BSC Assets Pty Ltd v Sand 4 U Supplies Pty Ltd

[2017] ATMO 95

TRADE MARKS ACT 1995

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

ReOpposition by BSC Assets Pty Ltd to registration of trade mark application 1714816 (19) – SAND4U BUILDING AND LANDSCAPE SUPPLIES (logo) - in the name of Sand 4 U Supplies Pty Ltd

Delegate:  Robert Wilson

Decision on the written record

Representation:                  Opponent: Griffith Hack – written submissions

Applicant: CIP International Pty Ltd – written submissions

Decision:  2017 ATMO 95

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44 and 62A considered – prior continuous use considered – no grounds established – trade mark may proceed to registration

Background

1.     This decision concerns an opposition brought by BSC Assets Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark subject of the application detailed below in the name of Sand 4 U Supplies Pty Ltd (‘the Applicant’):

Application Number:

1714816

Priority Date:

18 August 2015

Goods:

Class 19: Building sand; Sand for use in construction; Sandbags (filled)

 (‘the Applicant’s Goods’)

Trade Mark:

(‘the Applicant’s Trade Mark’)

Endorsement:

Provisions of subsection s44(4) and/or Reg 4.15 applied.

2. During examination the examiner raised a ground for rejecting the application under s 44 of the Act. The examiner cited the Opponent’s Trade Mark (details of which appear later in this decision). The Applicant provided evidence of use which the examiner considered showed that the Applicant had continuously used the Applicant’s Trade Mark in respect of goods similar to those of the Opponent’s goods for a period beginning before the priority date of the Opponent’s Trade Mark and ending on the priority date of the Applicant’s Trade Mark. The application was accordingly accepted under the provisions of s 44(4) of the Act, as reflected in the endorsement shown above.

3.     On 14 January 2016 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration on 1 March 2016 and a Statement of Grounds and Particulars (‘the SGP’) on 29 March 2016. The Applicant filed a Notice of Intention to Defend on 5 May 2016. The SGP nominated grounds of opposition under ss 44 and 62A of the Act.

4. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, 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.

Evidence

5.     The Opponent filed Evidence in Support of its opposition (‘EIS’) on 18 August 2016. This evidence consists of:

·Declaration made on 18 August 2016 by Dominic Giannini, the Director of the Opponent, with Annexures DG-1 to DG-10 (‘Giannini 1). Annexure DG-10 consists of two declarations being:

oDeclaration made on 4 August 2016 by Antonio Colonna, Manager of the Opponent (‘the Colonna declaration’) ; and

oDeclaration made on 17 August 2016 by Anthony Lazzaro, an associate of the Opponent (‘the Lazzaro declaration’).

6.     The Applicant filed Evidence in Answer (‘EIA’) on 8 November 2016. This evidence consists of:

·Declaration made on 28 October 2016 by Luke Caridi, the Director of the Applicant, with Exhibits LC-01 to LC-13, Pl-01a and Pl-01b (‘the Caridi declaration’).

7.     The Opponent filed Evidence in Reply (‘EIR’) on 9 January 2017. This evidence consists of:

·Declaration made on 7 January 2017 by Dominic Giannini with Annexures DC‑11 to DC-13 (‘Giannini 2’).

8.     Giannini 1 contains the following statement:

The Opponent regards the information which is disclosed in this Declaration, particularly so far as it may relate to its sales figures and advertising expenditure, as relating to the Opponent's business within the meaning of Section 43 of the Freedom of Information Act 1982 (Cth), and to be commercially confidential and valuable. Such information will be commercially advantageous in the hands of competitors in Australia, particularly, but not only, by assisting those competitors to better compete with the Opponent.

Giannini 2 contains a similar statement, being:

The Opponent regards the information which is disclosed in this Declaration as relating to the Opponent's business within the meaning of Section 43 of the Freedom of Information Act 1982 (Cth), and to be commercially confidential and valuable. Such information will be commercially advantageous in the hands of competitors and other persons operating in the same or a related industry, in Australia and overseas, particularly, but not only, by assisting those competitors to better compete with the Opponent.

