Central Station Holdings Pty Ltd v Sony Computer Entertainment Europe Ltd

[2005] ATMO 46

TRADE MARKS ACT 1995

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

Re:Application by Sony Computer Entertainment Europe Ltd to remove registration 538940(9) Central Station under section 92 and opposition thereto by Central Station (Holdings) Pty Ltd.

Delegate:	Ian Thompson
Representation:	Applicant.  Catherine Hustwick of Madderns
Opponent: Angela Bowne instructed by John Spence of John Spence & Associates
Decision:	Applicant did not establish itself as a person aggrieved. Costs awarded against the applicant.

Background

1. The following trade mark is registered in the name of Central Station (Holdings) Pty Ltd (hereinafter ‘CSH’):

Regn No:              538940
Reg from:             27 July 1990
Goods:                 All goods in class 9
Trade Mark:         CENTRAL STATION (Logo)

1. On 18 September 2003, Sony Computer Entertainment Europe Limited of London (hereinafter ‘SCEE’) made application under the provisions of section 92(4)(b) for the partial removal of the registration for all goods in class 9, excluding musical recordings and DJ gear and equipment.  The relevant three year period for the purposes of section 92 is thus from 18 August 2000 until 18 August 2003.

2. On 5 January 2004, CSH (of McMahon’s Point, NSW) filed Notice of Opposition to the application for removal on the grounds, inter alia, that SCEE is not a person aggrieved and claiming that the trade mark has been used.

1. On 3 December 2004, CSH served and filed evidence in support of its opposition.  SCEE did not serve and file evidence in answer.

2. As a delegate of the Registrar of Trade Marks, I heard the parties at a hearing in Canberra on 9 May 2005.  Angela Bowne of Counsel instructed by John Spence of John Spence & Associates represented CSH.  Catherine Hustwick of Madderns represented SCEE. 

3. Before discussing the submissions of the parties, it is convenient to list the evidence of CSH and discuss what it shows.

4. The following statutory declarations have been served and filed by CSH as evidence in support of the opposition:

Declarant	Position Known as	Date Made	Attachments
Guiseppe Palumbo	Consultant to CSH Palumbo	3 November 2004	GP-1 to GP-30
Morgan Evan Williams	Business Manager to CSH Williams	3 November 2004
Nicholas Roger Dunshea	A&R Director of Shock Records Dunshea	7 September 2004
Tim McGee	Managing Director, Ministry of Sound (UK) Pty Ltd McGee	3 September 2004
Raymond Kenneth Herd	Director, Silverpark Investments Pty Ltd t/a Central Station Perth Herd	2 September 2004
Steven Bourk	Director and owner of Token Tunes Pty Ltd Bourk	20 August 2004

Glen Navratil	General Manager of MRA Entertainment Group Pty Ltd Navratil	18 August 2004
David Anthony Lacey	National on Premise Manager for Tempus Two Wines Lacey	19 August 2004
David Hiscock	Co-owner of BeatFM radio, Sydney Hiscock	18 August 2004
Cuono Biviano	Managing Director of Universal Lighting & Audio (ULA) Pty Ltd Biviano	20 August 2004
Mark Alsop	Director, DJ, Editor Alsop	30 August 2004

1. The declarations other than that by Mr Palumbo attest to the declarant’s knowledge of CSH’s use of the trade mark and the capacity of the declarants to do so as it relates to their dealings in the Australian music industry or with CSH.

2. The following is a synopsis of the compendious declaration of Mr Palumbo who is a consultant to CSH in Sydney.  CSH is one of a group of three more or less related companies, the others being Central Station Records and Tapes Pty Limited – which is owned by the declarant and his sister – and Central Station Pty Limited.  The ultimate owner of the two related companies not owned by Mr Palumbo and his sister is Homeleisure Pty Ltd in which Mr Palumbo and his sister have shares).   These related companies record, produce and retail musical recordings on record and tape through their own retail shops in Sydney, Melbourne, Brisbane, Adelaide and Perth as well as to other musical retailers in all Australian States and overseas (as well as over the Internet with these sales being based both from Australia and the United States).

