the name of a musician or photographer or some other artist is being used in a trade mark sense in relation to various types of goods and services.  A fullsome study of those issues is in my view outside the practical limits of this opposition since I am more than satisfied that the usage shown in the evidence is not trade mark usage in the relevant sense.  Such uses of the sign MAX DUPAIN may or may not be uses of the trade mark MAX DUPAIN – however, the evidence does not establish to my satisfaction that the uses of the sign prior to the filing date by either party are uses of the trade mark MAX DUPAIN: Musidor BV v. Robert William Tansing (1994) 123 ALR 593; (1994) AIPC 91-083; (1994) 29 IPR 203.

8. Also at the outset, I will observe that this matter seemingly arises as part of a wider disagreement between Ms White and the applicants. This forum is not one in which any solution to that dispute is likely – both parties appear to have an equal entitlement to use the name MAX DUPAIN or trade mark in relation to their respective inheritances. The bequest is likely to have been made in the knowledge that all beneficiaries would seek to exploit the property left to them. The entitlement I refer to appears to be slightly better than that of the public at large. And, on this basis, success in an opposition to registration is unlikely in relation to unused trade marks and the opponents would (in my opinion) be better served looking to the ‘other circumstances’ provisions of subsection 44(3) of the Act in respect of their own applications than they are to further disputation.

9. As this dispute revolves in large part around the copyright in the artistic works of Max Dupain, it is convenient to dispose of this issue first – then consider further the specific grounds of opposition.

10. In her submissions Ms Bowne says:

    The dispute arises from unusual facts, the division of rights in Max Dupain's photographs which was created by his Will.  Max Dupain died on 27 July 1992. Clause 3 of his Will was in the following terms:

    I give all and all property in my exhibition photographic negatives (namely those which are not part of the commercial business Max Dupain & Associates) to Jill White and I give all my photographic exhibition prints (namely those which are not part of the commercial business of Max Dupain & Associates) to my wife, Diana Palmer Dupain, and my daughter Danina Anderson and my son Rex Dupain jointly and I further declare that the copyright in the negatives being given to Jill White she is able produce prints from those negatives for sale or as she desires and that the copyright in my exhibition prints being given to Diana Palmer Dupain, Danina Anderson and Rex Dupain they are able to duplicate or reproduce photographic prints for sale as they may otherwise desire.

    The bequest therefore gave Jill White ownership of and copyright in all negatives and photographs taken by Max Dupain which are described as "exhibition photographic negatives". Ownership of and copyright in all "photographic exhibition prints" were given [jointly] to Diana Dupain, Danina Anderson and Rex Dupain, who are respectively Max Dupain's widow, daughter and son.

    The meaning of these terms in the Will was the subject of proceedings brought by Diana Dupain in the Equity Division of the Supreme Court of New South Wales. In his judgment handed down on 15 September 1994 (Ex BJW4 to the statutory declaration of Jill White made on 9 December 2004), Cohen J found (at p5) that, when Max Dupain referred to "exhibition photographic negatives", he meant negatives which had resulted from photographs taken by him and which he had retained for the prospective use of them in exhibitions or which had already been used in exhibitions. Ms White therefore owns all property in all negatives resulting from photographs taken by Max Dupain other than those which were part of his commercial business. His Honour made a declaration to that effect. It is abundantly clear that Ms White is able to produce prints from those negatives for sale or "as she desires". The Will does not restrict Ms White from exploiting her copyright in the negatives in any way.

    There is an interesting difference in the wording of clause 3. In relation to Jill White, the Will states, "I give all and all property in my exhibition photographic negatives" while the bequest to the Dupain family is merely, "I give all my photograph exhibition prints". The fact that those words include a bequest of copyright is clear from the later declaration in clause 3, "I further declare that the copyright in the negatives being given to Jill White", and similar words are used into the bequest to the Dupain family.

