Charlie Tassone and Patricia Tassone v Classic Manufacturing (Aust) Pty Ltd

[1999] ATMO 27

TRADE MARKS ACT 1995

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

Re:Opposition by CLASSIC MANUFACTURING (AUST.) PTY. LTD. to  registration of trade mark application number 748635 in the name of

CHARLIE TASSONE and PATRICIA TASSONE

Background

On 14 November 1997, application number 748635 was filed to register a trade mark in the name of Charlie Tassone and Patricia Tassone (the applicants) for the goods "clothing i.e. T-shirts, caps, shorts, track-suits, socks, singlets" in class 25.  The mark the applicants sought to register is shown here:

 

After its acceptance, the mark was advertised in the Australian Official Journal of Trade Marks of 19 March 1998.  Registration of the mark was opposed by Classic Manufacturing (Aust) Pty Ltd (the opponent) by filing a notice of opposition on 20 May 1998. 

Evidence
The evidence in support comprises a statutory declaration, with an exhibit, by Anthony John Magnus, a director of the opponent company.  The declarant states that in 1995, the opponent purchased knitting machinery from Westmont Active Sportswear Pty Ltd ("Westmont") and, under an agreement, became contract knitters for this company, which had used a yarn known as "Stay Cool".  The opponent had held discussions with Westmont, commenced earlier, with a view to purchasing all the Westmont's assets, including intellectual property.  The negotiations to purchase certain assets, including the common law rights to the "Stay Cool" mark had continued after Westmont had gone into liquidation in December 1996.  The "Stay Cool" yarn and fabric, Mr Magnus says, had been developed by Westmont in 1992 and a copy of a marketing release relating to the mark accompanies his declaration. 

The applicants did not rely on any evidence in answer, but requested a hearing on the matter, which was held in Sydney before me, as the Registrar's delegate.  Mr Robert Wulff of Griffith Hack, patent and trade mark attorneys of Sydney, represented the applicants.  No appearance was made by the opponent, or its legal representative. 

Issues 
The grounds in the notice of opposition are stated as follows:

The term "Stay Cool" or "Staycool" is an invented term that has been in use for several years and is governed by common law usage by Westmont Active Sportswear Pty Ltd.  Westmont Active Sportswear Pty Ltd is currently in liquidation and the liquidator is able to confirm that my company has been negotiating for the purchase of this mark.  The attached marketing release by Westmont Active Sportswear Pty Ltd is dated on or about 1993.  N.S.W. University can confirm tests conducted in 1992.

Submissions
With reference to the notice of opposition, Mr Wulff said that the opponent appeared to be relying only on one ground, that the applicant was not the owner of the trade mark of this application.  He could see no other ground stated or implied.  Mr Wulff then proceeded to discuss the statements contained in Mr Magnus's declaration, particularly noting that the applicants had difficulty understanding the reference to common law rights by Westmont, given the absence of evidence concerning use of the trade mark "Stay Cool".  In considering the sources, manufacturers, uses, consumers and trade channels of yarn and fabric, which products, according to the declarant, had been developed by Westmont, and clothing, the goods of this application, Mr Wulff concluded that they were different goods.  Commenting on the marketing release, exhibited to Mr Magnus's declaration, he directed my attention to the inconsistency between the date of its release, as stated in the notice of opposition, and the declarant's remark, in his declaration, that it was undated.  Furthermore, it was not clear where, when and how the release originated, and what purpose it was meant serve.  Mr Wulff said that, even if a fabric under the mark "Stay Cool" had been provided to the testing authorities, many tests on a fabric were carried out confidentially without members of the public being aware of the mark.  The marketing release was purely an internal document, which might have been made available to the public, but there was nothing to suggest that it had been disseminated anywhere. 

Concerning the opponent's negotiations with Westmont, Mr Wulff submitted that it was not known whether the opponent had actually purchased all the assets and goodwill of Westmont and whether the common law mark was an asset, because evidence as to its use was lacking.  It appeared that, if there were common law rights in the mark, then those rights were still vested in Westmont, a company in liquidation.  While there could be some residual common law rights left in a mark which had achieved an extensive reputation, after trading under it had ceased, that was not the position in the present case.  Here, the opponent had not shown any use of the mark "Stay Cool", and it did not even appear to own rights in the mark.   

