Christine Mary Adams v Katherin Bates

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application number 1024023 Doorways To Reading & Device in class 16 to register a trade mark in the name of Katherine Bates and Opposition by Christine Mary Adams.

Delegate: Debrett Lyons

Representation: Decision on the Written Record

Decision: 2007 ATMO 32
s. 52 opposition – s. 58 : applicant owner of the trade mark
Costs – opponent to pay the applicant’s costs ( if any)

Background

On 8 October 2004, Katherine Bates (“the applicant”) made application to register a trade mark full details of which follow:
Application No.         :          1024023
Priority Date              :          8 October 2004
Class  :          16
Goods  :          Instructional and teaching manuals;   printed matter; printed   material
Trade Mark                :
(“the application”)
The trade mark was accepted for registration and advertised as accepted in the Official Trade Mark Journal dated 10 February 2005. On 10 May 2005, Christine Mary Adams (“the opponent”) filed a Notice of Opposition under section 52 of the Trade Marks Act 199 (“the Act”) listing 8 grounds of opposition.
Both parties filed evidence and both parties made written submissions. Neither party asked to be heard in person.
The matter has now been delegated to me, Debrett Lyons, a delegate of the Registrar of Trade Marks for a decision on the written record with reasons.
The opponent has stated in its written submissions that it withdraws all grounds of opposition listed in its Notice of Opposition with the exception of the ground based on section 58 of the Act, which it presses.
Legal Provisions
Section 58 of the Act states that :
58Applicant 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 issues raised by the parties entail other legal provisions and these are included here for convenience.
Section 10 of the Copyright Act 1969 (Cth) (“Copyright Act”) states that :
artistic work means:
(a)a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not;
(b)a building or a model of a building, whether the building or model is of artistic quality or not; or
(c)a work of artistic craftsmanship whether or not mentioned in paragraph (a) or (b);
but does not include a circuit layout within the meaning of the Circuit Layouts Act 1989.
Section 31(1)(a) of the Copyright Act states that :
31 Nature of copyright in original works
(1) For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a work, is the exclusive right:
(a)in the case of a literary, dramatic or musical work, to do all or any of the following acts:
(i)to reproduce the work in a material form;
(ii)to publish the work;
(iii)to perform the work in public;
(iv)to communicate the work to the public;
(vi)to make an adaptation of the work;
(vii)to do, in relation to a work that is an adaptation of the first‑mentioned work, any of the acts specified in relation to the first‑mentioned work in subparagraphs (i) to (iv), inclusive;

Section 32 of the Copyright Act states that :
32 Original works in which copyright subsists
(1)Subject to this Act, copyright subsists in an original literary, dramatic, musical or artistic work that is unpublished and of which the author:
(a)was a qualified person at the time when the work was made; or
(b)if the making of the work extended over a period—was a qualified person for a substantial part of that period.
Section 35 of the Copyright Act states that :
35 Ownership of copyright in original works
…
(2)Subject to this section, the author of a literary, dramatic, musical or artistic work is the owner of any copyright subsisting in the work by virtue of this Part.
(3)The operation of any of the next three succeeding subsections in relation to copyright in a particular work may be excluded or modified by agreement.
…
(6)Where a literary, dramatic or artistic work to which neither of the last two preceding subsections applies, or a musical work, is made by the author in pursuance of the terms of his or her employment by another person under a contract of service or apprenticeship, that other person is the owner of any copyright subsisting in the work by virtue of this Part.

Section 36(1) of the Copyright Act states that :
36 Infringement by doing acts comprised in the copyright
(1)Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright.