    The Dupain family and Ms White were therefore given both copyright and the physical property in the negatives or prints bequeathed to them but the different wording of the gift to Ms White suggests that she was given wider rights. "All and all property" must include goodwill, and all other rights in addition to copyright. The Equity Division proceedings did not deal with the issue of the meaning of "I give all and all property" but only with the meaning of the phrase "exhibition photographic negatives". While the bequest to the Dupain family was clearly of the physical property in and the copyright in the prints, it is not clear, given the absence of the bequest of "all and all property in" those prints that they were given any wider rights, such as goodwill. Ms White's uncontested evidence is that, under the Will, she received between 50,000 and 70,000 images as negatives, while the Dupain family received around 500 images as prints. This, together with the wider wording of the bequest to her, suggests that Max Dupain intended her to have the major economic benefit from his work other his commercial photography.

    At the very least, Ms White, having been given the right to produce prints from the negatives, was also given an implied licence to do whatever is reasonably necessary to exploit those rights and she was given any goodwill attaching to the negatives. It would be nonsensical if Ms White was given the right to exploit the negatives but, as the applicants appear to assert, Diana Dupain owns the goodwill attaching to those negatives or attaching to any business of exploiting them.

    The fact that both the Dupain family and Jill White were specifically permitted by the Will to sell respectively the negatives and prints clearly means that they are at the very least able to use Max Dupain's name in respect of images bequeathed to each of them in order to indicate that he took the photographs. In relation to any additional rights, the wording of the Will suggests that Max Dupain wished to give wider rights to Ms White, that is, goodwill and the right to use his name in various ways. On that basis, and on the basis of the evidence, if the names "Dupain" and "Max Dupain" are proper subjects for trade mark registration, Ms White is the true owner of such trade marks insofar as they are used in respect of goods or services that pertain in some way to Max Dupain and his photographs.

    In any event, there is no evidence to suggest that the Dupain family have any better right than Ms White to ownership of the trade marks.

11. It is not clear to me that the evidence establishes that Max Dupain used his name in any way that could be construed as trade mark use.  The concept of ‘goodwill’ associated with a copyright work (or a series of copyright works) appears to me to be somewhat nebulous – goodwill being invariably associated with a business, its name and oftentimes, by extension, a symbol associated with it.  Ms Bowne did not direct me to any case-law which is on point as regards copyright law which relates to goodwill in copyright works.

12. The course that Ms Bowne would chart for me in attempting to construe the Will and to effectively decide who has the better claim to copyright reproduction under the name is not one which is appropriate for me to follow.  The issue of who owns copyright in the relevant artistic works and may thus legally reproduce them is one that exists irrespective of any trade mark which might be used in relation to the particular goods and services specified on the opposed applications.  Thus, to use a hypothetical example, the same issue would exist if the trade mark were the word WOMBAT used in relation to reproductions, exhibits, etc, of the works of the late Max Dupain.  Illegality of use, for me to consider it, must be illegality that arises out of the use of the trade mark itself: Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24; Arthur Fairest Ltd’s Application (1951) 68 RPC 197; and see “Karo Step” Trade Mark [1977] RPC 255. Any objective view of the Will must force the conclusion that Max Dupain wished to have Ms White and the applicants cooperate in the use of the property which they inherited as this would be most advantageous to each party in the way the terms of the Will appear to operate. And, although it prima facie appears that it may be possible for either party to use the trade mark MAX DUPAIN in ways which might be contrary to law – such a finding would, on the evidence before me, be a matter of speculation on my part.

13. The above copyright issue is one which emerges in a number of the grounds of opposition pursued by Ms Bowne at the hearing – I will now address these grounds but without any further consideration of the copyright issue.

    Section 41

14. Section 41 of the Act provides:

    41  Trade mark not distinguishing applicant’s goods or services

    (1)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

    Note 1:For applicant and predecessor in title see section 6.

    Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

    (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 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.

    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).

1. The scheme of the operation of section 41 was described by Branson J in Blount Inc v Registrar of Trade Marks [1998] 440 FCA.  In terms of the scheme, I am first to consider whether:

   (a) the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) 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; or

   (c) 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 there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

2. Branson J also observed in Blount:

   Gibbs J pointed out in Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 at 426 that:

   "The effect of s 26(2) is that the two factors mentioned must both be weighed but the authorities show that the primary inquiry is whether the word is inherently adapted to distinguish the goods in respect of which registration is sought..."

