Bianco Construction Supplies Pty Limited v Bianco Hiring Service Pty Limited

[2015] ATMO 58

TRADE MARKS ACT 1995

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

Re:Opposition by Bianco Construction Supplies Pty Limited to registration of trade mark application no(s) 1474353 – BIANCO HIRE in banner device– and 1474359 – BIANCO HIRE - filed in the name of Bianco Hiring Service Pty Limited.

Delegate:	Bianca Irgang
Representation:	Opponent: Adam Rosser of Cosoff Cudmore Knox Applicant: Franco Camatta of Camatta Lempens Lawyers
Decision:	2015 ATMO 58 Opposition under section 52 of the Trade Marks Act 1995 – Sections 44, 58 and 60 pressed – s. 58 successful – no need to consider additional grounds.

Background

1. Bianco Hiring Service Pty Limited (‘the applicant’) filed its trade mark applications on 14 February 2012 in classes 6, 11, 19, 35, 37 and 39 of the International Classification of Goods and Services. Relevant details of the applications are set out below.

   Trade mark:  

   Trade mark application:      1474353

   Filing Date:  14 February 2012

   Specification:  Class 6: Transportable buildings of metal including building structures, toilet blocks and toilets; transportable metal containers; modular portable building structures of metal, structures of metal incorporating a toilet

   Class 11:Apparatus for water supply and sanitary purposes including mobile (portable) sanitary installations, portable showers, portable toilets and toilets for incorporation into portable buildings

   Class 19:Non-metallic transportable buildings including non-metallic buildings for housing portable toilets; non-metallic building structures; mobile sanitary installations contained within a non-metallic transportable building; non-metallic pre-fabricated structures for use as toilets; portable buildings made of non-metallic materials; modular non-metallic portable building structures

   Class 35:Advertising and promotion of services for the hiring of portable buildings, non metallic and metallic containers for storage, portable sanitation facilities, building structures, and security apparatus

   Class 37:Building constructions; repair; and installation services including servicing of portable toilets, hiring, installation, erecting and construction of security fencing; hiring service for construction and lifting apparatus; plant hire; provision of hygienic cleaning services including in relation to shower and toilet facilities, changing room facilities and portable toilets and sanitation facilities

   Class 39:Hire services for portable storage containers and other containers

   Endorsements: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

   Trade mark:  BIANCO HIRE

   Trade mark application:      1474359

   Filing Date:  14 February 2012

   Specification:  Class 6: Transportable buildings of metal including building structures, toilet blocks and toilets; transportable metal containers; modular portable building structures of metal, structures of metal incorporating a toilet

   Class 11:Apparatus for water supply and sanitary purposes including mobile (portable) sanitary installations, portable showers, portable toilets and toilets for incorporation into portable buildings

   Class 19:Non-metallic transportable buildings including non-metallic buildings for housing portable toilets; non-metallic building structures; mobile sanitary installations contained within a non-metallic transportable building; non-metallic pre-fabricated structures for use as toilets; portable buildings made of non-metallic materials; modular non-metallic portable building structures

   Class 35:Advertising and promotion of services for the hiring of portable buildings, non metallic and metallic containers for storage, portable sanitation facilities, building structures, and security apparatus

   Class 37:Building constructions; repair; and installation services including servicing of portable toilets, hiring, installation, erecting and construction of security fencing; hiring service for construction and lifting apparatus; plant hire; provision of hygienic cleaning services including in relation to shower and toilet facilities, changing room facilities, and portable toilets and sanitation facilities

   Class 39:Hire services for portable storage containers and other containers

   Endorsements: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

2. The applications were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 26 September 2013. Bianco Construction Supplies Pty Limited (‘the opponent’) filed Notices of Intention to Oppose the registration of the trade marks on 22 November 2013 followed by a statement of grounds and particulars on 20 December 2013. These documents, taken together, constitute the Notices of Opposition (‘the Notices’). Thereafter the opponent and applicant served and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the matters in Canberra on 24 March 2015 as a delegate of the Registrar of Trade Marks. Mr Adam Rosser of Cosoff Cudmore Knox represented the opponent. The applicant was represented by Mr Franco Camatta of Camatta Lempens Lawyers.

   Grounds of Opposition

4. The Notice nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

5. Prior to the hearing the opponent advised that it would press and provide submissions only on the grounds under sections 44, 58 and 60 of the Act. Therefore, the grounds for my consideration are those under sections 44, 58 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s specification of goods and services, there is no requirement for the other grounds of opposition to be considered.