10.  The CENTRAL STATION retail stores sell the musical recordings of CSH and those of other record companies and also sell other goods bearing the CENTRAL STATION trade mark including (as well as recorded music) casual and street wear, footwear, caps, bags including backpacks, headphones, slip cases for compact discs, connecting cords, CD cleaners, DJ gear including turntables, amplifiers, loudspeakers, microphones, audio/video mixers, and some other goods such as keys, key-rings, pens, pendants, poster, sticker and labels.  I note that this list is very well supported by physical and photographic evidence.

11.  CSH thus uses its trade mark CENTRAL STATION in relation to both goods and services relating to the recording and sale of musical recordings and the sale of some related and ancillary goods as well as promotional goods such as t-shirts etc.

12.  Mr Palumbo’s claims as to the use of the CENTRAL STATION trade mark in relation to the above goods and services during the relevant period are well supported by exhibits and by the other declarations listed above which are from people with experience in the Australian music business or who are employed by one of the owner’s associated companies.

13.  One final feature of the evidence of Mr Palumbo is that of a course of dealing between Sony Music Australia Limited and/or Sony Australia Limited and CSH. 

14.  During 2002, prior to the eventual sale or merger of two of the CSH related companies to or with Homeleisure Pty Ltd, Mr Palumbo had investigated the possibility of selling or merging the related companies to or into Sony Australia Limited (hereinafter ‘SA’) and negotiations had progressed as far as SA inspecting the books and financial records of CSH or its related companies in a process of what I understand to be called ‘due diligence’.  Apparently, SA decided, possibly Mr Palumbo states after consultations with others in the Sony organization in Europe and/or the United States, against proceeding with the deal.

Submissions

15.  Ms Bowne submitted that SCEE had adduced no evidence to establish itself as a person aggrieved, a threshold requirement of section 92 of the Act.  Ms Bowne directed my attention to the case-law that relates to this requirement which stems from the decision in Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 34 IPR 198.

16.  In particular Ms Bowne stressed that, from the position of CSH, although these proceedings in combination with the prior course of dealings with SA look questionable, CSH to its knowledge has had no dealings with SCEE.

17.  Ms Hustwick submitted that there was no requirement that SCEE produce its own evidence that it is a person aggrieved because the evidence of Mr Palumbo established that SCEE is a person aggrieved.

18.  However, as Ms Bowne observed, there is only mention of SCEE in the evidence of Mr Palumbo inasmuch as it is referred to as the applicant for removal – it is not mentioned in the context of prior dealings or negotiations directly or indirectly with CSH.

19.  Ms Hustwick’s response to this observation was that, “They are all Sony related companies.”  From this I understand that Ms Hustwick means that if one part of Sony is aggrieved by the registration, then all parts of Sony are aggrieved by the registration.  However, this conclusion is untenable unless supported by evidence: different companies are different legal persons that are created because they are intended to be different legal entities for manufacturing or trading, taxation and other legal purposes.  It does not appear to me that such diverse entities as SCEE, Sony Kabushiki Kaisha, Sony Corporation, Sony Australia Pty Ltd or Sony Computer Entertainment Inc could, at least at face value, all be similarly aggrieved by CSH’s registration.

20.  Ms Hustwick then applied to file further evidence.  This further evidence is in the form of a declaration made on 8 May 2005, the day before the hearing, by Steven Christopher Worthley, a trade mark attorney with Madderns.  He states in his declaration that, on behalf of Sony Computer Entertainment Limited, he has been prosecuting Australian trade mark application 950552.

21.  He exhibits to his declaration the results of an Internet search made on 29 April 2004 on the Google search engine and two other Internet printouts which link the trade mark PLAYSTATION to the words ‘central station’, for which no trade mark status is claimed.  Despite PLAYSTATION being expressly claimed as a trade mark of Sony Computer Entertainment Inc, and another as a trade mark of Sony Corporation, no such claim is made for the expression ‘central station’ or ‘centralstation’ in these printouts.

