Bang on the Door Ltd v Playgro Australia

[2003] ATMO 51

TRADE MARKS ACT 1995

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

Re:Opposition by Bang on the Door Ltd to registration of trade mark application 866754(28) - FUNKY GIRL - filed in the name of Playgro Australia Pty Ltd.

Date of Decision:

29 August 2003

Delegate:

Terry Williams

Representation:

Opponent: Frances Drummond, solicitor, Freehills, Carter, Smith Beadle.

Applicant: Janice Luck, solicitor, Phillips Fox.

Decision:

S 52 opposition: neither prior use nor prior reputation established.  Application to be registered, costs awarded against opponent.

Background

1.     Playgro Australia Pty Ltd (the applicant) filed trade mark application 866754 on 21 February 2001 (the priority date).  It seeks to register the trade mark FUNKY GIRL for "toys and playthings, including novelty soft toys, dolls, cushions and accessories".  The Trade Marks Office has advertised the application as having been accepted for registration. 

2.     Bang on the Door Ltd (Bod) opposes registration, and has filed a notice of opposition.  Both sides have filed and served evidence to support their positions and in due course I heard the parties' submissions on the matter.  I am now to decide the opposition, under delegation from the Registrar of Trade Marks.

3.     Bod has relied on declarations by:

·     Karen Duncan, a director and joint shareholder of Bod

·     Geraint Evans, commercial manager of Bod

·     Mark Camiller, formerly a director of Camsons Trading Pty Ltd (Camsons), an Australian licensee of Bod.

The applicant relies on the declaration of Marc Brick in answer to the opposition.

4.     At the hearing, Bod's solicitor, Frances Drummond, argued only two grounds of opposition, s 58 (ownership) and s 60 (conflicting reputation at the priority date).

Evidence in general

1. From the evidence, it seems fairly clear that Bod is well-known within the toy industry.  Its products are licensed to producers in Australia, throughout Europe and in the USA.  The activities of some of its licensees in Australia up to the priority date are critical, and I will turn to these in some detail.

   6.     Of particular relevance is the license agreement in favour of Camsons Trading Pty Ltd, the firm of which Mr Camiller was, at relevant times, a director.  His firm was authorised to produce goods of a particular sort.  The agreement, in heavily edited form, is in evidence.  The proposed licensed products are indicated to be beanies and fabric soft toys.  However, the vast majority of the text of the agreement has been obliterated, with no explanation of the extent of this.  It can be seen that the agreement relates to "the following bang on the door™ (sic) people characters" of which Funky Girl is apparently only one of many.  It is impossible to see, from the heavily edited license agreement, just what Camsons was entitled or expected to do under this agreement.

   7.     Other, and equally heavily edited, license agreements are in evidence.  These relate to goods including photo albums, manchester and sleepwear.  There is no suggestion in the evidence in support that they bore any fruit.

   8.     There is a suggestion that the applicant was well-placed to have known of the activities of Bod.  Mr Brick, of the applicant, attended (twice) and made enquiries of, a stand at the New York Licensing Show 2000 in June of that year.  At that stand, there is evidence that the Funky Girl character licensed by Bod was displayed, with the name in question, "prominently" by way of an "enormous" cut-out.  However, the evidence (a photo) does not show any scale and has lost detail in being faxed.  So far as anything can be judged, the cut-out may perhaps only be enormous when compared to the toy in question.  I therefore accept at full face value Mr Bricks's statement that he cannot recall seeing anything about Funky Girl characters when he enquired, so he declares, "pursing some licence arrangements ... for the brands FLUX DELUXE and ATOMIC BABES in relation to a category of novelty stationery".  Since the applicant has exhibited a letter in which Mr Brick admits that he was "shown around" the stand in question, the situation is curious, but Bod has simply failed to put into evidence anything sufficient to impugn Mr Brick's account.

   9.     For its own part, the applicant had already produced two lines of characters, Funky Fairies and Funky Flowers, before the New York show.  Mr Brick states that in October 2000, four months after the show, the trade mark FUNKY GIRL was selected to extend that range.  Mr Brick's declaration is emphatic: "neither myself nor any other person at Playgro involved in the development of the new products was aware that Bang on the Door Limited used the words 'Funky Girl' in relation to any of its products".