The Evidence

The evidence in support of the opposition consists of the Statutory Declaration of the opponent dated 29 September 2005 together with Exhibits CMA-1 to CMA-5.
The evidence in answer consists of the Statutory Declaration of the applicant dated 20 December 2006 together with Exhibits KAB-1 to KAB-22.
The opponent took advantage of its right to file and serve evidence in reply which consisted of the following Statutory Declarations :

Declarant Exhibits Date

Opponent CMA-1 27 March 2006

Alanna Todd AT-1 3 April 2006

Kylie Fitzpatrick KF-1 4 April 2006

Teresa Eades TE-1 3 April 2006

Preliminary Observations

The applicant is a qualified Primary and Middle School teacher with many years of experience and a history of involvement with special needs teaching and the teaching of English as a second language.
The applicant offers teaching services under the business name, “The Reading Hub”.
The opponent operates a business under the name “The Cronulla Learning Centre” (“the Cronulla Centre”) at addresses in the Sydney suburbs of Cronulla, Rose Bay, Bangor and Penshurst (“the opponent’s business”). The opponent’s business offers tutoring in traditional learning skills, particularly reading.
On 1 July 2004, the parties signed an agreement (“the contract”) which defined the applicant as a “Contractor” to the opponent and which included the following terms :
§The applicant agreed to be engaged as a contractor and tutor with the opponent’s business at the Cronulla Centre ( clause 2) ;
§The opponent agreed “to provide students to facilitate the applicant being engaged for a minimum of 6 hours together with 3 hours on research and development for and on behalf of the opponent” ( clause 3) ;
§“In relation to contracting services resulting in provision of The Learning Centre of courses designed by the Contractor in the provision of research and development services to The Learning Centre in that event in addition to the consideration referred to above the Contractor will be paid a bonus of 25% of net receipts by The Learning Centre of income less operating expenses associated with the provision of such course” ( Clause 7 ) .
The evidence as a whole makes it clear that clause 3 of the contract refers to 6 hours per week and 3 hours per week, respectively.
The applicant taught students of the opponent’s business between May 2004 and December 2004.
The applicant created and designed a modular teaching manual for reading skills (“the teaching manual”) and an associated teaching programme (“the teaching programme”) during that period.
The dispute between the parties centres on ownership of the trade mark as it came to be applied to the teaching manual and the teaching programme.
The applicant claims to be the originator and owner of the trade mark and the owner of all intellectual property rights in the teaching manual and the teaching programme.
The opponent claims (i) to be the author of the trade mark, and (ii) to be the owner of the intellectual property rights by virtue of the contract, and (iii) to have an implied right to use the trade mark were the copyright in the trade mark owned by the applicant.
Submissions and Reasoning
The submissions of both parties muddy the proper factual enquiries and in some instances misinterpret the law and the jurisdiction of the Registrar. I find it helpful to separate out a number of questions.
(a) Who coined the name or words?
A critical distinction should be drawn between the name or words, “Doorways to Reading”, and the logo-style trade mark of the application. Although the point is not pressed in the opponent’s written submissions, its evidence makes it clear that it lays claim to having coined the name “Doorways to Reading”. Paragraphs 6 and 7 of the opponent’s declaration of 29 September 2005 read :

6. Relevant to this opposition, I asked Kate in July 2004 to work on developing an improved reading program to use in my business. This gained some inspiration from two pre-existing programs with which I had prior experience, The Spalding Method and Simplicikit. I discussed my ideas for the improvement with Kate when asking her to work on the idea. As she progressed with it we had numerous discussions that led to the product that we felt represented useful improvements over those pre-existing ones.
7. It was my idea to name the resulting program Doorways to Reading which I suggested and decided to adopt no later than about 1 September 2004.

There is no physical evidence in support of the claim made in paragraph 7 above. The applicant gives an entirely different account of the facts and claims that she coined the name. At paragraph 7 of the applicant’s declaration, she states that the opponent “may have decided to adopt the name no later than about 1 September 2004 but she did not create or suggest the Trade Mark name to me or name the title of ?my body of work attached to the Trade Mark name”. The applicant produces evidence of her claim to have been the one to coin the name in the form of diary entries dated 3 June 2004 showing the name amongst a list of names, some similar, some not, under contemplation for use with the teaching manual and the teaching programme ( Exhibit KAB-8 ).
Balancing the evidence, I find that it was the applicant who coined the name “Doorways to Reading”.
(b) Who coined the trade mark?
The opponent makes no claim to have coined the trade mark in its logostyle form, as opposed to the words themselves. By contrast, the applicant gives a detailed account and provides evidence of her choice of the door device and of its incorporation with the name.
The Newsletter referred to in the opponent’s Exhibit CMA-3 shows use of the trade mark but does not show use prior to the filing date of the application – 4 October 2004. It does however provide indirect evidence of the origins of the trade mark.
Under the heading, “Whats Hot!!!”, there is reference to a new “Doorways” training programme. The Newsletter states:

several staff worked on fine-tuning this new training method at the Cronulla Centre last year. Children are identified from their assessment whether or not there is a need for them to go into the “doorways” programme. I have attached a short outline of this programme for your perusal … … All staff are returning in 2005, with the exception of Kate who has taken up fulltime employment and we wish her well in the future. Two new teachers will be joining us at the centre replacing Kate.

The separate outline of the programme referred to in the Newsletter is a single A4 page document that includes the words DOORWAYS TO READING in the same font as those words appear in the trade mark of the application, together with the image of a doorway identical to the device component of the trade mark of the application. My observation is that the trade mark differs slightly in both the placement of the words and the dimension of the words but not so significantly as to constitute a substantial difference. Otherwise, this A4 outline carries text describing the programme. I observe that this text is laid out in the identical font to the text appearing under the applicant’s exhibit KAB-9. Exhibit KAB-9 is referred to in paragraph 7 of the applicant’s declaration where she describes the steady evolution of the training manual and of suitable names for it since as early as 12 June 2004.
In paragraph 7 of the applicant’s declaration, she states that “the fancy print used in my Trade Mark was created by me and used on my own computer”. In Exhibit KAB-9, under the words DOORWAYS TO READING as they appear in that font (being identical to the font used for the trade mark of the application), there is a description of the programme in the following terms: “A multi-sensory program for improving reading fluency and comprehension through progressive doorways with accompanying strategies to give students keys in understanding the function and structure of reading at an individual level”.
The A4 page outline of the “Doorways” programme referred to in the opponent’s evidence describes, in the same font, “Doorways to Reading is a balanced multi-sensory reading package that moves students through colour coded doorways. Those doorways represent systematic developmental levels…” .
I also observe that the applicant referred to the “fancy print” of the words when she filed the application. The original class 16 statement of goods before amendment by the Office (with the consent of the applicant), read : “Instructional and teaching manuals; label of the manuals and the printed matter; the 'fancy-print' logo provided on the cover of the printed material”.
Again, balancing the evidence, I find that the applicant created the trade mark of the application in its logo style form and in all likelihood was the author of the A4 outline of the teaching programme appended to the Newsletter under Exhibit CMA-3.
(c) Who is the owner of the name or words in terms of section 58 of the Act?
Those findings however are not dispositive of the question of which party is the owner of the trade mark for the purposes of section 58 of the Act. There is a particular concept of ownership in section 58 which was best enunciated in the case of Shell Co (Aust) Ltd v Rohm and Haas Co (1948) 78 CLR 601 where at 628 it was said that “authorship…involves the origination or first adoption of the word or design as and for a trade mark”.
Section 17 of the Act defines a trade mark. It states:
What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

It can be understood then that authorship of a trade mark is less concerned with true and first invention of a mark or sign, than it is with the first use or first intention to use that mark or sign in the course of trade to distinguish the goods or services of one person from those of others.
There is no evidence that the applicant used either the words Doorways to Reading or the trade mark of the application in a trade mark sense in her own right prior to the filing date of the application, 4 October 2004. The question of ownership resolves to whether the opponent had used the name or the trade mark, as a trade mark and in the course of trade, prior to 4 October 2004.
The opponent claims to have been the first person to have used the trade mark in this sense (submissions, para 11) and has adduced the following evidence in support of that claim.
First, at paragraph 9 of the opponent’s declaration of 29 September 2005, she states:

Because I thought the Doorways to Reading program was an improvement upon programs with which I had prior experience I decided to take steps to use the name in the conduct of my business with a view to promoting it further afield. Kate was by then using the name Doorways to Reading in her tutoring as part of the conduct of my business. It was used as a “service” name by me personally in such conversations with the pupils and their parent(s) involved on numerous occasions during the latter half of 2004, including prior to October 2004. The amount of use the business had made of the name by January 2005 had already been to such extent that in my Newsletter to parents I was colloquially referring to it as “Doorways”. Now shown to me and appended is Exhibit CMA-3, which is a copy of that Newsletter. I draw attention to page 3 of that Exhibit referring to what we had done with the program at the Cronulla Centre in 2004. An attachment to the Newsletter in the Exhibit also on the first line uses the words “Doorways to Reading” as a trade mark.

Exhibit CMA-3 appears to be a reprinted newsletter. It is not produced on notepaper for the opponent’s business and it bears no date. It can be connected with the opponent only because it ends with an unsigned salutation, “Regards, Christine Adams – Director”. It refers to Term 1, welcomes the reader to 2005 and refers to the Christmas – New Year beak. It states that classes resume Monday 31^st January. I accept the opponent’s evidence that the document dates from January 2005 but it does nothing to establish ownership of either the name or the trade mark at 8 October 2004. To be of assistance to me, I would need to draw inferences about a state of affairs three months earlier.
Secondly, the declarations of Alanna Todd, Kylie Fitzpatrick and Teresa Eades require consideration. The declarants are parents of children enrolled with the opponent’s business from at least as early as September 2004. The three declarations carry essentially the same statements and were all sworn in April 2006. The Exhibits to the declarations take the same pattern, comprising copies of receipts issued by the opponent’s business for tuition, and copies of work sheets and evaluation sheets for the children. Each declarant states that to the best of her knowledge their child took part in a “Doorways to Reading” programme in September 2004.
Taking those three declarations together, I make the following observations, some of which are also made by the applicant in her written submissions. First, nowhere in this evidence is there any proof of use of the name “Doorways to Reading”, aside from the declarants’ statements of belief. Secondly, the invoices are not specific to any particular course of tuition or teaching – they carry, for example, annotations like “Bal Term3”. Thirdly, the worksheets make no reference to the nature or name of the teaching course, however, I note that the familiar font which appears in Exhibit KAB-9 of the applicant’s evidence and referred to previously is used for these worksheets. The evaluation sheets carry entries under the heading of “Evaluation / Follow Up Teaching / Notes” such as “vowel digraphs – Door 3”. I note, finally, the applicant’s submission that these declarations are made 18 months after the events to which they attest.
The applicant states in her evidence that she disclosed, for the first time, the name “Doorways to Reading” to the opponent on 30 August 2004 when she revealed the outline of the training manual and the training programme to the opponent at a meeting with the opponent at the Cronulla Centre.
The opponent registered the words “DOORWAYS TO READING” as a New South Wales Business Name on 2 September 2004 believing, in her words, that this gave her some form of statutory ownership of the name. She adduces this evidence of the business name registration as indicative of the intention at that time to adopt the name for use in the opponent’s business.
I find that the evidence narrowly supports the conclusion that the opponent had adopted the name “as and for a trade mark” within the meaning given to those words by Justice Dixon in the Shell case referred to above. The evidence supports a finding that prior to 8 October 2004, the opponent had formed the intention to use the words as a trade mark and the balance of probability is that those words were in fact being used at some level in the opponent’s business prior to 8 October 2004. I re-iterate that this finding is not that it was the opponent who invented or created the name, but that for the purposes of section 58, the opponent is the author of the words in a trade mark sense.
(d) Who is the owner of the trade mark within the meaning of section 58?