22.  The other part of the attachment is the front page of the Google search for the words CENTRAL STATION PLAYSTATION, showing the first 10 hits of the search, each with a two or three line abstract which contains either the words ‘central station’ or the trade mark PLAYSTATION or both. 

23.  However, there is no mention of SCEE in any of these printouts. 

24.  The service and filing of further evidence is governed by the provisions of regulation 5.15 which provides:

5.15 Extension of period to serve evidence and service of further evidence

(1)A party to the opposition proceedings may apply to the Registrar:

(a)for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or

(b)for permission to serve a copy of further evidence on the other party.

(2)The Registrar may grant an application on reasonable terms specified by the Registrar.

(3)The Registrar must not grant an application unless the Registrar:

(a)is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

(b)has given the parties a reasonable opportunity to make representations concerning the application; and

(c)is reasonably satisfied that:

(i)in the case of an application to which paragraph (1) (a) applies — the extension of the period for serving a copy of the evidence; and

(ii)in the case of an application to which paragraph (1) (b) applies — permission to serve a copy of further evidence;

is appropriate.

(4)For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

(5)If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.

(6)Subregulations (2), (3) and (4) apply to an application under subregulation (5)

25.  After allowing the parties to make submissions, it is generally in the interests of both parties that a hearing officer gives an indication of whether or not further evidence sought to be served and filed at a hearing is likely to be allowed or not.  If the party who is attempting to serve and file the further evidence appreciates that the application to serve and file further evidence is, or is likely to be, refused, it can request that the hearing become one on the issue of the evidence in order that it might have a written decision which may be appealed, or request the hearing officer to adjourn proceedings and receive instructions from its client.  Similarly, the other party might wish to appeal a decision to allow the service and filing of further evidence (and similarly request written reasons) or to request an adjournment of proceedings in which to advise its client and, if necessary, serve and file its own further evidence.  The alternative would be to force both parties to effectively conduct the hearing on two separate bases, framing their arguments on the case both with, and without, the evidence.  This can be done, but is best done with the agreement of the parties.  Without that agreement if, at a hearing, the hearing officer reserves the decision about allowing the service and filing of further evidence and hears the substantive matter, a party to the proceedings may be deprived of an opportunity to either appeal the decision to allow or refuse the service and filing of the evidence (or to respond to evidence) and hence not be afforded procedural fairness.

26.  It follows that the delay of an application to serve and file further evidence until a hearing is underway is a high risk process which, if successful, may result in adjournment of proceedings and additional costs for the party putting in the further evidence.

27.  The allowance of the service and filing of further evidence is governed by the considerations stated by Cross J in Thornhill & Co Ltd's Application [1963] RPC 13, namely:

(1) that it must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage;

(2) the evidence must be such that, if given, it would probably have an important influence on the result of the case;

(3) the evidence must be such as is presumably to be believed, that is, it must be apparently credible, though not necessarily incontrovertible.

28.  These considerations are qualified by the observations in Studio Srl v Buying Systems (Aust) Pty Ltd (1992) AIPC 90-858. The Registrar's delegate, Mr Homann said, at p 38,210:

"The effect of refusing an application for special leave may therefore be to force an unsuccessful party to the opposition before the Registrar into an appeal to the court where the evidence, if admissible, would not be excluded. Obviously it would be preferable for the matter to be finally decided by the Registrar if the admission of further evidence would allow this to be done.

29.  The observation by Mr Homann, above, is in some respects a gloss on the second of the tests posited in Thornhill – the evidence must be such as that, if allowed, it would probably have an important influence on the result of the case and this factor is, in view of possible appeals from the Registrar’s decision, of some primacy.

30.  When asked by Ms Hustwick whether service and filing of this proposed evidence would be allowed and if it established SCEE as a person aggrieved, I responded in the negative and gave these reasons:

·     The principles surrounding whether the service and filing of further evidence is appropriate are that it should be relevant, it should be material that was not readily discoverable during the normal evidentiary cycle; and, it should have some relevant bearing on the outcome of proceedings. 