   10.   There are some sketchy details of the applicant's discussions with Kmart, Toys R Us and Big W personnel.  There were meetings in late 2000 but the details of these are unclear.  At the time, the applicant's 2000 catalogue was approaching the end of its currency.  The March 2000 Price List - Order Form is in evidence.  It does not mention the Funky Girl range of beanie dolls.  The closest it comes is, on page 2, Funky Huggable Beanies, apparently to be available in June 2000.  Then, on page 5 are the Funky Flowers.  Also, cot and pram toys described as Funky Musical Pullstring Lion, Cow, Elephant (etc) were to be available in April May and July of that year.

   11.   At the end of 2000, the applicant's 2001 catalogue was still in preparation.  When it emerged from the printers in March or February 2001, page 44 apparently related to Funky Girl products.  However, that page is neither in evidence nor referred to by Mr Brick.  Page 49 is in evidence and has the words Funky Girl as a header and, in a fancy script, as a footer, for a page that is clearly a promotion of the Funky Fairies range. 

   12.   It would seem that a representative of the applicant - who, it is not said - offered to sell Funky Girl dolls to Big W in January 2001.  The product submission prepared for that meeting fills in the deficiencies of the 2001 catalogue, which was still to go to the printers at that date.  If Mr Brick's evidence is taken at face value, it shows a genuine offer of dolls for sale.  The dolls offered were apparently the Funky Fairy dolls from page 49 and others.  To quote Mr Brick: "This Submission shows use of the FUNKY GIRL trade mark, and also use of the FUNKY FLOWERS and FUNKY FAIRIES trade marks."

   Grounds and Issues

   Ownership

2. This matter is determined by first user of the trade mark in Australia, or by applying for registration of the trade mark, whichever is the earlier.  The use must be of the same mark for the same kind of thing.  Ms Luck, on behalf of the applicant, argued that Bod could not impugn the application because it could not show any use earlier than the priority date.  She said the opponent's evidence did not show use of a trade mark.  Bod's evidence, she said, showed that Funky Girl had been used simply as the name of a character available to be duplicated and sold, under licence, by others.  This was not a descriptive use, she conceded, but did not match the strict definition of a trade mark being an indication of origin.  Since Bod's activities in question occurred before the applicant filed the opposed application, they become critical.

   14.   There is not much detail about the activities of Camsons Trading Pty Ltd, the only one of Bod's Australian licensees to bring forward relevant evidence.  It was licensed, as of 1 April 2000, to sell "Bang on the Door people characters as per schedule 1".  This lists Funky Girl, and the Licensed Products are Beanies, Fabric Soft Toys.  The territory is Australia, but that is all I can tell.  I have already criticised the lack of detail in the evidence about this license, from which nearly all the text has been stricken.  Just what trade mark rights were involved, if any, cannot be seen from the license in its edited form. 

   15.   Camsons' July 2000 price list shows item G3117 "Funky Girl Doll", with "October" printed in the column indicating availability.  Additionally there are items G3100 and G3104, for "People Beanies Collection 1" and "People Beanies Collection 2".  These are also said to be available from October.  Page 39 of Camsons' 2000 catalogue has been brought into evidence.  It shows item 3113 "Collection 2 Bang on the Door People Beanie Assortment.  Student, Funky Girl, Stressed Out, Dude, Raver, Darling, assorted".  It is said to be a "New Collection!".  It shows that item 3113 is a collection of beanie dolls, of which one is the Funky Girl character.  The exhibit shows the Funky Girl doll, as part of a set, with other dolls named Student, Raver, Dude and so forth.  Item 3113 is not listed in the price list, nor is item 3117 shown in the exhibited part of the catalogue.

   16.   The later Camsons' catalogue, for 2001, also shows "People Beanies Collection 2".  It states that item G3104 is an 18 piece assorted collection of beanie dolls, of which one is the Funky Girl doll.  The only trade mark usage expressly claimed in the document, by use of the symbol™, is in relation to the words "Bang on the Door".  Thus, as Ms Luck pointed out, Bod is arguably in two minds about what is and what is not trade mark use.  Moreover, as she noted, it sells spider-shaped dolls bearing the word "spider", pig dolls bearing the word "pig" and so forth, and it cannot be argued that the use of those words is use of a trade mark.  What then was to be made of comparable use of the words "Funky Girl"?

   17.   I infer that Ms Luck's client, the applicant, may also be open to this criticism.  Ms Luck argued that the use of the headers and footers on page 49 of the applicant's 2001 catalogue was a use of the words FUNKY GIRL as a trade mark in relation to Funky Fairies dolls.  However, Mr Brick appears to have decided not to bring page 44 of the catalogue, which according to the index is directly relevant, into evidence.  At the same time, he claims that the product submission of January 2001, to which I have referred, a document offering to sell three sorts of dolls, Funky Girl, Funky Fairy and Funky Flower, amounts to a use of all three trade marks.