   In Clark Equipment Company v  Registrar  of Trade Marks (1964) 111 CLR 511 at 514, Kitto J put the test under the 1955 Act as follows:

   "[T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it."

3. Surnames and the names of people are signs which may lack inherent capacity to distinguish in respect of particular goods or services: see, for example, Time Warner Entertainment Company, LP v Stepsam Investments Pty Limited [2003] FCA 1502. This is because other traders, for instance those who are called by that name (or have that surname) may, without improper motive, need to use that name or surname to use in respect of their goods or services – to effectively say (for example), “This is my imprimatur, these goods were made by JOHN SMITH, this is my mark which establishes the quality of my goods.”

4. The word DUPAIN is one which occurs 3 times on the Australian Electoral Roll.  The likelihood of other traders having a need to use any trade mark in which the word DUPAIN occurs thus appears to be quite small.  The likelihood of any other trader requiring to use the trade mark MAX DUPAIN would, as a matter of logic, be immensely more remote.  In fact, given that one of the parties to this dispute is Rex Dupain, there are two other people with the surname Dupain on the Australian Electoral Roll.  One of these is the widow of Max Dupain – Rex Dupain’s mother – Mrs Diana Dupain.  Accordingly, there is one other person on the Australian Electoral Roll with the surname Dupain who might need to use the surname DUPAIN or the name MAX DUPAIN in relation to the relevant goods and services.  The likelihood appears to me to be infinitely small – not as realistic as the likelihood that was apprehended in Time Warner Entertainment Company, LP v Stepsam Investments Pty Limited, above.

5. However, Ms Bowne submits that:

   In Melhero v Club X (1997) 37 IPR 151 (a case dealing with removal of a registered trade mark but the same grounds apply to an opposition to registration), Beaumont J found that the applicant for removal, Melhero, had also been trading under the mark owned by Club X and had gained a substantial reputation in the name and relation to the same goods and services. The evidence indicated that it was likely that there would be confusion between the two businesses. Therefore, the mark applied for could not satisfy the "distinctiveness" criteria of s 41 because, as at the date of registration, it was not capable of distinguishing its goods or services from those of other persons. Similarly, there was a real possibility that at least some potential customers would be caused to wonder about the source or origin of the goods or services, so that s 43 of the Act would apply.

6. I do not think that this is a proper approach to the issue here and is one which appears as if it should be confined to the facts of the matter in Melhero. Such an approach in terms of section 41 of the Act effectively treats another person’s alleged uses of trade marks as uses of, “words forming part of the common heritage, [used for] the signification which they ordinarily possess,” which is the classic analysis in terms of Clark, above, applied to section 41. In other words, the approach promoted by Ms Bowne demotes another purported trade mark use to one of ordinary language or, as an alternative, conflates the symbolic trade mark and ordinary descriptive uses of the words in question.

7. Accordingly, the opposed trade marks are prima facie inherently adapted to distinguish the relevant goods or services.

8. I thus conclude that the opponent has not established that the words DUPAIN or MAX DUPAIN are not inherently adapted to distinguish the relevant goods or services.

   Section 43

9. Section 43 of the Act provides:

   43  Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

10. The connotation must arise out of the trade mark itself – T.G.I.  Friday 's Australia Pty Ltd v  TGI Friday 's Inc [2000] FCA 720:

    The case on deception and confusion sought to be made by Big Country and Friday 's Australia in the present proceedings is one that falls outside the reasons specified in those sections. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by section 43.

11. As Ms Bowne submitted, in order for section 43 to apply, I must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the trade mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations: see, for example, the discussion in Down to Earth (Victoria) Co¬operative Society Ltd v Schmidt (1998) 41 IPR 632 at 644-5. In considering the likelihood of deception or confusion, I must consider whether there is a real and substantial risk that the result of the use of the trade mark will be that a reasonable person (or a number of persons in the relevant class of likely purchasers) will be caused to be deceived or confused. In making this assessment, all of the surrounding circumstances need to be taken into account, including the circumstances in which the opposed trade marks will be used, the circumstances in which the goods or services will be bought and sold, and the character of the probable purchasers of the goods and services: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at 382-383; Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182 at 218; McCormick v McCormick (2001) 51 IPR 102 at 107.

