Browns Sawdust & Shavings Supplies Pty Ltd v Timothy Dean Brown

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Browns Sawdust & Shavings Supplies Pty Ltd to registration of trade mark application number 2299611 (class 31) - BROWNS – SAWDUST AND SHAVINGS (composite) - in the name of Timothy Dean Brown

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Gadens Lawyers

Applicant: De Marco Lawyers

Decision:

2025 ATMO 20

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 58, 59, 60 and 62A pursued – Applicant’s evidence out of time given no weight – s 58 established – trade mark refused.

Background

On 11 September 2022 (‘Relevant Date’) an application under the Trade Marks Act 1995 (Cth) (‘Act’)[1] was made in the name of Timothy Dean Brown for a trade mark with the following details:
Priority date: 11 September 2022
Trade mark number: 2299611
Trade mark:
(‘Trade Mark’)
Goods: Class 31: Woodshavings for use as animal bedding; Bedding materials for animals; Bedding for animals (‘Applicant’s Goods’)
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
After examination of the application under s 31, acceptance was advertised on 12 February 2023.
Browns Sawdust & Shavings Supplies Pty Ltd (‘Opponent’) filed a Notice of Intention to Oppose on 23 March 2023 and its Statement of Grounds and Particulars (‘SGP’) on 19 April 2023. On 6 July 2023 the Applicant filed its Notice of Intention to Defend.
On 10 October 2023 the Opponent filed its Evidence in Support (‘EIS’), which consists of a declaration of Scott Brown, director of the Opponent, dated 9 October 2023, including Exhibits SB-1 to SB-18 (‘S-Brown’).
On 29 January 2024, this office informed the Applicant in writing that the time for the Applicant to file Evidence in Answer (‘EIA’) to the opposition ended on 19 January 2024. The Applicant did not file EIA before the end of this period.
On 26 February 2024, the Opponent requested to be heard. On 22 August 2024, a delegate of the Registrar directed that the Opponent file its submissions by 5 September 2024 and that the Applicant file their submissions by 12 September 2024 should they wish to be heard on the matter. On 4 September 2024 the Opponent filed its filed written submissions prepared by Savannah Hardingham of Gadens. On 10 September 2024, the Applicant requested to be heard.
On 11 September 2024, the Applicant requested an extension of time for the filing of its EIA until 19 October 2024 under s 224(2)(a) (‘EOT’). On 1 October 2024 a delegate of the Registrar contacted the Applicant by letter noting that further details and explanations for the delay in filing, and compelling reasons for why the EOT should be granted would be required. The delegate further noted that ‘[y]ou have not yet filed your [EIA], which weighs heavily against granting the extension of time’. On 14 October 2024, the Applicant filed further submissions prepared by their lawyers on the question of whether the EOT should be granted. However, the Applicant did not at that time file any evidence with any of its submissions. On 4 November 2024, a delegate of the Registrar informed the Applicant that they had refused the request for the EOT. Accordingly, the opposition to registration was then in a state where it was ready to be decided.
On 14 November 2024, the Applicant then filed a declaration of Timothy Dean Brown, dated 13 November 2024, with Exhibits TB-1 to TB-7 (‘T-Brown’).[2] A delegate of the Registrar invited the Applicant to pay the required fee for filing of a document outside the periods for evidence and gave the Applicant until 25 November to pay the fee.
[2] I also at times refer to this as the EIA throughout these written reasons.
On 25 November 2024, the Applicant refiled T-Brown and filed submissions regarding the issue of whether I should give weight to this evidence. However, the Applicant did not pay the required fee before this time, occasioning further delay. On 2 December 2024, the Applicant then paid the applicable fee listed at item 9C in Schedule 4 to the Regulations.
I have decided the matter as a delegate of the Registrar.
Onus and grounds
The Opponent has the onus of establishing one of the nominated grounds of opposition.[3] The standard of proof is the ordinary civil standard of the balance of probabilities.[4]
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The SGP pursued grounds of opposition under ss 42, 58, 59, 60 and 62A.
For reasons which follow, the ground of opposition under s 58 is established so I need only address this ground of the opposition.
Evidence
EIS
S-Brown states that in May 2003, the Opponent was incorporated as a company.[5] S-Brown also declares that in 2003 the Opponent commissioned the design of the Trade Mark by a design company based in Richmond, Victoria to be used exclusively by the Opponent.[6] S-Brown states that around the same time, the Opponent adopted the Trade Mark and commenced using it as a trade mark in relation to all aspects of its business, including offering and supplying the Opponent’s range of goods, which include the Applicant’s Goods, to consumers.[7]
[5] S-Brown, [7].
[6] S-Brown, [9].
[7] S-Brown, [10]-[11].
Exhibits to S-Brown variously include examples of documents showing use of a trade mark which is identical to the Trade Mark in relation to wood shavings and bedding for animals, in social media posts, invoices and other documentation. Much of this evidence is dated well before and leading up to the Relevant Date.
I need not summarise every single Exhibit. However, by way of example I note that at Exhibit SB-6 are screen captures of the Opponent’s website which show the following trade mark in relation to rice hulls and pine mulch:
(‘Browns Logo’)