9.     Such blanket claims to confidentiality are unhelpful, and appear ill‑conceived. This is particularly so where the information over which confidentiality is claimed is in the public domain: such as print-outs from websites, extracts from the Register of Trade Marks and the results of ASIC searches. The Delegate in Source Homeloans Pty Ltd v Coles Group Ltd stated the following when faced with a similar situation:

The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself).[1]

[1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (‘Source Homeloans’).

I will adopt an approach in this matter similar to that taken by the Delegate in Source Homeloans.

10.   Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing. Neither party availed themselves of this opportunity. By letter issuing from IP Australia on 16 March 2017, the parties were notified that as neither party had requested a hearing the matter would be given to a Delegate of the Registrar for a decision on the written record. The parties were given an opportunity to file written submissions. The Opponent filed written submissions which were prepared by its representatives, Griffith Hack. The Applicant filed written submissions which were prepared by its representatives CIP International Pty Ltd.

The Opponent

11.   According to Giannini 1:

The Opponent is a producer and wholesaler of building supplies, plastering and concreting materials, road base materials, materials for retaining walls, steel mesh and lintels, sand soil, gravel, metal, hardware and radio controlled trucks.

The Opponent provides the following goods and services:

·Sand: including bedding sand, brick sand, coarse sand, decorative sand, fill sand, lawn sand, paving sand, plaster sand, soil sand, white sand;

·Soil: including blended soil, fill dirt soil, loam, peat and top soil;

·Rock/stone: bluestone, stones;

·Type: both commercial and residential

12.   The Opponent is the owner of the trade mark application detailed below:

Application Number:

1688164

Priority Date:

27 April 2015

Goods:

Class 19: Building sand; Sand (except foundry sand); Sand (other than moulding sand); Sand for use in building; Sand for use in civil engineering; Sand for use in construction; Sand for use in sand blast decoration; Cement

(‘the Opponent’s goods’)

Trade Mark:

ALL SAND 4 U SUPPLIES  (‘the Opponent’s Trade Mark’)

13. The application for the Opponent’s trade mark was opposed by the Applicant. The Registrar’s decision in that opposition was issued on 16 August 2017. The Registrar’s delegate found the opposition was established as the application had been made in bad faith under s 62A of the Act. At the time of writing this decision the earlier decision is open to appeal under s 56 of the Act.

The Applicant

14.   According to the Caridi declaration the Applicant has used the Applicant’s Trade Mark in the course of trade in Australia since at least as early as September 2014, and that:

My Company registered the business name ‘Sand4U Building and Landscape Supplies’ with ASIC in February 2014, and in July 2014 I changed my existing Company’s name to Sand 4 U Supplies Pty Ltd. Public promotion of the SAND4U Marks[2] commenced then in September 2014. …

The SAND4U Marks have been used in good faith in the course of trade by [the Applicant] continuously since September 2014 in connection with a range of building and landscaping products such as sands, soils, gravels, cements, mulches, pebbles & stones, hardware, bricks, blocks, lintels, dampcourse and turf. We also provide delivery under the [Applicant’s Trade Mark] and the various SAND4U Marks.

[2] I note that this term is not defined in the Caridi declaration; however, in the Applicant’s submissions this term is defined as ‘the trade mark SAND 4 U and associated logo’.

Relationship between Applicant and Opponent

15.   The Opponent appears to be an incorporated family business. As well as being the director of the Opponent, Mr Giannini is the Director of Giannini Family Holding Pty Ltd which is the registered owner of the business name Bankstown Sand and Cement. The evidence shows that Mr Caridi, as well as being the Director of the Applicant, is the nephew of Mr Giannini. Mr Caridi worked with Mr Giannini from the age of 14 years, commencing full-time employment from the age of 18 years. Mr Giannini has declared that he allowed Mr Caridi to operate two of Mr Caridi’s businesses from the premises of (presumably) Bankstown Sand and Cement. This arrangement continued for approximately eight years until Mr Caridi ‘left the employment of the Opponent’. It is not clear from the evidence on what date Mr Caridi ceased working with Mr Giannini; however, it appears they worked together for a period of approximately 13 years.

