Belwood Contracting Pty Ltd v Klesteel Pty Ltd

[2004] ATMO 71

TRADE MARKS ACT 1995

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

Re:Application 939563(37) All We Leave Is A Memory by Klesteel Pty Limited and opposition thereto by Belwood Contracting Pty Ltd.

Delegate:

Ian Thompson

Representation:

Applicant  Teleconference submissions by Carmen Champion, instructed by Peter Whitehead of Hazan Hollander.

Opponent  Written submissions by Rod Mugford of Mugford Lawyers

Decision:

1. s52 proceedings: sections 58, 60 and 43.

Background

1. Klesteel Pty Limited (‘the applicant’) of Lidcombe in Sydney, has filed application to register a trade mark, current details of which are:

App No:  939563

Priority date:  9 January 2003

Advertised Accepted:                   29 May 2003, Australian Official Journal of Trade Marks

Filing Date:  9 Jan 2003

Goods:  Class: 37 Demolition of buildings

Trade Mark:  All We Leave Is Memories

1. On 27 August 2003, Belwood Contracting Pty Ltd (‘the opponent’), of Darra in Queensland, served and filed Notice of Opposition to the registration of the trade mark. The Notice cites three grounds, these being under section 58, 60 and 43 of the Trade Marks Act 1995 (‘the Act’).

2. The parties have served and filed evidence in support of the opposition and evidence in answer as allowed by the Act and regulations thereto.

3. A hearing of the issues was held before me, as a delegate of the Registrar of Trade Marks on 22 November 2004.  For the applicant, Carmen Champion of counsel attended by telephone, instructed by Peter Whitehead of Hazan Hollander.  The opponent filed written submissions by Rod Mugford of Mugford Lawyers.

Evidence

1. The evidence in support of the opposition comprises a declaration by Roderick Joseph George, solicitor for the opponent.  The evidence in answer is a statutory declaration by Stephen Bassett, a director of the applicant. 

2. The opponent tendered a further declaration, immediately before the hearing.  It was not accompanied by an application for the service and filing of further evidence and the covering facsimile letter (with which I agree) characterises the declaration as ‘reiterating earlier submissions’.  As it is reiteration, it could add nothing to proceedings and, accordingly, it should not add to the evidence already before me.  It is, however, by Sultan Deen who is an officer of the opponent, appointed this year and who was previously an officer of the opponent when the opponent’s company was Deen Bros Pty Ltd.

3. The opponent and its apparent predecessors in business have been in the demolition business since about 1971.  The opponent trades under the business name Deen Bros and the business was involved in the demolition of the Bellevue Hotel, Cloudland, Hesketh House and the Woolloongabba Cricket Ground grandstand.

4. The opponent alleges use of a trade mark “All We Leave Behind Are Memories” since Deen Bros began in the demolition industry.  This claim is not well supported. 

5. Appended to the declaration in support are articles from the Sunday Mail: the first is dated January 1 1989: an article refers to Deen Bros as using the ‘motto’ “All We Leave Behind Are Memories”.  The second, dated 13 September 1987, also refers to Deen Bros as using the ‘motto’ “All We Leave Behind Are Memories”.  The third article, dated 5 August 1990, again refers to Deen Bros as using the ‘motto’ “All We Leave Behind Are Memories”. 

6. Also appended to the declaration in support are letterheads, facsimile coversheets, Yellow Pages advertisements and so forth showing the opponent’s use of the words “All We Leave Behind Are Memories”.  Some of these are reproduced below:

(A) Undated facsimile coversheet – the graphical element shows the demolition of  Cloudlands.  Another facsimile coversheet in evidence is dated 6 June 2003.

 

(B) Yellow Pages advertisement from year 2003

 

(C) Yellow Pages advertisement from year 2004.

 

(D) Undated within Deen Bros advertisement.  A similar graphic appears within an advertisement in evidence in the Fiji – Australia Club Inc newsletter which  is dated 2003

 

1. A sign similar to that above appears on hard-hats used by Deen Bros employees; there is no information as to when this practice started.

2. The opponent has a registered trade mark to which it refers in its evidence.  This is:

Reg Number  682086

Priority date:  29 December 1995

Goods/Services:  Class: 37 Excavation and earthmoving services including roadworks, drainage, kerb and channelling, road surfacing and paving services; demolition services; plant hire services.