   Evidence

   6.     The evidence consists of the following statutory declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Joseph Corbo	Chief Financial Officer  of Bianco Construction Supplies Pty Limited	17.04.14	JC1 to JC5
Orazzio Bianco	Director and Secretary of Bianco Construction Supplies Pty Limited	17.04.14	RB1 to RB6
Evidence in Answer
Guiseppe Albuino	Sole Director and Secretary of Bianco Hiring Service Pty Ltd	29.07.14	GA1 to GA11
Evidence in Reply
Orazzio Bianco	Director and Secretary of Bianco Construction Supplies Pty Limited	1.10.14	RB7 to RB13

1. At the hearing both parties made representations to have additional evidence considered. I after hearing their arguments I allowed both parties to provide additional evidence and comment in the weeks after the hearing according to an agreed to timetable.

Opponent’s Further Evidence
Joseph Corbo	Chief Financial Officer  of Bianco Construction Supplies Pty Limited	25.03.15	JC6 to JC11
Applicant’s Further Evidence
Guiseppe Albuino	Sole Director and Secretary of Bianco Hiring Service Pty Ltd	25.03.15	GA1 to GA5

The opponent’s evidence

1. The first declaration of Mr Orazzio Bianco (‘the Bianco 1 declaration’) states that in 1977, Mr Bianco’s father, Nick Bianco, established a company then named Bianco Hiring Services Pty Limited (‘Bianco’). Bianco initially traded as a building equipment hire business in South Australia. Bianco offered a range of tools and equipment for hire and grew to include the hire of portable buildings, ablution facilities and storage containers.

2. According to Mr Bianco, Bianco expanded over time to include sales of building equipment. In 2003 Bianco changed its name to Bianco Building Supplies Pty Limited. In 2006 it changed its name to Bianco Trade Supplies Pty Limited. Mr Bianco states that Bianco was the original company in a group of companies controlled by his father (‘the Bianco Group’). Other companies in the group included Bianco Trade Wholesalers Pty Limited, Bianco Construction Supplies and BBH Merchants Pty Limited. Mr Nick Bianco was the largest shareholder of the Bianco Group and exercised effective control over the Bianco Group. Bianco Hiring Service Pty Limited (‘the applicant’) was also initially a part of the Bianco Group. The applicant was established in June 2003. Exhibit RB2 contains a copy of an ASIC company search for the applicant which shows that Nick Bianco was a founding shareholder and director of the applicant and remained a director until 2011.

3. The Bianco 1 declaration states that since at least 1988, Bianco traded using a logo mark incorporating an arch device containing the word ‘BIANCO’ in block letters. Where the logo was able to be used in colour, the arch was yellow, with a black border and drop shadow, and black text.  Bianco eventually registered Australian trade marks numbered 748676, 1051581 and 1051582. The current details of these trade mark registrations are contained in exhibit RB3 and are as follows:

   Trade mark:  

   Trade mark registration:     748676

   Filing Date:  14 November 1997

   Specification:  Class 7: Machines and machine tools; masonry machine tools including brick saws

   Class 35:Retail services (including mobile retail services comprising vehicles providing on-site retailing services) relating to hardware, tools (including machine tools and hand tools) and building supplies (other than apparatus for water supply or sanitary purposes)

   Trade mark:  

   Trade mark registration:     1051581

   Filing Date:  20 April 2005

   Specification:  Class 6: Metal building materials included in this class; metal hardware included in this class

   Class 8: Hand tools and parts and accessories therefor

   Class 12: Wheelbarrows

   Trade mark:  BIANCO

   Trade mark registration:     1051582

   Filing Date:  20 April 2005

   Specification:  Class 6: Metal building materials included in this class; metal hardware included in this class

   Class 7:Machines and machine tools; power tools; parts and accessories for all the foregoing

   Class 8: Hand tools and parts and accessories therefor

   Class 12: Wheelbarrows

   Class 35:Retail services relating to hardware, tools and building supplies (other than apparatus for water supply or sanitary purposes)

4. Mr Bianco states that Bianco informally authorized members of the Bianco Group to use these trade marks and the Bianco arch logo. Members of the Bianco Group used additional words below the arch logo mark to describe the nature of each specific business. In the case of the applicant, it used the Bianco arch logo with the word ‘HIRE’ below. Mr Bianco states he was not aware of any written licence agreement between Bianco and the applicant.

