Centennial Park Cemetery Authority v KSAMS Nominees Pty Ltd

[2016] ATMO 85

TRADE MARKS ACT 1995

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

Re:Opposition by KSAMS Nominees Pty Ltd to registration of trade mark application 1638432 – Centennial Park Florist with rose device - in the name of Centennial Park Cemetery Authority.

Delegate:	Bianca Irgang
Representation:	Opponent: Ben Gardiner of Counsel instructed by Belperio Clark Lawyers Applicant: Marcus Fleming of Counsel instructed by Norman Waterhouse
Decision:	2016 ATMO 85 Trade Marks Act 1995 - Section 52 opposition: section 58 ground of opposition established for all services – registration refused.

Background

1. Centennial Park Cemetery Authority (‘the applicant’), filed trade mark application number 1638432 on 1 August 2014 in class 35 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:   (the ‘Trade Mark’)

   Trade mark application no: 1638432

   Filing Date:  1 August 2014

   Specification:  Class 35: Retail sale of natural and synthetic flowers and flower arrangements

2. Acceptance of the application for possible registration was published in the Australian  Official Journal of Trade Marks dated 18 December 2014. Subsequently KSAMS Nominees Pty Ltd (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars.

3. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 9 August 2016. The opponent was represented by Ben Gardiner of Counsel instructed by Belperio Clark Lawyers. The applicant was represented Marcus Fleming of Counsel instructed by Norman Waterhouse.

   Grounds of Opposition

5. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’). Those grounds being under sections 41, 42(b), 58, 60 and 62A were pursued at the hearing. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2] Should the opponent establish one ground of opposition in relation to all of the applicant’s services, there is no requirement for me to consider the other grounds of opposition.

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

   [2] Pfizer Products Inc v Karam [2006] FCA 1663 [6] - [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133]

   Evidence

6. The evidence in this matter consists of the following declarations being:

   Evidence in Support

   ·Declaration of Harilaos Fakaris (the ‘Fakaris 1 declaration’) dated 22 June 2015 with annexure HF-1

   Evidence in Answer

   ·Declaration of Bryan Elliott (the ‘Elliott declaration’) dated 18 September 2015 with annexures BE-1 to BE-8

   Evidence in Reply

   ·Declaration of Harilaos Fakaris (the ‘Fakaris 2 declaration’) dated 24 November 2015 with annexure HF-2 to HF-4

   Opponent’s Evidence

7. The Fakaris 1 declaration states the opponent is the owner of a florist shop known as “CENTENNIAL PARK FLORIST”, CENTENNIAL FLORIST & GIFT BASKETS” and “CENTENNIAL FLORIST” located at 653 Goodwood Rd, Panorama, South Australia. The opponent’s florist shop is directly across the road from the cemetery and crematorium (‘the Cemetery’) that the applicant has operated since 1938. Mr Fakaris states that the florist shop has operated from its position opposite the Cemetery under the above names since 1938. The City of Mitcham’s website contains a section called “History of Panorama” in which some of the history of the Cemetery and the surrounding area, including the florist shop, is described:

   Once the Centennial Park Cemetery opened for burials in 1938, there was an opportunity for selling flowers. The shop opposite the cemetery began from an old outbuilding of J Weil, tinsmith of Springbank who settled there in 1858. It is one of the few buildings left from the old Village of Springbank. 

8. Mr Farkaris attests that the opponent purchased the Florist shop (the ‘Florist Shop’) pursuant to a Business Sale Contract dated 25 March 2009.[3] Settlement was effected on 8 May 2009 and I am satisfied that all the goodwill in the business and unregistered trade marks used by the opponent’s predecessor in title passed to the opponent at this time. There is a sign bearing the words CENTENNIAL PARK FLORIST in large font painted on the shop front of the Florist Shop. Document 2 in exhibit HF1 contains a photograph of this prominent sign on the shop front:

   [3] Document 1 in exhibit HF1 accompanying the Farkaris 1 declaration

9. Mr Farkaris states that the signage on the Florist Shop predates the opponent’s purchase of the business in 2009 and I accept this because the assertion is supported by the advertisement for the Florist Shop in the 1982 Yellow Pages[4] which appears below:

   [4] Exhibit HF1 accompanying the Farkaris 1 declaration

10. This advertisement bears the same address as the opponent’s Florist Shop and indicates that a florist shop called Centennial Park Florists was operating from the opponent’s premises since at least 1982. On the balance of probabilities I am satisfied that it is more likely than not, that the opponent’s predecessor in title was operating a florist shop under the above CENTENNIAL PARK FLORIST trade mark since at least 1982, if not longer. I am also satisfied that the sign on the shop as seen in paragraph 8, predates the 2009 purchase of the shop by the opponent by at least a few years.