16.   Notwithstanding the statements in Giannini 1, it is not entirely clear from the evidence whether Mr Caridi was employed by the Opponent or by Giannini Family Holding Pty Ltd. Nor is it entirely certain that Mr Giannini’s assertions of use of trade marks by the Opponent are not more correctly asserted to be use by Giannini Family Holding Pty Ltd. However, for the purposes of this decision it is not necessary to determine the answers to those questions.

Grounds of Opposition, Onus and Standard of Proof

17. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 44 and 62A. To succeed the Opponent must establish at least one of the nominated grounds. The onus of proof rests upon the Opponent.[3] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is 18 August 2015, being the filing date of the application (‘the Relevant Date’).[5]

Discussion

[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[4] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Section 44

18. Relevant provisions of the Act with respect to the s 44 ground are reproduced below:

Section 44 - Identical etc. trade marks

(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a)the applicant's trade mark is substantially identical with, or deceptively similar to:

(i)              a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)             a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(2)…

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

Note:  For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)              the similar goods or closely related services; or

(ii)             the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

19. In the SGP the Opponent nominated the Opponent’s Trade Mark (detailed at para 10) in respect of s 44. Subject to ss 44(3) and (4), to successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), ie that the Opponent’s Trade Mark:

·     has a priority date which is earlier than the Relevant Date (‘the first requirement’); and

·     is in respect of goods which are similar to the Applicant’s goods (‘the second requirement’); and

·     is substantially identical with or deceptively similar to the Applicant’s Trade Mark (‘the third requirement’).

20. The Opponent’s Trade Mark has a priority date which is earlier than the Relevant Date. The Applicant concedes that the Applicant’s Trade Mark and the Opponent’s Trade Mark are in respect of the same goods and that the trade marks are at least deceptively similar. I concur with this assessment. The requirements of s 44(1) are therefore satisfied. However, the Applicant submits that it has demonstrated by the EIA that it has used the Applicant’s Trade Mark in a manner which satisfies the requirements of both ss 44(3) and (4).

21.   It is stated in the Caridi declaration that the Applicant used the Applicant’s Trade Mark ‘and variants’ in the course of trade in Australia since at least as early as September 2014. Mr Caridi also stated:

[The Applicant’s Trade Mark] and SAND4U brand have been promoted in relation to the relevant goods and services continuously since September 2014 by me and my company. Promotion of the Trademark has been Australia wide. Promotion has included by way of:

·Website

·Company Stationery

·Vehicle and premise signage

·Product packaging and storage bags

·Sales and presentations

·Promotional items such as pens and pads

·Christmas Hampers to Customers

·Online marketing campaigns

22.   The Caridi declaration includes a number of exhibits which it asserts support the claim of prior continuous use. Exhibit LC-05 is declared to include ‘a copy of the invoice related to our original logo design in September 2014, along with initial proofs for business card design’. The exhibit includes an invoice dated 2 September 2014 from a Canadian company to ‘SAND4U BUILDING AMD [sic] LANDSCAPE SUPPLIES PTY LTD’. The invoice is for ‘Logo Design Contest ‘SAND4U’. The proofs for the business cards bear the Applicant’s Trade Mark and the Applicant’s contact details in Australia. The exhibit also includes some emails with the subject ‘SAND4U bcard design’. The emails are variously dated in September and October 2015, the earliest being dated 14 September 2015. As an example, an email dated 7 October 2014 to ‘Luke’ from a gentleman with an email address at statewideprinting.com.au contains the text:

Hi Luke

Please find attached the SAND4U b/card design

Can you confirm the details are all correct

Let me know which sample you like …

23.   Exhibit LC-05 also contains what is declared to be ‘a dated photograph of the business cards, showing a date taken of March 2015’. What appears to be a screenshot from a mobile phone, dated 18 March 2015, shows a photograph of two sides of a business card similar to those shown in the proofs, discussed above.