Analysis
I agree with Mr Wulff's submission that the thrust of the opposition in these proceedings is based on the allegation that the applicants of the subject mark are not the owners of the mark.  The relevant section in the Act concerning ownership of a mark is section 58, which reads:

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Section 27 provides that

27.(1)  A person may apply for the registration of a trade mark in respect of goods and/or services if:
      (a) the person claims to be the owner of the trade mark; and
      (b) one of the following applies:
              (i)  the person is using or intends to use the trade mark in relation
   to the goods and/or services; …  .

On the question of ownership of a mark, McGarvie J said in Settef S.p.A. v RivOland Marble Co (Vic) Pty Ltd 10 IPR 402, at 413, as follows:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the trade mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) 59 ALJR 77 at 83. A person who becomes proprietor of a trade mark in this way is entitled at common law to restrain a person who later commences to use the trade mark.
…

In considering who, within s.40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 at 625 and 627.

It is to be noted that "s.40(1)", mentioned in the decision, refers to the Trade Marks Act 1955, and is, in general terms, equivalent to paragraph 27(1)(a) of the current Act.

From the statement of McGarvie J, it is clear that, whoever has used the mark first in Australia, in respect of the relevant goods and prior to the date of the subject application, or first use of the mark by the applicant, could claim to be the owner of the mark at common law.  A small amount of use of the mark would suffice, as was pronounced in Seven Up Co v O.T. Ltd (1947) 75 CLR 203. The issue of ownership, however, applies only to those marks which are identical or substantially the same marks - Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 and Karu Pty Ltd v Jose (1994) AIPC 91-101 and is limited to what Holroyd J in Re: Hicks' Trade Mark (1897) 22 VLR 636 termed as use of the mark on "the same kind of thing".

Considering the test outlined by Windeyer J in Shell Co (Aust.) Ltd v Esso Standard Oil (Aust.) Ltd (1961) 109 CLR 407, at 414, as to what are substantially identical marks, where the marks are looked at 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,

I do not believe that the marks under consideration can be regarded as substantially the same.  Even though the essential element in the marks, the words "Stay Cool", is almost identical in both marks, the exception being the combination of those words in one of the marks, the overall appearance of each mark leaves quite a different impression.  This is created by the stylized, broad lettering in the word "Staycool" and the conspicuous zig-zag pattern surrounding the word, which features form the applicant's mark, as opposed to the plain type-face letters constituting the allegedly conflicting mark.  On the question of the goods, although there is a nexus between articles of clothing, in respect of which the applicant is desiring registration of the mark, and yarns and fabric of interest to the opponent, those goods are not the same within the meaning contemplated by Holroyd J. 

A copy of the marketing release, produced by Westmont, which has been presented as evidence of prior use of the mark, shows the mark as "STAY COOL".  Inter alia, the release states:

"Westmont Active Sportswear is leading the industry with our new discovery of "Stay Cool".

This revolutionary fabric has been developed especially for our football players experiencing extreme weather conditions.

The Melbourne College of Textiles and N.S.W., University Department of Textile Technology conducted both the strength and burst tests on "Stay Cool": results proved to be stronger than conventional football fabric."

According to the notice of opposition, the marketing release is said to date from or about 1993, the tests on the fabric having been conducted in 1992.  However, no date appears on the marketing release, as was pointed out by Mr Wulff.  This release suggests the existence of a new fabric with certain desirable qualities suitable for football players and intended to be marketed under the mark "Stay Cool", but such information is insufficient for drawing a conclusion as to the time when Westmont commenced using the mark, or whether Westmont had used it before the date of the present application. 

To summarise, if the mark "Stay Cool" has been used by Westmont before the present application was filed, then such use is not supported by evidence.  Even if there had been prior use of this mark by Westmont and the opponent had proved purchase of Westmont's assets, which included the mark, then, in terms of section 58 of the Act, the opponent could not succeed in upsetting the applicants' claim to ownership of a mark which, as I have already indicated, is not substantially the same mark as "Stay Cool" and covers a category of goods which differs from yarn and fabric. 

Conclusion
I have found the opponent has failed in respect of the ground of opposition upon which it has relied.  Subject to any appeal from this decision, I therefore direct that the mark of application number 748635 proceed to registration.

No costs were sought in these proceedings.

Vija Zars
Hearing Officer
29 March 1999