The screen captures at Exhibit SB-6 are dated 19 August 2006, 30 August 2007 and 13 March 2008. Another screen capture of the Opponent’s Website is dated 14 October 2009 and shows the Browns Logo in relation to rice hulls and pine mulch and notes that, ‘custom trucks provide perfect unloading of products inside Shed and Stable complexes’.
Exhibit SB-19 to S-Brown consists of tax invoices. One dated 8 July 2014 is in relation to bags of pine shavings and it displays the Trade Mark at the top. This tax invoice also mentions the name of the Opponent. Another tax invoice, dated 2 June 2015, shows the Trade Mark in relation to ‘Fine Eucalyptus This is a 50/50 mix with the Hardwood Sawdust’ and Hardwood Sawdust. Another, dated 13 March 2015, shows the Trade Mark at the top in relation to ‘Horse Bedding Sold by the Meter’. This invoice also mentions the name of the Opponent.
At Exhibit SB-11 is a sales quote from a company named as Browns Sawdust & Shavings Pty Ltd, dated 12 October 2005, alongside what appears as an Australian Business Number (‘ABN’) commencing with the numbers ‘70 104 732’. This sales quote shows the following trade mark in relation to pine sawdust to be placed in stables at events, including at Melbourne Exhibition Centre:
I also add that the tax invoices at SB-9 show the Trade Mark and the name of the Opponent in relation to:
·‘bags of pine shavings’ dated 8 July 2014;
·‘Fine Eucalyptus… a 50/50 mix with the Hardwood Sawdust’ and hardwood sawdust’, dated 2 June 2015;
·‘Fine Hardwood Sawdust & Fine Washed Sand supplied as a 3 to 1 Mixture’, dated 5 July 2016;
·‘Fine Fibre.. by the tonne’ dated 27 November 2017;
·‘Horse bedding Sold by the Meter’, dated 13 March 2018;
·‘Hardwood Sawdust’ dated 15 June 2020;
·‘Pine Chips Sold by the tonne’ dated 3 May 2021;
·‘Pine & Hardwood Sawdust, Shavings Supplied as a mixture’ and ‘Rice Hulls supplies as a trail’ dated 20 September 2021; and
·‘Pine Sawdust & Pine Shavings Supplied as Mixture’ dated 8 June 2022.
For the purposes of the deciding this matter I need not further summarise S-Brown or its Exhibits and refer to them where relevant.
Preliminary Considerations
T-Brown was filed after the periods for evidence had ended. As such it was filed out of time. Material filed out of time may be considered by the hearing officer pursuant to reg 21.15(4). Part 51.2.5 of the Trade Marks Office Manual of Practice and Procedure notes that a party must make a compelling case for giving such material weight when deciding the opposition. Important considerations are the nature and significance of the evidence put forward, including whether the material is critical to the outcome and whether that material is of high probative value.[8]
[8] Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42, [50] (Hearing Officer Wilson).
It is worth noting that after recent changes to the Regulations a fee is now also required when a document is filed outside the periods for filing of evidence.[9] Where a fee has not been paid, if the Registrar notifies a person concerned under reg 21.23 that a fee has not been paid, the document is not taken to have been filed before the day on which the fee is paid.[10]
[9] See reg 21.21 and sch 9, item 9C in Schedule 9 in the Regulations, inserted by sch 1, s 40 of the Intellectual Property Legislation Amendment (Fee Amounts and Other Measures) Regulations 2024 (Cth), which applies to a document filed after 1 October 2024 (see s 2).
[10] Section 21.21A(3)
T-Brown consists in summary of documents from the Australian Securities and Investments Commission (‘ASIC’), an apparent personal written statement from the late mother of the parties and a number of uncorroborated statements about how the Trade Mark was authored and ownership of the Trade Mark. Notably not a single objectively dated instance of use of the Trade Mark in relation to the Applicant’s Goods by another person is demonstrated in T-Brown. No compelling or corroborated basis for assertions that may or may not contradict the Opponent’s explanation of how the Trade Mark was commissioned is put forward. There are also several serious allegations made in T-Brown which lack specific detail and I do not summarise these. Overall, it is not apparent to me how this material would be crucial to the outcome in these proceedings.
The EIS was due by 19 January 2024. The Applicant states that they were not made aware of the deadline for the EIA in the proceedings because their, ‘…email account had been compromised since September 2023 therefore I could not access or respond to any alleged emails [from their then attorney firm]’.[11] There is no evidence which corroborates the statement that the email account was compromised. Nor is there any detail about those matters such as when and how they occurred, or actions taken by the Applicant in that regard. T-Brown does not elaborate exactly how the Applicant received notice of the failure to file the EIS at some time in January. Further, I note that there is no direct statement or evidence from the former attorney firm corroborating these matters, which often will follow when such situations occur.
[11] T-Brown, [7]. I do not disclose the name of the firm here as they have not had a fair opportunity to respond.
T-Brown also attempts to address the reasons for the further delay in filing the EIA after the notice was received in January 2024. T-Brown declares that the Applicant was made aware at least by January 2024 that the EIA had not been filed in the period required. T-Brown further declares that the Applicant was moving their family home in the months of January 2024 to March 2024, causing delay. T-Brown also declares that the long history of events and lack of access to key documents and files had also compounded the delay. There are no specific details about how all of this impacted the evidence gathering process.