Trade Mark:  

1. I note that the opponent registered only the above trade mark which it could have used only since 1982 (when Cloudlands was demolished) and did not register what it now claims is its trade mark which it says it used as such since 1971.  Obviously, a person may use more than one trade mark but, if registering, why not register both?

2. There are no exhibited examples of the use of the expression “All We Leave Behind Are Memories” as a trade mark in the evidence which have a provenance earlier than 2003.

3. The applicant’s evidence in answer shows that the applicant has used the expression “All We Leave Is A Memory” since at least 1992.  The applicant uses the expression in its advertising and on trucks, cars, demolition equipment, clothing, signage, portable toilets, dumpsters and on advertising and promotional material – the applicant’s claims are well supported with documentary material exhibited to the declaration.

Observation

1. I agree with Mrs Champion that is very difficult to place much weight on that portion of the evidence of Mr George which amounts to unsupported hearsay evidence.  This concerns the date of the adoption and the mode of use of the opponent’s alleged trade mark.  The exhibited documentary support for Mr George’s assertions is, in the main, from 2003.  The only evidence of early possible trade mark usage is reporters’ accounts of the opponent’s use of a motto.  The opponent’s submission is that Mr George’s summary of the alleged use of the trade mark was verified and substantiated by an officer of the opponent: there is no documentary support for this assertion or account of who the officer was at the time this declaration was made.  The opponent has subsequently tendered a statutory declaration by Sultan Deen which it, in its covering letter, characterises as reiterating what Mr George has said.  It is difficult to know whether this means that the declarant is repeating the hearsay evidence or is, alternatively, providing corroboration for the earlier declaration.  The nature of Mr Deen’s assertions in his declaration is very similar to that of Mr George and the allegations are likewise unsupported by exhibits.

2. The person who is best placed to show early examples of the opponent’s alleged trade mark in use is the opponent; for whatever reason, the opponent has not done this or explained the lack of documentary evidence which might support its allegations. In terms of section 55 of the Act, it is for the opponent to establish its opposition to my satisfaction.

Other

1. In its written submissions, the opponent states that the declarations raise relevant grounds particularised in Sections 41, 43, 58 and 60 of the Act. Section 41 is not listed as a ground of opposition in the Notice of Opposition – thus the opponent may not rely on it.

Considerations and Reasoning

Section 58

1. Section 58 provides:

Applicant not owner of trade mark

58. 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.

1. For the opponent to establish this ground, it must satisfy me that it has used a trade mark which is at least substantially identical[1] to the trade mark which it opposes in relation to the same kind of thing[2] before either the priority date of the opposed application (9 January 2003), or the first use of the opposed trade mark (1993), whichever is earlier.[3] 

Trade Mark Usage

[1] Carnival Cruise Lines Inc. v. Sitmar Cruises Limited 31 IPR 375

[2] re Hicks' Case (1897) 22 VLR 636

[3] Lomas v Winton Shire Council (2002) 56 IPR 243

1. The onus is on the opponent to satisfy me that the use of sign on which it relies has been use of a trade mark.  Much of the use of the opponent’s sign is of words which are subsumed into the use of the graphical element of machinery demolishing the Cloudlands building, as in the example I give at (A), above.  The opponent does, however, use the sign separately from the graphical element as in the examples of Yellow Pages advertising which I give at (B) and (C) above.  As Mrs Champion submitted, the issue of whether this separate use of the opponent’s sign is trade mark usage is complicated by the opponent’s reliance on newspaper articles which refer to the sign as being the Deen Bros ‘motto’.  While it is entirely possible that a motto might be a trade mark, it is not clear to me that this early usage of the sign relied on by the opponent falls within the definition of a trade mark:

17  What is a trade mark?

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

Note:For sign see section 6.

1. Again, it is quite possible that the opponent’s use of a motto evolved into something else: use of that motto as a trade mark.  However, there is no information or explanation in the opponent’s evidence as to when this might have happened or documentary support (other than recent) for the opponent’s assertions.

Substantial Identity.