·     There is no mention of SCEE in the material that was stated to be evidence of its aggrievement, so it is difficult to understand how the material could establish SCEE as a person aggrieved.  Further, if SCEE had been mentioned in this material, it was difficult to apprehend how this material could establish them as being a person aggrieved of a registration in Class 9 because the expression ‘central station’ had no obvious status as a trade mark and appeared to have no bearing in this Internet material to any category of goods within Class 9. 

·     I stated that if the evidence was relevant and had some bearing on the outcome of proceedings, it would be fair to adjourn proceedings in order that CSH’s legal representatives could advise their client and take instructions.

31.  I will now add to my observations made at the hearing and remark that Sony Computer Entertainment Limited may be[1] (as Mr Worthley states in his declaration) the applicant for registration of Australian trade mark application 950552 – however, it is not a party to these proceedings.  These proceedings were filed by Sony Computer Entertainment Europe Limited.

[1] For reasons which will become apparent, I have not researched this.

32.  Further, the relevant date at which SCEE must establish its aggrievement not on 29 April 2004, the day of Mr Worthley’s Internet search, it is on 18 September 2003 – the day on which the application to remove the trade mark was filed by SCEE.  In Unilever Australia Limited v Karounos [2001] FCA 1132, Hill J stated:

The principles upon which the Court has determined whether a person is a "person aggrieved" within the meaning of the Act were stated by McLelland J in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193-196 ("Ritz Hotel") and have been approved by Full Courts of this Court in Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 at 113 and Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331 at 363. Relevantly, they may be expressed as follows:

(a) The expression "person aggrieved" has no special or technical meaning and is to be liberally construed.

(b) The expression includes any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the mark remaining on the Register.

(c) The question whether an applicant for relief is a "person aggrieved" cannot be divorced from the nature and extent of the relief claimed. A person must be aggrieved in relation to the category of goods and services in respect of which they are seeking to have the trade mark cancelled.

(d) The material time at which a person must be aggrieved is the date of application. That is, the date of the commencement of the proceedings in which the claim for that relief is made.

33.  Moreover, if it had been expressly mentioned in the proposed further evidence that SCEE (and not possibly some other person) had a pending application for registration and that this challenged CSH registration stands as a bar to its progress to registration, this would not in itself assist SCEE in establishing itself as a person aggrieved.  In Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, Drummond J observed at paragraph 4:

Though the public and not just the applicant for removal of a mark has an interest in non-used marks not being allowed to remain on the Register, the right to apply for removal created by s 92 is not given to "any person", only to "a person aggrieved".

The Registrar's delegate cited The Ritz Hotel Ltd v Charles of the Ritz Ltd (1998) 12 IPR 417 at 454 and said:

"The applicant here has applied for registration of the word trade mark RAGING BULL on application number 721838 and the statement of goods, `Beverages in this class including beers' in Class 32. The present trade mark has been cited as a bar to the registration of application number 721838 and the opponent here has also accused the applicant that it is in breach of WBE's registration. Accordingly, I find that the applicant is such a person and qualifies to apply for removal of the present trade mark from the Register."

I do not think that the Registrar was correct in holding that if an applicant for trade mark registration is barred by an existing registration that, without more, means he is a "person aggrieved" with respect to the latter mark for the purposes of s 92. In The Ritz Hotel Ltd, it was said at 454 that a "person aggrieved" in the present context:

"would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the register remaining unrectified ..."

To be capable of registration as a trade mark, a sign must be "used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person" from the goods or services of others (s 17). Only a person so using or intending to use a sign is entitled to apply for its registration as a trade mark (s 27). It is a ground of opposition to registration of a trade mark that the applicant does not intend to use the mark "in relation to the goods and/or services" specified in the application. An object of the 1995 Act is to create, by registration of trade marks, a species of tradeable property - see ss 21 and 22 - but only where such marks are connected with actual or contemplated trade in goods or services. It would be contrary to this object of the 1995 Act to accord standing to a person to attack a registered mark on the ground that that person had made his own application for registration of a conflicting mark where there was no proof that the person either had a trade in goods marked with the mark the subject of his registration application or had a bona fide intention to trade in such goods. Such a person cannot be said to be "appreciably disadvantaged in a legal or practical sense" by a mark he wishes to attack remaining on the Register, though he might wish to traffick in marks as distinct from to trade in marked goods. [Stress added and see also paragraph (c) of Unilever, above].