12. Ms Bowne went on to submit:

    Here, the marks, if registered, may be used in respect of goods and services completely unrelated to Max Dupain and his work – this is permitted by the registrations sought. The reference to Max Dupain is, however, so immediate and direct that consumers will believe that (a) those owning the rights in his photographs have given approval to or sponsored the registration and use of the work; and (b) the goods and services are connected somehow with Max Dupain's work, whatever the nature of those goods and services to which his name is attached. This is established by the evidence not only of Max Dupain's fame and reputation but also by the evidence of the uncommonness of the name "Dupain" (Ms White's second declaration para 3, Ms Dettmann's third declaration para 16 and Ex CBD27), and the very long existence of Max Dupain & Associates Pty Ltd.

    The opponents submit that the evidence makes it clear that the connotation alleged existed as at the date of the filing of each of the applications, and that ordinary members of the purchasing public and traders will associate the marks with Max Dupain and his work, and will be confused or deceived into believing that the goods and services to which the marks are applied are the work of, or are endorsed or sponsored by, or affiliated with Max Dupain when they are in fact not or that they are supplied by Ms White or Max Dupain & Associates when in fact they are not.

13. I consider that the question of whether the trade mark MAX DUPAIN might be used deceptively or confusingly by the applicants is very much one of conjecture.  It is a trade mark which might be used deceptively but whether it is or not is very much up to the applicants.  It is not a trade mark which is, by its nature, incapable of use in many ways which are not confusing or deceptive; for me to decide that the use of the trade mark MAX DUPAIN would be likely to deceive or confuse if used by the applicants on the nominated goods and services would be to impute a future course of action to the applicants which the evidence of the parties does not suggest is likely to occur.  Absent a more direct connotation within the words MAX DUPAIN (which, as I have noted, can be used without any deception or confusion in relation to the nominated goods or services) such speculations are not appropriate in the absence of evidence to the contrary.

14. The word DUPAIN is, of course, the surname of Rex Dupain, one of the applicants.  The suggestion that Rex Dupain might use his own surname as a trade mark in a way that is deceptive or confusing is, to say the least, unusual and does not warrant further discussion.

15. The opponents have not established this ground of opposition.

    Section 58

16. Section 58 of the Act provides:

    58  Applicant 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.

17. In Carnival  Cruise  Lines Inc. v.  Sitmar Cruises  Limited (1994) AIPC 91-049; (1994) 120 ALR 495, Gummow J said of the term ‘proprietor’ (which is equivalent to the term ‘owner’ under the current Act):

    In Moorgate Tobacco Company Ltd v Philip Morris Ltd (No. 1) (1980) 145 CLR 457 at 477, Stephen, Mason, Aickin and Wilson JJ said:

    "It has been accepted that when s. 40 (1) provides that a person 'who claims to be the proprietor of a trade mark' may make application for registration it expresses the notion of proprietorship of a mark before registration and that registration depends upon proprietorship (Shell Co. of Australia Ltd v Rohm and Haas Co. (1949) 78 CLR 601 at 629; The Kendall Co. v Mulsyn Paint and Chemicals (1963) 109 CLR 300 at 304). It is also settled that proprietorship for the purposes of s. 40 (1) is demonstrated by prior public user of a distinctive mark or authorship and the making of an application for registration (Shell at 627-629, Aston v Harlee Manufacturing Co. (1960) 103 CLR 391 at 399-401)."

    Their Honours also pointed out (at 478) that the terms of sub-s. 40 (1) mean that "the statutory proprietor is the person who is entitled to get on the register if the requirements of the statute e.g. s. 28 are otherwise fulfilled".  Carnival submits that by reason of the prior public user by Carnival, Sitmar cannot be the statutory proprietor of the marks for which it seeks registration.