11. The opponent is also the owner of the domain name which the opponent obtained as part of the purchase of the Florist Shop in May 2009. Since that time, the opponent has spent a reasonable amount on advertising and promoting its business through various media including radio, the internet, Yellow Pages and White Pages telephone directories and though ‘Open Day’ at the Cemetery. The opponent has achieved substantial sales over a long period of time by reference to the words CENTENNIAL FLORIST and CENTENNIAL PARK FLORIST.[5]

    [5] Confidential Document 7 in exhibit HF1 accompanying the Farkaris 1 declaration

    Applicant’s Evidence

12. The Elliot declaration explains that the applicant is a regional subsidiary of the local governments of the City of Mitcham and the City of Unley. According to Mr Elliot, the Cemetery was called Centennial Park because it was established in 1936 which was the centenary year of the proclamation of the state of South Australia. Since its establishment in 1936 the total number of funerals undertaking at the Cemetery exceeds 250,000. Mr Elliot estimates that approximately 500,000 people visit the Cemetery each year. This figure is based on the estimate of 4,500 funerals a year, and the total number of burials and cremations undertaken at the Cemetery since it opened. It is estimated that at least 1,000 people visit the Cemetery each week. According to the Elliot declaration, there are more than 50 cemeteries in the metropolitan area of Adelaide and that the Cemetery is the busiest of the currently operating cemeteries.

13. The applicant markets its cemetery services under the trade mark CENTENNIAL PARK in various ways such as at community events like its Fathers Day and Mothers Day services held on site. The applicant spends a considerable amount on marketing its services each year and it advertising via sponsoring community event, hosting open days on the grounds, radio, billboards and on the back of busses, newsletters, card holders and pens.[6]

    [6] Exhibit BE4 accompanying the Elliot declaration

14. Mr Elliot disputes the claims made by the opponent that the Florist Shop operated opposite the Cemetery since 1938. He states that he found no record to indicate that the business operated from at least 1938 or that is used the name Centennial Park from that time. Mr Elliot states that according to the applicant’s records from 1938 to 1939 there were less than 100 burials and that there are many slides and negatives from that time. Exhibit BE5 contains a copy of a photograph from page 281 a book called “At the End of the Road” which purports to show the area surrounding the Cemetery in 1938. In the aerial photograph there appears to be open land around the Cemetery and not a florist shop in 1938.

    Discussion

    Section 58 – Applicant not the owner of the trade mark

15. Section 58 of the Act 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.

16. In order to make out a ground of opposition under section 58, the opponent must establish that:

    ·   the respective trade marks of the applicant and opponent are either identical or substantially identical,[7]

    ·   the respective services on which the trade marks have been or are to be used  are the ‘same kind of thing’ ^[8]

    ·   the opponent has the earlier claim to ownership based on authorship[9] and use of its trade mark prior to both the filing of the application and any actual use of the opposed trade mark by the applicant.[10]

    [7] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 120 ALR 495; 31 IPR 375

    [8] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75

    [9] Authorship in that sense involves the origination or first adoption of the word as and for a trade mark Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391 [399]

    [10] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 [413]

17. In regards to the second point, it is clear that the opponent uses its CENTENNIAL PARK FLORIST trade marks on the retail of flowers. The applicant has not yet used its Trade Mark on the claimed services being the retail of flowers. Therefore, the opponent’s services are the same to those claimed by the Trade Mark and the opponent must demonstrate use of a substantially identical trade mark before 1 August 2014 which is the priority of the Trade Mark.

18. It must then be determined if the opponent has used an identical or substantially identical mark to the applicant’s trade mark CENTENNIAL PARK FLORIST. The test for substantial identity is that the trade marks are to be:

    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.”[11]

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

19. The respective trade marks to be compared are as follows:

Applicant’s trade mark Opponent’s trade marks

1. A comparison of the opponent’s trade marks and the applicant’s trade mark creates an impression of resemblance.[12] The trade marks of the parties are comprised of the same essential features. Each trade mark contains the identical words CENTENNIAL PARK FLORIST and a rose device. While the fonts of the trade marks differ and the opponent’s second trade mark contains the word FLORISTS rather than FLORIST, these are not differences which substantially affect the identity of the trade marks.  The same applies to the rose device. The rose devices are slightly different but all can only be described as rose devices and the addition of a rose device to the identical words CENTENNIAL PARK FLORIST creates a total impression of resemblance. I find that the respective trade marks are substantially identical.

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

2. I must now determine whether the opponent was the first user of the trade mark in Australia. There is dispute between the parties about when the Florist Shop first started trading as I have outlined in the evidence. However, whether or not the Florist Shop opened in 1938, the fact remains the advertisement in the Yellow Page in the opponent’s evidence is dated from 1982. This is before the priority date of the Trade Mark. This advertisement, coupled with the continuing trade that the opponent has demonstrated it has engaged in, satisfies me that the opponent has traded under its CENTENNIAL PARK FLORIST trade mark since at least 2009 and that its predecessor in title was trading under that same trade mark since at least 1982.

3. In conclusion, I find that the opponent first used a substantially identical trade mark in Australia before the filing date of the Trade Mark or, arguably, any use by the applicant of its Trade Mark, in relation to services that are the ‘same kind of thing’, post dates the opponent’s use of its substantially identical trade mark. 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 services specified in trade mark application 1638432. I therefore do not need to consider the other grounds which were argued at the hearing.

   Decision

4. Section 55 of the Act 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.

   Note:          Forlimitationssee section 6.

5. I find that the opponent has met the onus upon it, in terms of the ground of opposition under s 60. Accordingly I refuse to register trade mark application no. 1638432.

   Costs

6. 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

   17 October 2016