24.   The Caridi declaration asserts that Applicant’s Trade Mark and SAND4U brand are promoted by way of various items of company stationery. Exhibit LC-06 is declared to be ‘copies of invoices from design company Statewide Design & Print ranging in dates from October 2014’. Five invoices are exhibited, three of which are dated earlier than the priority date of the Opponent’s trade mark: the dates of those invoices being 17 October 2014, 16 January 2015 and 30 January 2015. The remaining two invoices are dated 22 May 2015 and 17 July 2015. The invoices are for items such as ‘A4 Job/Invoice Quad-copy books’ and ‘Business Cards x2 kinds’. The invoices are billed to ‘Sand4U’; however, there is no indication in the invoices that the Applicant’s Trade Mark appears on any of the items. Exhibit LC-06 also contains what are declared to be photographs of various pieces of stationery. Included in the exhibit are a copy of an invoice which prominently bears the Applicant’s Trade Mark at the top. The invoice is an unused blank form and bears no date. There are also what appear to be two screenshots of a mobile phone showing photographs stored on a mobile phone. The first screenshot suggests the photograph was taken on 23 December 2014 and is of an invoice dated 16 December 2014. The invoice is for ’25 Offwhite’ and ‘1 delivery’. The invoice prominently bears the Applicant’s Trade Mark at the top of the invoice. The second photograph appears to have been taken on 3 October 2014 and shows what appears to be two pieces of A4 sized paper which bear the Applicant’s Trade Mark but are otherwise blank.

25.   Exhibit LC-07 contains, again, what appear to be screenshots from a mobile phone showing photographs of bags of sand and trucks which prominently bear the Applicant’s Trade Mark. Some of the photographs are dated from before the priority date of the Opponent’s Trade Mark. The exhibit also includes a copy of an invoice from Pope Packaging dated 17 February 2015. The invoice is for 3,000 ‘WPP BAG’. The invoice is billed to SAND4U, but there is no indication in the invoice that the bags bear any particular trade mark.

26.   Exhibit LC-08 includes a page from the Wayback Machine internet archive which shows a page from the sand4u.com website as it appeared on 18 December 2014. The page prominently bears the Applicant’s Trade Mark.

27.   Exhibit LC-09 is declared to be ‘a copy of our earliest price-list, dated October 2014’. The exhibit shows a price list which prominently bears the Applicant’s Trade Mark on the first page. The price list is some nine pages long and includes prices for goods which include all of the Applicant’s Goods.

28.   Exhibit LC-10 is a screenshot taken from a mobile phone which shows a photograph which was apparently taken on 27 February 2015. The photograph shows what is declared to be the Applicant’s Trade Mark as it appears on the uniforms worn by all of the Applicant’s employees.

29.   With respect to the Applicant’s evidence of use the Opponent has submitted:

[T]he Applicant’s evidence of use of [the Applicant’s Trade Mark] is sketchy at best. It amounts to many unverified and unreliable statements and evidence specimens with a few dated examples of use and promotion of [the Applicant’s Trade Mark]. The Applicant failed to provide a single invoice confirming sales of [the Applicant’s Goods], let alone continuous sales and advertising during the Relevant Period (noting that the invoice in Exhibit LC-06 does not make reference to the nature of the goods being sold). To allow registration under Section 44(4) on the basis of a few scant dated examples of use would be unjust given the Applicant has not persuasively demonstrated their use was continuous from the alleged first use date to the Relevant Date in the proceedings.

30. There is some merit to the Opponent’s criticism of the Applicant’s evidence. A few examples of invoices dated in the few months prior to the priority date of the Opponent’s Trade Mark and which were for goods which are clearly within the scope of the Applicant’s Goods would have made for unequivocal evidence of prior use. Nevertheless, on balance I am satisfied that the requirements of s 44(4) are satisfied for the reasons which follow.