    Later, in Moorgate Tobacco Company Ltd v Philip Morris Ltd (No. 2) (1984) 156 CLR 414 at 432-434, Deane J, who delivered a judgment with which the other members of the court agreed, said:

    "The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of 'proprietor' of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person: see, generally, Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 423-424; Re Registered Trade Mark 'Yanx'; Ex parte Amalgamated Tobacco Corporation Ltd (1951) 82 CLR 199 at 204-5; and the definition of 'trade mark' in s. 6 (1) of the Trade Marks Act. The requisite use of the mark need not be sufficient to establish a local reputation and there is authority to support the proposition that evidence of but slight use in Australia will suffice to protect a person who is the owner and user overseas of a mark which another is seeking to appropriate by registration under the Trade Marks Act.

    The Court was referred to a large number of cases and some administrative decisions in which consideration has been given to what constitutes a use or user of a trade mark for the purposes of the statutory notion of proprietorship of the mark before registration.  The cases establish  that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark.  It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark (Re Registered Trade Mark 'Yanx'; Ex parte Amalgamated Tobacco Corporation Ltd (1951) 82 CLR at 204-205) or that the mark has been used in an advertisement of the goods in the course of trade: Shell Co. of Australia v Esso Standard Oil (Australia) Ltd (1963) 109 CLR at 422. In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade. In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade. There was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used."

18. Much earlier, Holroyd J had said in re Hicks' Trade Mark (1897) 22 VLR 363:

    A person cannot be properly registered unless he is the proprietor. Proprietor is the person who at the moment he makes application to be registered is entitled to the exclusive use of the name, whether he then or before publicly adopted it. A man cannot be said to have adopted a name if someone else has done so before him. Section 19 merely says that the act of applying is to be deemed equivalent to public user. No one could otherwise be entitled to registration as proprietor unless he had publicly used the trade name before. The section does not affect the fact that another person used the name first. The difficulty here is that although Hicks may have by virtue of his application publicly used the name, someone else publicly used it before him.

    ... the word "proprietor" must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration of the word "Empress" in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the register for that trade mark, and his name will be properly removed on the application of the person whose right of user was thereby disturbed.

19. Ms Bowne submitted that the effect of Holroyd J’s judgment is that:

    … there is nothing to suggest that the applicants are persons "entitled to the exclusive use" of the names, as required by Hicks. The very division of ownership of Max Dupain's work makes it clear that Ms White and Max Dupain & Associates are entitled at least to use the names in the exploitation of the works they own by virtue of Max Dupain's Will or his commercial photography business. The applicants therefore fail at the threshold, irrespective of whether or not the names have been used as trade marks or by whom, because they have no exclusive rights to either of the names in relation to any goods or services.

    If further analysis is required, the marks "Dupain" and "Dupain" are substantially identical, as are "Max Dupain" and "Max Dupain". The evidence makes it clear that Ms White has a prior right to the mark "Max Dupain" in class 41. She also clearly has a prior right to the mark "Max Dupain" in class 16 which will defeat the applicants' application for the mark "Dupain" in that class if "Dupain" is substantially identical to "Max Dupain".

20. The applicant’s claim to ownership of the trade marks cannot, however, be displaced by the opponent’s use of the name MAX DUPAIN, per se.  The judgment of Gummow J in Sitmar, above, makes it clear that additional qualifiers of the use of the name are required if the applicants’ claims to ownership are to be successfully challenged – the use of the sign MAX DUPAIN by the opponents must be use as a trade mark and must be before the filing dates of the opposed applications.  While the Will makes it clear that the copyright in the artistic works has passed to the respective beneficiaries, it is silent as to any trade mark rights.  There is no evidence before me that either of the parties has used the words MAX DUPAIN as a trade mark and, accordingly, the rights of the applicants stem from the filing of the trade mark applications which are here opposed.

21. The opponents have not established their oppositions under section 58.

    Section 59

22. Section 59 of the Act provides:

    59  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.

    Note:   For applicant see section 6.