1. Substantial identity is an objective test which is to be gauged on a side-by-side comparison of the trade marks: The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415. The comparison here is between the expressions All We Leave Is A Memory and All We Leave Behind Are Memories. While there are quite striking similarities between the expressions, they are obviously non-identical. The word ‘behind’ is present in one of the expressions and not the other; and, the word MEMORY is singular in the one trade mark and plural in the other – hence the use of the word ‘is’ as opposed to the word ‘are’ in the respective trade marks. The sum of the differences does, I consider, give rise to a perception that the expressions are not the same and do not share an identity with each other.

Prior Usage

1. Although the opponent avers that it (or its predecessor) has used the expression on which it relies as a trade mark since about 1971, the earliest objective support for this claim dates from 2003.  While the opponent has adduced newspaper articles which refer to the expression, the articles uniformly refer to it as a ‘motto'’ rather than as a trade mark.  This is, as I have explained above, problematical.

Conclusion

1. Even if I had found that the trade marks were substantially identical, I would be slow to find that opponent had established its opposition on evidence that amounts to a very general and unsupported allegation.  The absence of concrete supporting evidence for the opponent’s allegations of prior use of a trade mark is unexplained in a legislative environment where the onus is on the opponent to establish the grounds of opposition to the satisfaction of the Registrar, the Registrar’s delegate, or the Courts on appeal.

2. The opponent has not established its ground under section 58.

Section 43

1. Section 43 provides:

Trade mark likely to deceive or cause confusion

43. 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.

1. It was explained in Big Country Developments Pty Ltd v TGI Friday's Inc, [2000] FCA 720, 48 IPR 513 at 521:

   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 [section 43]. 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 s 43.

2. Similarly, the opponent here appears to rely on similarities between the trade marks in question, rather than on some connotation that is inherent within the applicant’s trade mark.  Certainly, the evidence led by the opponent does not go to any connotation inherent in the applicant’s trade mark which might deceive or confuse.

3. The opponent has not established its opposition under section 43.

Section 60

1. Section 60 of the Act provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

60. 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.

1. In order to establish a section 60 ground of opposition the opponent must establish that the applied-for trade mark is substantially identical with, or deceptively similar to another trade mark that enjoyed a reputation in Australia at the priority date of the applied-for mark and that as a result of that reputation, use of the applied-for trade mark would cause deception or confusion.

2. In McCormick & Company Inc v McCormick [2000] FCA 1335 (15 September 2000) Kenny J said at paragraph 81:

   What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by

   the community or the public generally; repute ... 2. favourable repute; good

   name ... 3. A favourable and publicly recognised name or standing for merit,

   achievement, etc. ... 4. The estimation or name of being, having done, etc,

   something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

3. Kenny J went on to discuss the various ways in which a party may establish that their trade mark has a reputation such as details of revenue under the trade mark, advertising expenditure and so forth which have occurred over the years.  The opponent has not provided details such that I can gauge the extent to which the trade mark on which it relies was recognised by the public generally at the priority date of this application.  Indeed, from the evidence before me, it can only be stated with any certainty that the opponent has been involved in the controversial demolition of some four or five buildings over twenty years ago in Brisbane and that it was using the words as a motto at that time.

4. Further, the use of the sign on which the opponent relies is overshadowed by the graphical device of the demolition of Cloudlands and the words are used inconsistently both with and without the graphical element.  This inconsistency makes assessment of a separate reputation of the expression on which the opponent relies impossible in the absence of explanatory evidence from a person more thoroughly acquainted with the issue than the leading declarant.  (I hasten to add that the declaration that the opponent sought to serve and file immediately before the hearing is, as the opponent itself states, reiteration and does not shed light on this issue).

5. In the absence of much more detailed and concrete evidence which clearly demonstrates the historical use of the expression and the extent to which it has been used and separately recognised as a trade mark, such an opposition cannot be established.

6. The opponent has not established its opposition under section 60 of the Act.

Decision

1. Subject to the opponent notifying the Registrar of an appeal against my decision within one month of the date of this decision, the application may proceed to registration.  If such appeal is notified and not withdrawn, the application should be dealt with as the Court directs.

Costs

1. Costs should follow the event and I order costs against the opponent.

Ian Thompson

Hearing Officer

Trade Marks Hearings

6 December 2004