5. Exhibit RB4 contains two print outs from the Internet Archive Wayback Machine (archive.org) for the domain from the dates 27 November 2001 and 1 February 2004. The print outs show that the Bianco arch logo has been used consistently through that time period and both versions do show transportable buildings with the Bianco arch logo with the word ‘HIRE’ below. According to both Mr Bianco and Mr Albuino, the Bianco arch logo with the word ‘HIRE’ has been used since at least August 1988 which is before the applicant existed. According to Mr Bianco, Bianco did not assign any rights to the Bianco arch logo (with or without any words below) prior to any person prior to transferring Bianco’s registered trade marks to the opponent.

6. The Bianco 1 declaration states that the opponent was established on 29 August 2011 (although it was formally known as Bianco Hardware Pty Limited) and that it was incorporated specifically to purchase the assets of a number of members of the Bianco Group. On 30 September 2011, the opponent entered into an Asset Sale Agreement with the receivers of Bianco Trade Wholesalers Pty Limited, Bianco Construction Supplies Pty Limited, Bianco Trade Supplies Pty Limited and BHH Merchants Pty Limited. Mr Bianco states that by the Asset Sale Agreement, the opponent purchased assets of the above members of the Bianco Group and has operated the businesses of those Bianco entities.

7. Mr Bianco asserts that the Asset Sale Agreement provided for the sale of the ‘assets’ to the opponent. The term ‘assets’ was defined to include the ‘trade mark’. The term ‘trade mark’ is defined to mean Australian trade mark registrations 748676, 1051581 and 1051582 according to Mr Bianco. A redacted copy of Asset Sale Agreement to exclude confidential information has been provided in exhibit RB7 accompanying the second declaration of Mr Bianco (‘the Bianco 2 declaration’). The Asset Sale Agreement specifically mentions trade marks being included in the assets sold to the opponent along with the domain name >

   The first declaration of Mr Joseph Corbo (‘the Corbo 1 declaration’) supports Mr Bianco’s statements concerning the Asset Sale Agreement. The Corbo 1 declaration states that Mr Corbo is the Chief Financial Officer and was an alternate director of the opponent at the time of the Asset Sale Agreement and that he has personal knowledge of its contents. He states that the opponent acquired title to Bianco’s registered trade marks, free from encumbrance, by the Asset Sale Agreement dated 30 September 2011. While only a redacted copy of the Asset Sale Agreement is before me, I do note that mention is specifically made of the trade marks as being assets to be acquired in the transaction. I also note that the above trade mark registrations were formally assigned to the opponent following applications for assignment of the trade marks being made in October 2011.

8. According to the Bianco 1 declaration, since the opponent purchased Bianco’s registered trade marks and commenced operating in 2011, the opponent has informally licensed Hiring to use the registered trade marks in respect of its business. Mr Bianco asserts that as part of the informal licence, the applicant has paid to the opponent $100,000 per annum (plus GST). Payment has been by equal monthly installments. The payments are recorded on invoices as ‘marketing services’ but he has understood them to cover use of the registered trade marks. In return for the payment the opponent:

   ·Authorizes the applicant to use the trade marks the subject of the opposed applications for its business;

   ·Where customers call the opponent rather than the applicant, directs the calls to the applicant; and

   ·Includes a hyperlink to the applicant’s website on its own website.

9. No written licence agreement has been entered into between the applicant and the opponent for use of trade mark registrations now owned by the opponent. However, exhibit RB11 accompanying the Bianco 2 declaration is a copy of a Heads Agreement for Sale and Purchase of Shares in Bianco Hiring Service Pty Ltd dated 29 October 2010. At paragraph 6.3.3 of the Agreement it states that the Licence Agreement between Bianco Trade Supplies Pty Ltd as licensor and the Company as licensee in respect of all trade marks currently used by the Company on the following commercial terms: term – remaining period of registration of the relevant trade marks and that the licence fee is $1.00 per annum payable only on demand.

10. Turning to the evidence of Mr Corbo, the Corbo 1 declaration states that Bianco was a well-known business in South Australia having operated since about 1977. Mr Corbo states this was a primary reason why the opponent acquired Bianco’s trade mark registrations. He goes on to explain that the Bianco trade marks are used in every aspect of the opponent’s business including on major signage; its website (annexure JC1); on its business documents (annexure JC2); business cards (annexure JC3); invoices (annexure JC4); and on its sales documents (annexure JC5). Annexure JC5 is a copy of the opponent’s 2014 catalogue in which the opponent uses the Bianco registered trade marks prominently with the words “CONSTRUCTION SUPPLIES” below. The catalogue also refers to the applicant on page 63 and the opposed trade marks are displayed, however, there is nothing in the catalogue to let consumers know the entities are not somehow related to each other.