   18.   If I put Bod's evidence at its highest, it shows that at some stage after July 2000 Bod's licensee was, perhaps, taking orders for dolls or sets of dolls that would be available in October.  However, I have not been shown that either the catalogue or the price list was seen by anyone outside the firm that prepared the documents in question.  As to the dolls themselves, Mr Camiller does not say that any sets were ever sold and there is no indication that they were available in October as planned.

   19.   Mr Brick, for the applicant, takes up the story in the evidence in answer.  He says, by way of complaint, that "about this time (September 2001) a Playgro employee noticed a doll bearing the words Bang on the Door and Funky Girl in a store called Cuddles and Co in the Southland Shopping Centre in Melbourne".

   20.   Ms Drummond argued at the hearing that the manner of use relied on by Bod was as a trade mark.  However, whether a particular action is a use of a trade mark is a question of fact.  A trade mark is (s 17) a sign used, or intended to be used, to distinguish good or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.  The same criticism, of course, would apply to the applicant's evidence, but it is entitled to rely, in claiming ownership, on the making of an application[1].

   [1] Aston v Harlee (1960) 103 CLR 391

   21.   Ms Drummond argued that there are two alternative routes by which proprietorship may be established.  Her authority for this was Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414 at 434. There, Deane J stated that, when determining use by the overseas owner of the mark for the purposes of proprietorship:

   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 Corp Ltd (1951) 82 CLR 199 at 204-5) 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 (1949) 78 CLR 601 at 622. 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 mark or an existing intention to offer or supply goods bearing the mark in trade.”  [Her emphasis]

   22.   This, she argued, gives rise to two alternatives to establishing proprietorship in Australia of an overseas trade mark by the overseas owner.  These are:

   a) preparatory steps coupled with an actual trade or offer to trade in the Australian market; and

   b) preparatory steps coupled with an existing intention to offer or supply goods in trade in Australia.

   23.   She argued strongly that I should carefully consider the licensing arrangements themselves as being an act of use of a trade mark.  She noted the recent comments by Messrs Elkington, Hall and Kell[2], to the effect that delegates of the Registrar of Trade Marks are too quick to dismiss acts falling within category (b) as being mere preliminaries, rather than actual use.  Both the authors and Ms Drummond[3] rely on Buying Systems (Australia) Pty Ltd v Studio SrL (1995) 30 IPR 517 as an authority. .

   [2] Trade Mark Law in Australia, Butterworths, 2000,

   [3] Ms Drummond conceded at the hearing that it might be preferable to read "preliminary steps" as being "sufficient preliminary steps".

   24.   Ms Drummond argued, in her written submission:

   In the Federal Court Gummow J has accepted the second proposition to suffice for proprietorship to be vested in the overseas owner of the mark.  In that case Gummow J stated at 520:

   “These steps amount to sufficient activity by the opponent to produce the result that the applicant for registration at the date of its application on 8 December 1983 could not accurately put itself forward as claiming to be proprietor of the relevant mark. The activities of the opponent were sufficient to constitute use of the mark in Australia for the purposes of indicating or so as to indicate a connection in the trade between it and the new magazine.  This is not a case where those activities occurred without any existing intention to offer or supply the magazine in trade.”  [Her emphasis]

   This case related to the launch of a new magazine in Australia where steps had been taken to sell advertising space within the magazine.  By analogy to the situation of the Opponent, the steps taken in securing various licensing agreements which are valid only within Australia clearly indicates an existing intention to offer or supply goods bearing the FUNKY GIRL trade mark in trade in Australia.  Further, the purpose of a licensing agreement is to enable goods to be offered for sale under certain brand names within an agreed jurisdiction.  Prima facie the fact of the Opponent having entered various licensing agreements must constitute a preparatory step towards offering the goods bearing the licensed names for sale within Australia.

   The Opponent’s evidence clearly establishes that as of at least July 2000 the FUNKY GIRL trade mark was being used in Australia in relation to plush toys or dolls by its Australian licensed manufacturer.  FUNKY GIRL goods were being promoted in an offer to trade made by the Opponent’s licensed manufacturer, Camsons, in its Price List and Order Form dated July 2000.  This evidence clearly meets the requirements of Deane J’s first proposition in Moorgate Tobacco Co Ltd v Philip Morris Ltd for establishing proprietorship in Australia as set out above if, which we dispute, this is the correct test to be applied.