31. The concept of use of a trade mark is relevant to a number of sections of the Act. For example, in rebutting an allegation of non-use of a trade mark pursuant to s 92 the opponent to removal is taken to have rebutted that allegation if it establishes that the challenged trade mark was ‘used in good faith’ by its registered owner in connection with the relevant goods or services.[6] What constitutes use for the purposes of s 100 is considered in a number of authorities. There is, in my view, no reason why the principles found in those authorities should not also apply to considerations of use for the purposes of s 44(4).

[6] Trade Marks Act 1995 ss 100(2)-(3).

32.   In Woolly Bull Enterprises Pty Ltd v Reynolds Drummond J found that for the purposes of s 100(3)(a):

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.[7]

[7] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [40] (‘Woolly Bull’).

33.   The combination of the exhibits to the Caridi declaration detailed above in combination with the Caridi declaration itself satisfy me the applicant has gone beyond investigating whether to use the Applicant’s Trade Mark. It is apparent that before the priority date of the Opponent’s Trade Mark the Applicant had got to the stage where it can be seen objectively to have committed itself to using the trade mark. Acts such as emblazoning vehicles and uniforms with the Applicant’s Trade Mark, printing a price list, creating a website and filling bags bearing the trade mark with sand apparently ready for sale are sufficient to amount to use of the Applicant’s Trade Mark.

34. The Opponent has also submitted that the Applicant’s Evidence is insufficient to show continuous use as required by s 44(4). In respect of what constitutes continuous use Tamberlin J stated that:

The use required must be more than that which might suffice to avoid showing abandonment. There must also be a continuous user which is more than an occasional use. In Smith, Bartlett & Co v British Pure Oil Grease & Carbide Co Ltd (1933) 51 RPC 157, Maugham J held that use on three occasions in six years was not continuous.[8]

[8] Canon Kabushiki Kaisha v Brook (1996) 69 FCR 401, 411.

Given the short period of time from the indicated first use to the priority date of the Opponent’s Trade Mark it would require only a few examples of use to demonstrate this requirement. The Applicant’s evidence is sufficient.

35.   I am satisfied that the Applicant continuously used the Applicant’s Trade Mark for a period beginning before the priority date of the Opponent’s Trade Mark in respect of goods similar to the Opponent’s Goods and ending on the Relevant Date. Consequently, the Opponent has failed to establish this ground of opposition.

Section 62A – Application made in bad faith

36. In the SGP the ground under s 62A was particularised as follows:

The Applicant was employed by the Opponent between November 2001 and March 2014. During the course of the Applicant’s employment with the Opponent, the Applicant was aware of the Opponent’s intention to use the term ‘SAND 4 U’ in relation to the Opponent’s business. The Applicant filed the Application in bad faith given the Applicant’s understanding of the Opponent’s intended use of the term ‘SAND 4 U’ in respect of the Opponent’s business. The Applicant’s adoption of a trade mark which could be easily confused with the Opponent’s trade mark is in bad faith as it is intended to gain benefit from the Opponent’s reputation. The Applicant’s conduct falls short of the standard of reasonable commercial behaviour.

37. Section 62A of the Act is reproduced below:

62A Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

38.   The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

• persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
• persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
• persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

39.   The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section of the Act. In that case, Dodds-Streeton J made the following comments:

Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards. …

The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[9]

[9] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [24]-[26].

40.   Her Honour continued later in the same decision:

The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[10]

[10] Ibid [165]-[166].

41.   It is stated in Giannini 1 that:

The Opponent first used the term ‘SAND 4 U’, which is the distinctive and dominant element of both [the Opponent’s Trade Mark and the Applicant’s Trade Mark], in 1998 as a means of promoting the Opponent’s business.

and that:

Since first use of the term ‘SAND 4 U’ by the Opponent in Australia in 1998, the Opponent’s Goods have been continuously sold and promoted under, and by reference to, the term ‘SAND 4 U’. Specifically, the Opponent promotes the Opponent’s Goods bearing the Opponent’s Trade Mark using the following media:

(a)The Opponent’s Website;

(b)Sand bags;

(c)The Opponent’s business stationery.