11. Mr Corbo refers to the declaration of Mr Guiseppe Albuino dated 16 August 2013 and its accompanying exhibits which is contained in exhibit RB1 accompanying the Bianco 1 declaration. This declaration by Mr Albuino (the ‘Albuino 1 declaration’) was filed with IP Australia during examination in relation to citations initially raised against the opposed trade marks. This declaration and its accompanying exhibits were considered sufficient to overcome a section 44 ground for rejection raised during examination. Four citations were raised against the applicant’s trade marks during examination, two of which were trade mark registrations 1051581 and 1051582 owned by the opponent.

12. Mr Corbo confirms that exhibit GA11 accompanying the Albuino 1 declaration demonstrates that Bianco Group advertised by way of sponsorship of the Port Adelaide Football Club. The sponsorship involved the use of Bianco’s registered trade marks in various contexts including Bianco’s registered trade marks with the words ‘CONSTRUCTION SUPPLIES’ below the Bianco arch logo.

13. Mr Corbo states that the opponent and the applicant are not related entities and that the connection between the two companies is based on a historical family relationship. They have no common shareholders or directors. He states that the opponent and the applicant have a business relationship by which the opponent allows the applicant to use Bianco’s registered trade marks and provides some minor services such as a web link and call redirection. The Corbo 1 declaration states that the opponent has received a total of 1088 calls regarding the applicant from 22 November 2013 to 21 March 2014. All of these calls were redirected to the applicant.

    The applicant’s evidence

14. The second declaration of Mr Guiseppe Albuino (‘the Albuino 2 declaration’) states that on 1 July 2003 by way of a Sale of Business Agreement, the applicant purchased the Bianco Hire Business owned and operated by Bianco Building Supplies Pty Ltd. According to Mr Albuino the terms of the Sale of Business Agreement contemplated the sale of the Bianco Hire business as a going concern and included all of its business assets (both tangible and intangible). Mr Albuino states that to the best of his knowledge the sale included the sale or any and all intellectual property rights held by Bianco Building Supplies Pty Ltd in respect of the Bianco Hire business including any registered and unregistered trade marks.

15. The Albuino 2 declaration disputes much of what the Corbo 1 declaration and Bianco 1 declaration state and claims that ownership of the domain name is a separate dispute between the parties and really belongs to the applicant. The evidence of the applicant and opponent are at odds with this information as it appears that this particular domain name was sold to the opponent (exhibit RB9 accompanying Bianco 2 declaration).

16. Further to this, Mr Albuino states that there is not, and has never been any agreement, understanding or arrangement or “business relationship” between the opponent and applicant in respect of the use of the Registered trade marks or the opposed trade marks. However, this is not in line with the Heads of Agreement for Sale and Purchase of Shares in Bianco Hiring Service Pty Ltd (exhibit RB11 accompanying the Bianco 2 declaration). I note that the applicant’s legal representation wrote to the opponent 12 April 2012 requesting specific performance of this part of the contract (exhibit RB12 accompanying the Bianco 2 declaration).

1. Mr Albuino states that to the best of his knowledge, it was agreed between the applicant and the former operator of the business Bianco Construction Supplies Pty Ltd ( who I believe is the opponent who was also formally known as Bianco Diamond Tools (Australia) Pty Ltd and now known as Ex BCS Pty Ltd (in liquidation)) that the latter would, amongst other things provide administration services including:

   ·   Debtor management and collections;

   ·   Customer database management;

   ·   Supplier management and payments;

   ·   Cash flow management;

   ·   Management accounting services;

   ·   Telephony services including reception; and

   ·   IT management and services.

2. The opponent was also to provide services concerning sales representation including lead referral and small account management and shared marketing services.

3. Mr Albuino states that with the Bianco Group growing in size and complexity it was determined that centralized administration, IT and sale force was preferable. Each company in the Bianco Group was charged varying levels of fees (generally called Administration Fees of Business Centre Fees) to cover the centralized costs.

4. The Albuino 2 declaration states that the applicant, upon acquiring the business from Ex BSCS Pty Ltd (in liquidation), the applicant and the opponent agreed that the opponent would provide the services listed above at a considerable fee per month. In addition to this fee, it was agreed that the applicant would pay commissions to sale representative of the opponent as appropriate. Mr Albuino states that regardless of the above arrangement the applicant and the opponent have at all relevant times conducted their respective businesses from separate locatons, however, the telephone and IT services of each business were linked between to two locations via an optical cable.