23. The opponents point to the lack of evidence of use of the opposed trade marks as evidence that the applicants do not intend to use the opposed trade marks.  However, the applicants’ lack of use of the trade marks in the past says nothing about their intentions as to the future use of the trade marks.  There is no evidence presented by the opponents which throws doubt on the intentions of the applicants.

24. The opponents have not established their ground of opposition under section 59.

    Section 60

25. At the relevant dates, section 60 of the Act provided:

    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)       it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

    (b)       because of the reputation of that other trade mark, the use of the first mentioned trade mark would be likely to deceive or cause confusion.

    Note 1:            For deceptively similar see section 10.

    Note 2:            For priority date see section 12.

26. There is, as I have observed, no evidence before me that either party has used the opposed trade marks.  As such, there is no reputation in any relevant trade mark before the priority dates of the opposed applications.

    Section 62

1. Section 62 of the Act provides:

   62  Application etc. defective etc.

   The registration of a trade mark may be opposed on any of the following grounds:

   (a)that the application, or a document filed in support of the application, was amended contrary to this Act;

   (b)that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

   Note:For file see section 6.

2. Here, the opponents pursue grounds under subparagraph 62(b).  In relation to this ground Ms Bowne submits:

   There can be no doubt that a claim of ownership which is wrong is false in material particulars. The applicants clearly misrepresented to the Registrar that they were the owners of the marks the subject of applications nos 992548, 992549 and 992928 as Diana Dupain had not assigned any rights to them as at that date. On that basis, applications nos 992548, 992549 and 992928 should be rejected.

   The documents supplied by the applicants in support of their applications for registration are held by IP Australia and the applicants and are not within the knowledge of the opponents. However, in addition, it seems clear from the history of the applications that expedition of acceptance was sought and that, when applications 992548, 992549, 992928 and 1065381 were accepted, the applicants had not advised the Registrar of the rights granted to Ms White under the Will or of the existence of Max Dupain & Associates and instead provided information in support of their case for expedition that must have in fact been misleading. In the case of application 1065423, however, an adverse report was issued and the application has not yet been accepted. The opponents submit that, if the Registrar has been properly advised by the applicants, the earlier applications would also have been the subject of adverse reports. For that additional reason, applications nos 992548, 992549 and 992928 should be rejected.

3. I have already found that the opposition in terms of section 58 of the Act has not been established to my satisfaction. While the applications were lodged in the names of Rex Dupain and Danina Dupain, and Mrs Diana Dupain has filed a trade mark ‘assignment’ to the applicants, it is not clear to me that there were any trade mark rights for Mrs Dupain to assign – there is no evidence that Mrs Dupain inherited any trade mark rights in terms of the Will of Max Dupain. In fact Ms Bowne elsewhere argues that Mrs Dupain was not a beneficiary of trade mark rights – and I agree with that argument – it is not established that any person was a beneficiary of trade mark rights under the Will. It is thus clear that the claims to ownership arose solely from the making of the application by Rex Dupain and Danina Anderson. The claim to ownership is thus not a misrepresentation to the Registrar.

4. The documents referred to by Ms Bowne, above, are not in evidence and I am not aware of their contents.  Additionally, if the documents were in evidence, the applicant would have been able to respond with their own evidence which might have clarified the situation to which Ms Bowne refers – to go further with this line of inquiry would smack of a lack of procedural fairness to the applicants.

5. In any event, the opposition in terms of subparagraph 62(b) is not established.

   Other

6. Mr Bowne started her submissions with an address which went to the provisions of section 27 of the Act. Section 27 is not available as a ground of opposition to an opponent.

   Decision

7. Section 55 of the Act provides:

   55  Decision

   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.

8. Trade mark application numbers 992548(19)(41) DUPAIN, 992549(41) MAX DUPAIN, 992928(19) MAX DUPAIN and 1065381(16) DUPAIN may therefore proceed to registration one month from the date of this decision.  If the Registrar has been served with notices of appeal before that time, I direct that the registrations shall not occur until the appeals have been decided or discontinued.

   Costs

9. The applicant, having been successful in these proceedings, is entitled to its costs which I order at the official scale.

   Rachel Dunn
   Hearing Officer
   Trade Marks Hearings

   27 August 2007