   25.   She supported this by reference to Woolly Bull Enterprises Pty Ltd v Reynolds[4].  She noted that, at para 40, Drummond J sets out the principle:

   Though it is not necessary, for there to be such a use of a mark, that there be an actual trade in the sense of the offering for sale and the sale of goods bearing the mark, the owner will not use its mark unless it has so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, ie, to carrying its intention to use the mark into effect.  Mr Burmingham was never able to get beyond attempting to establish a means for the first applicant to use its mark in trade.  That does not amount to any use of the first applicant's mark in trade sufficient to defeat the removal application.  It goes no further than discussions preliminary to the first applicant actually committing itself to the use of the mark in the course of trade.

   [4] (2001) 51 IPR 149

   26.   Ms Drummond argued that Woolly Bull was a case where non-use was in question.  All that was involved was the continuance, or otherwise, of a trade mark on the register.  That matter was not, she argued, complicated by the courts' traditional preparedness to seize on a bare act of user in order to defeat sharp business practice[5].  It did not relate, she argued, to establishing proprietorship in Australia.  In any case, she noted the subsequent comments of Drummond J that, she argued, assist Bod:

   "Deane J[6] did not say that a subjective intention of the owner of the mark to use the mark in trade at some time in the future was, without more, sufficient to show use of a mark. What he said was that such an intention, if accompanied by objective proofs of that intention in the form of evidence of action by the mark owner to commit goods bearing the mark to actual trade in Australia, would suffice to show use of the mark here at the time in question, though no marked goods had yet been offered for sale in this country.” [Emphasis added by Ms Drummond]

   [5] The Seven Up Co v O.T Ltd (1947) 75 CLR at 211

   [6] In Moorgate Tobacco Co Ltd v Phillip Morris Ltd (1984) 156 CLR 414

   27.   Ms Drummond's argument was that Woolly Bull did not define the relevant hurdle for Bod, and that an arguably lower test, the court-sanctioned one of seizing on small acts, applied to it; while at the same time urging me to keep the hurdle high for the applicant.  As Ms Luck argued, there is no apparent reason for me to make this distinction between use for one purpose and use for another.

   28.   Woolly Bull was also a case to which Ms Luck pointed, to para 28, with my own emphasis added:

   Buying Systems not only had an existing intention to trade in the magazine, it had gone beyond making preliminary arrangements to use the mark by December 1983.  It had an objectively ascertainable commitment to offering to supply the magazine in trade demonstrated by its having purchased and used appropriate business cards and letterheads in connection with the proposed offering of the magazine and by having solicited advertisers for the magazine. (In the absence of evidence as to the subsequent publication of the magazine, however, it may well have been difficult for Buying Systems to satisfy the court that, by December 1983, it then had an intention to offer or supply goods bearing the mark in trade and had done things sufficiently unambiguous to objectively show that it had that intention.)

   29.   I note the primary line of argument being pursued here by Ms Drummond.  I also note that Messrs Elkington et al make the point:

   Buying Systems cannot be explained away as a case which satisfies the first limb of that test (because of the offer of advertising space) first, because that was explicitly not the basis on which Gummow J decided, and secondly because the application was in respect of magazines in class 16, not advertising services, and on no reading of the case had there been any sale or offer to sell magazines.  Preparatory steps, coupled with an existing intention to sell goods or services can establish proprietorship for the purposes of a s 58 opposition, before the first sale or offer to sell.

   30.   I think it may be fair to say that Ms Drummond (and the authors) have a point, at least provided that the preparatory steps culminate, in due course, in an actual sale of goods.  However, that proposition does not stretch to the present facts.  Here, because of the deliberate obscuring of detail, I am unable to agree that the steps taken were enough.  The licences simply, so far as can be seen, allow various firms to sell dolls, clothing, even sheets, of particular patterns.  Strictly speaking, even this assessment is a matter of guesswork on my part, so much of the text is obscured.  Whatever the licence agreements actually establish, there is no reason to think that most of them have borne any fruit at all, let alone resulted in the use of a trade mark at some future date.  For all that can be seen, these licences were a speculative approach, in the hope that, if a large number of characters were licensed to a large number of firms, and for diverse goods, some sort of activity would eventually result, in relation to some goods, from some of them.  What sales have resulted down the track, and how they were effected or offered, is left a mystery in the opponent's evidence.  That is far from the level of activity or clarity in evidence in Buying Systems.

   31.   Ms Drummond also referred to the Camson's Price List and Order form as being a fall-back on which Bod might rely as being an actual offer for sale.  That list, as she noted, was dated July 2000.  It is, at first glance, arguably part of a set of circumstances comparable to the offer of cigarettes in Yanx[7].  In both cases, the actual delivery was to be subsequent to the act of use relied on.