42.   Annexed to Giannini 1 are copies of certificates relating to the registration of motor vehicles with the number plate ‘SAND4U’ for the years 2002 to 2012. The vehicles were registered to ‘Bankstown Sand and Cement’ until 2006, and from then on to Giannini Family Holding Pty Ltd. Mr Giannini declared that those businesses are related to the Opponent. For the first three years the number plate was registered for a prime mover truck, and for the remaining years for a ‘ute’. Also exhibited are two photographs, one of a truck bearing the number plate and the other of a utility vehicle bearing the number plate. The utility vehicle does not appear to have any trade marks on the body panels other than those of its manufacturer. The truck has the words BANKSTOWN SAND & CEMENT in large letters on the door of the truck.

43.   Annexure DG-6 to Giannini 1 is declared to be ‘extracts from the Opponent’s website showing use of the Opponent’s Trade Mark in relation to the Opponent’s Goods’. A stylised version of the Opponent’s Trade Mark (‘the Opponent’s Logo’), shown below, appears prominently at the top of many of the 15 pages of the annexure. A date at the bottom of the extracts suggests they were retrieved in August 2016. There is no assertion that the website bore the Opponent’s Trade Mark at any time before the priority date.

44.   Annexure DG-7 is declared to be ‘copies of designs showing use of the Opponent’s Trade Mark’. The annexure seems to contain design proofs such as might be created by a graphic designer. The designs show use of the Opponent’s Logo as it might appear on the side of a truck and its dog trailer. It is not declared when these designs were commissioned or created.

45.   Annexure DG-8 is declared to be ‘copies of the Opponent’s invoices showing use of the Opponent’s Trade Mark’. The annexure contains two invoices: one blank and one dated 4 July 2016. The dated invoice is for ‘WHITE BUSH MAROOTA’ and a delivery charge. The invoices bear the Opponent’s Logo along with ‘BSC’ and ‘Bankstown Sand & Cement’. There is no assertion that invoices bearing the Opponent’s Logo were in use before the priority date of the Applicant’s Trade Mark.

46.   Mr Giannini has declared:

The Opponent and one of the Opponent’s employees and associates are able to declare that the Applicant was aware during his 13 year employment with the Opponent of the Opponent’s use of the term ‘SAND 4 U’ in respect of the Opponent’s business. … The Declarations the subject of Annexure DG-10 provide that the Applicant was aware during his lengthy period of employment with the Opponent of the Opponent’s use of the term ‘SAND 4 U’ in relation to the Opponent’s business.

47.   There are some obvious difficulties with the statement above. The statement refers to both the Opponent and the Applicant as though they are people: which they are not. The Opponent, being a corporation, is not itself able to declare anything, although one of its officers may do so on its behalf. Nor was the Applicant employed by the Opponent. Given the wording of the statement, I will assume that the reference to the Applicant is a reference to Mr Caridi. I note that Mr Giannini has made no statement in either Giannini 1 or Giannini 2 regarding his personal view of what Mr Caridi may or may not have been aware.

48.   Annexure DG-10 contains two declarations: the Colonna declaration and the Lazzaro declaration. Mr Colonna declared that he was employed by the Opponent from 15 September 1997 until 17 April 2009. Mr Colonna recommenced employment with the Opponent on 20 April 2014. The Colonna declaration primarily addresses Mr Colonna’s view as to how the Opponent’s customers may have interpreted the ‘SAND 4 U’ number plates discussed above. His declaration includes no reference to Mr Caridi, and no assertions as to the Applicant’s state of mind.

49.   The Lazzaro declaration indicates that Mr Lazzaro has known Mr Giannini for approximately eight years and over that eight years frequently visited Mr Giannini at his business premises. Mr Lazzaro also developed a friendship with Mr Caridi. In his declaration Mr Lazzaro referred to Mr Caridi as ‘LC’ and Mr Giannini as ‘DG’. Mr Lazzaro declared the following:

LC told me on a number of occasions that he believed that DG should make him a partner in DG’s business.