5. Mr Albuino states that on or about September 2012 the applicant established its own administration function, installed its own IP infrastructure and telephony services and employed additional sales executives and got its own telephone number. As a result of the measures put in place by the applicant in September 2012 the services that the opponent has provided to the applicant has decreased to:

   ·Lead referral from the sales team of the opponent;

   ·Transfer of telephone calls; and

   ·Access to historical financial and sales data stored on the IT systems of the opponent.

6. As a result of the decreased services provided by the opponent, the applicant has been paying a fee (including commissions) of approximately half what it had previously paid month for the services referred to above.

7. Mr Albuino states that the applicant and the opponent have historically shared the case of joint marketing exercises including corporate boxes at sporting events. The applicant also specifically instructs the opponent in relation to the content for the catalogue produced and distributed by the opponent, the cost of which is incorporated into the monthly fixed fee that the applicant pays the opponent.

8. According to the Albuino 2 declaration, other joint activities are undertaken for mutual benefit like participation in trade shows and at the time of making his declaration Mr Albuino states that in the spirit of cooperation the companies have maintained links from their respective websites to each other. However, I note that Mr Albuino states that an advertisement for the applicant in the yellow pages dated 11 April 2014 (exhibit GA3) was unauthorized by the applicant and that the opponent’s standard letter head (annexure JC2 accompanying the Corbo 1 declaration) contains a reference to the applicant in the footer. Mr Albuino states that this use in the footer is not authorized and he has since demanded it be removed. Mr Albuino states that he believes these instances of unauthorized use by the opponent have led to the number of calls the opponent has then forwarded onto the applicant. 

   Ownership – section 58

9. Section 58 of the Act provides:

   Applicant not the owner of the 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.

10. Ownership of a trade mark may arise in two different ways – at statute by the filing of an application to register that trade mark[3] on particular goods or services[4], or at common-law by the use of that trade mark on the particular goods or services or goods and services which are the same kind of thing.  The owner of the trade mark is the person who first uses it, or first files the application, whichever is the earlier. For the purposes of demonstrating ownership the first use need only be a small amount[5].

    [3] Identical or substantially identical trade marks: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413

    [4] ‘the same kind of thing’ Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75 at 639-40

    [5] Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, 600 ( per Jacobs J).

11. It must first be determined if the opponent has used an identical or substantially identical mark to the applicant’s BIANCO HIRE trade mark. The test for substantial identity is that the trade marks are:

    compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.”[6]

    [6] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 per Windeyer J at 414

12. The two trade marks to be compared are as follows:

Applicant’s trade marks	Opponent’s trade marks
BIANCO HIRE	BIANCO

1. A comparison of the opponent’s trade mark and the applicant’s trade mark creates a total impression of similarity[7]. A consideration of the opponent’s BIANCO trade marks when compared to the applicant’s BIANCO HIRE trade marks reveals the all the trade marks contain the same word BIANCO. While the applicant’s trade marks do contain the additional word ‘HIRE’, this appears to be descriptive of their hire services and alludes to the purpose of their goods. The addition of the word HIRE is not sufficient to differentiate the applicant’s trade marks from the opponent’s trade marks.

   [7] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495

2. It must now be determined whether the opponent was the first user of the trade mark in Australia. The opponent has argued that the applicant is not the owner of the BIANCO HIRE trade marks as the applicant was not sold these trade marks when it purchased the hiring portion of the Bianco business from the Bianco Group on 1 July 2003. The opponent states that the applicant was permitted to lease the BIANCO trade marks from Bianco Building Supplies Pty Ltd for $1 per annum payable on demand (exhibit RB11 accompanying the Bianco 2 delcaration). The opponent has demonstrated that it then purchased registered trade mark nos. 748676, 1051581 and 1051582 in an Asset Sale Agreement dated 30 September 2011 (Bianco 1 declaration, Bianco 2 declaration with exhibit RB9, Corbo 1 declaration). The applicant has argued that it did acquire the BIANCO HIRE trade marks when it purchased the hire part of the Bianco business in 2003 as part of the ‘goodwill’. This issue is at the heart of the dispute between the parties.

3. The arguments put forth by both parties focus on the opponent’s 2011 Asset Sale Agreement where it acquired its BIANCO trade marks and whether or not the common law trade mark BIANCO HIRE formed part of the “goodwill” of the hire portion of the business that was sold to the applicant in 2003. There has been much discussion about what was exactly written into the opponent’s Asset Sale Agreement and the connotations which can be drawn from behavior, agreements and emails between the parties and then their legal representatives over the course of more than a decade.