34.  The major problem for SCEE, (as I suggested at the hearing with the example ‘computers’ in attempting to ascertain in which category of goods the aggrievement was said to lie), is that there is nothing in the proposed further evidence which suggests that SCEE intends to trade in the challenged goods – in fact, if notice were to be taken of a pending application made by a company related to SCEE, (and the proposed evidence of Internet usage) they pertain to a service which may be something to do with the PLAYSTATION game but with no apparent direct connection to Class 9 goods as the service seems to involve some form of information exchange.  There is no evidence of actual trade in the goods or express intention mentioned in the proposed evidence to trade in any category of goods in Class 9 by SCEE or any other person possibly connected to SCEE – the proposed evidence actually suggests the contrary.

35.  Further, and this is the other reason that I used the example of ‘computers’ in attempting to ascertain the class of goods in which SCEE is said to be aggrieved, is that (in my observations of the world) desk-top computers and laptop computers are now sold and used as DJ equipment – equipment that thus falls within the description of goods in respect of which SCEE concedes that SCH has used its CENTRAL STATION trade mark.

36.  For the above reasons, SCEE has not established itself as a person aggrieved by the registration.

37.  I will finally observe that Ms Hustwick appears to believe the fact that her client, or a related company, has had CSH’s trade mark cited as a bar to the registration of its CENTRAL STATION trade mark is a fact which should be known to both myself and to CSH and that there is some perversity on my part in not referring to or discovering it.  Regulation 21.19 provides:

21.19Registrar may use information available

(1)If:

(a)information that is available to the Registrar is relevant to proceedings before the Registrar; and

(b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and

(c)the Registrar proposes to take the information into account in making a decision in the proceedings;

before making the decision the Registrar must:

(d)provide the information to the party; and

(e)give the party a reasonable opportunity to make representations about the information.

(2)For the purposes of paragraph (1) (e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

38.  However, in terms of Drummond J’s comments in Woolly Bull, above, this information about an application possibly filed by SCEE, or an associated company, is not relevant to these proceedings and I therefore should not take this information into account.

39.  Ms Hustwick did not, at the hearing, request a written decision or adjournment about my stated intention to refuse to allow the service and filing of the further evidence.

Other

40.  Since the hearing of the substantive matter, Ms Hustwick has made further application under the provisions of regulation 5.15(1)(b) to serve and file further evidence and citing her perceptions of bias in my approach to the refusal to allow further evidence at the hearing and stating that her client would appeal my decision if it were contrary to her client’s interests.  Mr Spence, trade mark attorney for CSH, has written in response to this application stating that some of the material is clearly prejudicial in nature, not admissible as proceedings had concluded and criticizing the proposed further evidence in some detail and implying bias on my part if I were to allow its service and filing.

41.  After close consideration of the proposed further evidence and the regulations, I have decided not to allow the service and filing of this proposed further evidence.  It is apparent that the allowance of this evidence would be grossly unfair to CSH (who has protested against it in the strongest possible terms).

42.  I add, although this is not relevant to my decision whether to allow the service and filing of this further evidence, that the proposed further evidence retains the basal flaws contained in that further evidence which SCEE wished me to allow during the hearing: it does not show that SCEE had, at the time of filing the removal application, an intention to trade in any of the goods nominated in Class 9 of the International (Nice) Classification of Goods and Services it does not show SCEE is materially disadvantaged in a practical or legal sense by the registration.  The material does not show that SCEE is a person aggrieved.

Decision

43.  The application under section 92 is unsuccessful as SCEE is not a person aggrieved by registration 538940.

44.  CSH, having been successful in these proceedings, is entitled to its costs at the official scale which I order against SCEE.

Ian Thompson
Hearings Officer
Trade Marks Hearings
29 August 2005