   [7] Re Registered Trade Mark "Yanx", Amalgamated Tobacco Corporation Limited ( 1951) 82 CLR 199

   32.   Mr Brick, for the applicant, has declared to the offer for sale of "a doll bearing the words Bang on the Door and Funky Girl in a store called Cuddles and Co in the Southland Shopping Centre in Melbourne" in about September 2001.  It seems, therefore, that the dolls subsequently arrived bearing relevant signs.  However, the mere existence of a Price List and Order Form, headed July 2000, does not, by itself, establish any sort of public act of use of a trade mark at that date.  Again, the detail of the evidence falls short of the necessary standard.  The most that can be said, from the document, itself qualified as to availability of goods in October 2000, was that the subsequent offer for sale (as described by Mr Brick) was probably a use of a trade mark.  However, without more, I think the price list and order form itself simply sheds light on the probable nature of the subsequent act; it does not itself amount to an act of use.  Thus, I cannot say that the use dates to any earlier than about September 2001, which was, of course, after the priority date of the present application.  Were it clear that anyone outside Camsons had had the benefit of seeing the order form, when, and in what surrounding circumstances, Bod's case would be stronger.

   33.   If it be said that the event in September 2001 amounted to a use of the trade mark, it would potentially follow that the licensing operation that brought this about was itself an act of use.  It would, of course, be an extreme example of the application of "preparatory steps coupled with an existing intention to offer or supply", but it is at least arguable in principle.  However, for it to be sustained, I would need to be satisfied that someone at Bod had at least some intention with regard to trade mark usage in the first instance.  That does not appear to be the case.  The licence does not (apparently) mention trade mark rights, does not authorise the use of a trade mark, does not stipulate anything about the manner of usage that may in fact be made.  Bod, having set out to licence the production of a character, has eventually been the indirect cause of an act of trade mark use.  However, it cannot rely on its act of licensing as being the cause, in any objective sense, of anything more than the authorised sale of dolls.  Its actions, at the licensing stage, were (in the lack of detail about both a trade mark purpose and actual business plans) at best simply what Drummond J, in Woolly Bull, supra, called "attempting to establish a means for the first applicant to use its mark in trade".  A licence is, on the face of it, simply permissive, it is not an unambiguous or objective indication of an intention.

   34.   Ms Drummond relied, in her written submissions, on The Seven Up Co v O.T. Ltd (1947) 75 CLR 203 for a supplementary proposition, from p 211:

   Further, if at the date of the application for registration, the mark of the foreign trader, although it has not been used in Australia, has nevertheless become associated in the minds of the Australian public with his goods because it has been advertised in publications which have circulated extensively in Australia or in some other manner, the Registrar is entitled to refuse to register the mark for such goods because it is likely to deceive.” [Ms Drummond's emphasis]

   as being relevant to the ownership question.  I think, however, that this is an issue that feeds into s 60.  I turn, briefly, to that issue, concluding the present one by saying that the opponent, Bod, has not established that it is the owner of the trade mark for these goods.

   Prior reputation

1. S 60 is not a concise piece of drafting and I will not set it out in full.  At the heart of the case to be made by Bod, it must show that, at the priority date, it (or, hypothetically, some other party) was the owner of an identical or deceptively similar trade mark, one with a reputation such that deception or confusion would ensue if the applicant used its mark.  I have not been shown more than one fleeting example where Bod has (arguably) publicly used the words Funky Girl as a trade mark. That, at September 2001, was simply too late to affect the situation at the priority date, 21 February 2001.

   36.   Nor can I accept Ms Drummond's argument that a significant reputation can be inferred simply from the profile of Bod and the fact that it was able to licence the trade marks in question.  Speculation of this sort is far, far short of the information necessary[8] to support such a ground.  Finally, as Ms Luck argued, even if the funky doll product advertised in the Camsons' Price List and Order Form was available in October 2000 - itself open to question, as I have said - only four months then remained until the priority date.  Barring most remarkable circumstances, not remotely arguable in this case, that was simply too little time to establish the requisite reputation.

   [8] McCormick & Co Inc v McCormick 51 IPR 102 at paras 85-86.

   37.   This ground has not been established

   Conclusion

   38.   The opponent has not established either of the grounds on which it has relied.  The trade mark application may then 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

2. I direct that Bod pay the costs of the applicant to the extent set out in the scale.

   T. E. Williams

   Hearing Officer

   Trade Marks Hearings

   29 August 2003