4. I do not have the applicant’s 2003 Business Sale Agreement before me but I do have:

   ·   A Heads Agreement for Sale and Purchase of Shares in Bianco Hiring Service Pty Ltd dated 29 October 2010; and

   ·   A redacted copy of the opponent’s 2011 Asset Sale Agreement

5. Both of these documents mention the registered BIANCO trade marks. The 2010 Heads Agreement for Sale and Purchase of Shares in Bianco Hiring Service Pty Ltd sets outs informal ($1 per annum on demand) leasing of these trade marks to the applicant. The 2011 Asset Sale Agreement specifically states that the trade mark registration nos. 748676, 1051581 and 1051582 were included in the agreement whereas other assets were specifically excluded from the agreement. From this evidence, I am satisfied that the opponent acquired the BIANCO trade mark registrations in 2011 as well as all the goodwill associated with them. Section 6 of the Act states:

   6 Definitions

   (1) In this Act, unless the contrary intention appears:

   predecessor in title, in relation to a person who claims to be the owner of a trade mark, means:

   (a) if the trade mark was assigned or transmitted to one or more than one other person before it was assigned or transmitted to the first‑mentioned person—that other person or any one of those other persons; or

   (b) if paragraph (a) does not apply—the person who assigned the trade mark, or from whom the trade mark was transmitted, to the first‑mentioned person.

   Note: In the case of a trade mark that is neither registered nor the subject of an application for registration, the trade mark may be assigned or transmitted in Australia only in conjunction with the goodwill of a business concerned with the trade mark. If the trade mark is registered or the subject of an application for registration, section 106 provides that the trade mark may be assigned or transmitted with or without the goodwill of the business.

6. I am satisfied that Bianco Trade Wholesalers Pty Limited, Bianco Construction Supplies Pty Limited, Bianco Trade Supplies Pty Limited and BHH Merchants Pty Limited were the predecessors in title of the BIANCO trade marks but upon the Asset Sale Agreement that use became use by the opponent. The opponent’s evidence demonstrates, and has been corroborated by the applicant, that the plain text BIANCO trade mark has been used by the predecessors in title on hiring services since 1977. The BIANCO trade mark with the arch device has been used on services including hire services since at least 1988. This use has now become use by the opponent. Both of these dates are before the priority dates of the opposed application.

7. The question now remains if the applicant’s 2003 Business Sale Agreement included the BIANCO HIRE trade marks and the use of those marks on hiring services by the predecessors in title. Normally, I would say that the common law principals apply when considering if the right and interest in a common law trade mark passed to the applicant with his purchase of the business. However, from the evidence before me it does not appear that there was a BIANCO HIRE common law trade mark. Rather, the evidence points to a number of trade mark registrations for BIANCO which remained the assets Bianco Building Supplies Pty Ltd (and all its other incarnations/renamings over time) and were leased to those members of the Bianco Group on an informal basis (exhibit RB11).

8. The applicant has clearly been offering hiring services of the various goods listed in its specification under the opposed BIANCO HIRE trade marks, however, the close business relationship it maintained with the opponent through shared administrative and marketing services (paragraph 25 and 26 of this decision) as well as the lease agreement of the trade marks specifically stated in the Heads Agreement for Sale and Purchase of Shares in Bianco Hiring Service Pty Ltd dated 29 October 2010 only serves to emphasise the that BIANCO trade marks belonged to the opponent and that the applicant was an official lessee of the BIANCO trade marks for the purpose of running the former hire business of the opponent. Any use in Australia, therefore, was on behalf of the opponent, rather than being use on behalf of the applicant itself.

9. In conclusion, I find that the opponent first used an identical trade mark in Australia before the filing date of the application or, arguably, any use by the applicant of its trade mark, in relation to goods that are the same kind of thing. It follows that the opponent, and not the applicant, is the trade mark owner, and the section 58 ground of opposition is established with respect to all the goods and services specified in trade mark applications 1474353 and 1474359. I therefore do not need to consider the other grounds which were argued at the hearing.

   Decision

10. Section 55 of the Act provides:

    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.

11. I find that the opponent has met the onus upon it, in terms of the grounds of opposition under section 58 argued at the hearing. I refuse to register trade mark applications 1474353 and 1474359.

    Costs

12. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant in terms of Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Trade Marks Hearings

    26 June 2015