T-Brown states that the Applicant commenced the evidence gathering in March 2024. The Applicant filed its EIA in November 2024, before which they sought the EOT in September. The period of delay spans almost 11 months, if measured from when the Applicant states they was made aware of the failure to file the EIA. Much of T-Brown, for example the ASIC report, could have been obtained with little difficulty or otherwise not with such difficulty as to justify such a lengthy period of delay. Overall, the information that is provided about the reasons for the delay in the provision of the EIA lacks detail and is uncompelling. I also note that evidence about the reasons for the delay consists of almost only uncorroborated statements of the Applicant.
There is a public interest in the resolution of this matter without even further and continued delay. I am mindful that the provisions of reg 21.15 should not be utilised in a manner which undermines the role of the EOT provisions and that the EOT was refused. Regardless, none of the contents of T-Brown would likely change the outcome in this matter.
For these reasons, I do not give weight to any of the contents of T-Brown.
Consideration
Section 58
Section 58 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.
The term ‘owner’ is not defined in the Act. However, it is well established that the owner of a trade mark is the person who first uses it in Australia, or first files a trade mark for it in Australia, whichever is the earlier.
To establish this ground the Opponent must show:
- a person other than the Applicant used the Trade Mark, or a trade mark with additions or alterations which do not substantially affect the identity of the Trade Mark,[12] in the course of trade in Australia; and
- the use was before the filing date of the Trade Mark, or before use of the Trade Mark by the Applicant, whichever is the earlier; and
- the use was in relation to the Applicant’s Goods or in relation to goods considered to be the same kind of thing as the Applicant’s Goods.[13]
There is no evidence filed in these proceedings which demonstrates the Applicant had used the Trade Mark before the Opponent in relation to the Applicant’s Goods.
The statements made in S-Brown are that authorship was commissioned by the Opponent at some point in 2003. There is no evidence properly filed and before me in these proceedings which would contradict this. Furthermore, there are also numerous examples of use of the Trade Mark by the Opponent across almost 20 years which support a finding that it was Opponent who commissioned the Trade Mark and was the owner. The explanation of the Opponent is plausible, and I have no compelling reason to doubt it. I am satisfied that, on the balance of probabilities, the Opponent authored and adopted the Trade Mark.
The EIS contains various examples of the use of the Trade Mark by a person other than the Applicant in relation to seemingly bulk quantities of the Applicant’s Goods. These examples of use of the Trade Mark occurred before the Relevant Date and in relation to, for example pine and hardwood shavings and chips, sand and sawdust. I note that pine shavings and chips, sand and sawdust referred to throughout the evidence are all known forms of natural or organic animal bedding. The invoices at Exhibit SB-9 display the Trade Mark, each dated in the years starting in 2015 until 2022, in relation to organic forms of animal bedding. One invoice, for example, is dated 13 March 2018 and lists the goods as ‘horse bedding sold by meter’. Another dated 5 July 2016 lists the goods sold as, ‘Fine Hardwood Sawdust & Fine Washed Sand…’.
A sales quote at Exhibit SB-11 to S-Brown, shows ‘ABN 70 104 732’ at the lower part of the document, mentioned alongside the company name ‘Browns Sawdust & Shavings Pty Ltd’. The footer of the document does not clearly show the whole ABN. However, it at least appears to mention an entity other than the Applicant. The trade mark shown in the header of the sales quote is identical to the Trade Mark other than the lack of an eye in the depiction of the chicken. I do not consider this to be a difference which substantially affects the identity of the Trade Mark. The sales quote lists the goods as ‘Pine sawdust supplied & place (sic) into stables’ and ‘pine sawdust is supplied on a mtr price for Equitana at Melbourne Exhibition Centre’. Further, it states, ‘36 stables to be filled… 60 cubic metres is required’.
The use of the Trade Mark shown at Exhibits SB-9 and SB-11 to S-Brown occurred before the filing date of the Trade Mark by persons other than the Applicant. The use there shown is also in relation to goods which I am satisfied are the same as, or the same kind of thing as, the Applicant’s Goods.
On the balance of probabilities, I am satisfied that a person other than the Applicant was the owner of the Trade Mark at the Relevant Date, in particular Browns Sawdust & Shavings Supplies Pty Ltd by its likely commissioned authorship of and prior use of the Trade Mark, in respect of the Applicant’s Goods.
Accordingly, the s 58 ground of opposition has been established.
Decision
Section 55 relevantly provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, 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.
The Opponent has established a ground of opposition under s 58. Accordingly, I refuse to register trade mark 2299611.
Costs
The Opponent has sought costs, which generally follow the event. There is no reason to depart from this approach and I award costs against the Applicant under s 221 in accordance with Schedule 8 to the Regulations.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
31 January 2025

[2025] ATMO 20

31 January 2025