LC also told me that he considered the term ‘SAND 4 U’ to be a fantastic business name and that if DG did not make him a partner in DG’s business, he had decided to use the term ‘SAND 4 U’ for his own business.

LC was aware at that time of DG’s use of the term ‘SAND 4 U’ to promote the business of the Opponent.

50.   In his declaration Mr Caridi acknowledges being aware of the ‘SAND 4 U’ number plate. He also states that to the best of his knowledge the number plates have not been on a vehicle that has been on the road since around 2010 when it was parked at the Opponent’s premises and subsequently sold in 2012. Mr Caridi has provided Confidential Exhibit LC-13 to support this claim. The exhibit consists of four declarations. It is not explained why these declarations are claimed to be confidential and they appear to contain no commercially sensitive information. Nevertheless, I think it is safe to reveal that two of the four declarations support Mr Caridi’s claim. The other two declarations do not contradict Mr Caridi’s claim.

51.   In Giannini 2, Mr Giannini disputes Mr Caridi’s claim about the use of the vehicle bearing the ‘SAND 4 U’ number plates. Mr Giannini, declared that until it was sold the vehicle bearing the number plates was used by him, the manager of the business and other staff to conduct activities related to, and on behalf of, Bankstown Sand and Cement. Mr Giannini also declared that:

Following the sale of the Ute, the SAND4U vehicle plates were put ‘on hold’ or reserved at the NSW RTA. This means that they were not available for registration by any other third party. …

I confirm that the Opponent had no intention to abandon the vehicle plates or the use of the ‘SAND4U’ trade mark. The intention to continue to use the ‘SAND4U’ trade mark is apparent in the Opponent’s yearly renewals of the vehicle plate reservation …

52.   In respect of the allegation of bad faith under this ground the Applicant has submitted:

The Applicant commenced its preparation to trade under and by reference to the SAND4U Marks as early as February 2014 (evidenced by the registration of a business name). …

The Applicant has acknowledged the past relationship with the Opponent’s director and has acknowledged it knew of the use of SAND 4 U on a number plate connected to the Bankstown business. …

Given the manner of use of SAND 4 U by the Bankstown business … it cannot be said that at the time of filing [the application for the Applicant’s Trade Mark] the Applicant or any other person would view the filing as short of acceptable behaviour.

53.   In its submissions the Applicant rejected the Opponent’s assertion that the use of the ‘SAND 4 U’ number plates described above constitutes use as a trade mark. I am inclined to agree with this view. Further, there is no clearly dated evidence before me of any other use by the Opponent of ‘SAND 4 U’, or some variation of it, before the priority date that might constitute use as a trade mark. Nor is there evidence before me that satisfies me that the Opponent had conveyed an intention to use such a trade mark to the Applicant or Mr Caridi prior to the first demonstrated use of the Applicant’s Trade mark by the Applicant. Mr Caridi has relevantly declared that:

In the many years of my employment with the Opponent or its Bankstown business I never once heard or saw anything that would suggest to me that the Opponent had any intention to use the term SAND 4 U or its filed mark ALL SAND 4 U SUPPLIES as a brand of product or as a sign it would use to distinguish [its] goods from the goods of other traders.

54.   It appears the Applicant merely applied to register a trade mark it had been using before the priority date of the Opponent’s Trade Mark. I am not satisfied that in applying to register the Applicant’s Trade Mark the Applicant acted in a manner which was unscrupulous, underhand or unconscientious in character. Consequently, the Opponent has failed to establish this ground of opposition.

Decision

55.   The Opponent has failed to establish either of the grounds of opposition it nominated in the SGP. Accordingly, application 1714816 may proceed to registration after 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 either the appeal is withdrawn or a court so orders.

Costs

56. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson

Hearing Officer

Hearings and Oppositions

31 August 2017