The opponent has not provided any evidence that it created the logo style trade mark of the application and there is nothing in the evidence previously analysed to show that it had adopted that trade mark for use in relation to its business prior to 8 October 2004. The earliest evidence of use of the trade mark is from January 2005 ( Exhibit CMA-3 ) and an inference would have to be drawn from that evidence alone that the trade mark had been used in trade in the opponent’s business three months earlier. I am not prepared to draw that inference.
Accordingly, it cannot be said that the opponent is the author of the trade mark in terms of section 58 of the Act. In the absence of authorship of the trade mark by another person prior to the application, the law is that authorship of the trade mark lies with the applicant.
(e) Is the name the same as the trade mark?
Given the findings that authorship of the name rests with the opponent but authorship of the trade mark rests with the applicant, a question arises as to whether the two can be said to be the same, or as the case law has taught, “substantially identical” (Re Hicks Trade Mark (1897) 22 VLR 636 ; Carnival Cruise Lines Inc. –v- Sitmar Cruises Ltd (1994) 31 IPR 375 ).
Clearly, the name and the trade mark are not the same.
The question of whether two marks are to be considered as substantially identical was considered by Justice Windeyer in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1963) 109 CLR 407 at 414, where His Honour said.
In considering whether marks are substantially identical they should, I think, 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.
In this case, we have on the one hand the plain words “Doorways to Reading”, compared with a composite mark where those words appear in a fanciful script and partially superimposed upon a large device element of a stylised doorway entrance. There is in my opinion no possible comparison of the two which could justify a conclusion that they were substantially identical to one another and I decline to make that finding.
With that finding we reach a point where it has been determined that the applicant is both the author and owner of the trade mark unless it can be said that that on 8 October 2004 the trade mark properly belonged to the opponent as a matter of law. This might be the case if ownership of the trade mark was regulated as a matter of contract between the parties or if by operation of law the trade mark was the property of the opponent.
The contract between the parties is silent on the question of ownership of the trade mark or of intellectual property more generally. The only question which remains is whether the nature of the relationship between the parties can be understood in a way which makes it clear that the trade mark was created for the opponent.
The opponent’s position in this regard is set out most obviously in three places. In paragraph 4 of its written submissions, it is said that the opponent:
… engaged the Applicant in May 2004 as an independent contractor, under a written agreement, primarily to teach or tutor pupils in the Opponent’s ( 11 year old ) business ( 6 hours per week tutoring). … The Applicant, under the same contract, was engaged to perform ‘research and development on behalf of’ The Learning Centre, involving 3 hours per week during normal NSW public school term time. As envisaged, the Contractor may provide The Learning Centre ‘courses designed by the Contractor’ as part of that research and development.
Secondly, the opponent states in paragraph 8 of her declaration of 29 September 2005: “Because I gave Kate a specific brief to develop this program, for which my business paid her…”, and, thirdly, in the opponent’s written submissions, paragraph 16(b) states : “The Opponent is entitled to use the Manual commissioned by her for her business and created as a result of engaging the Applicant under a contract of services and to reproduce it as required for that purpose”.
In the first place, this is not the forum to determine the rightful ownership of the teaching manual or the teaching programme. Ownership, by virtue of copyright law or otherwise, of those teaching materials is a question for a court of competent jurisdiction. The only issue to be determined by the Registrar is whether the applicant is the owner of the trade mark or not (all other grounds of opposition having been abandoned). The only reason to consider the question of ownership of the teaching materials is because the evidence has already shown that the applicant coined the trade mark in a process integral with development of the teaching materials and so a question emerges as to whether the intellectual property rights, collectively, belonged to the opponent.
There is no evidence before me that the opponent commissioned the applicant to produce a learning programme in the nature of the “Doorways to Reading” manual, nor is there any evidence before me that the opponent specifically briefed the applicant in those terms. The reference in the contract to research and development is non-specific and I note that in contrast to the opponent’s claim, the contract was not reduced to writing until 3 months after the working arrangements between the parties began.
In my decision, there is no evidence that the contract contemplated that ownership of either the rights in the teaching manual, the teaching programme or the trade mark would vest in the opponent. I am left, then, to consider only the specific operation of copyright law as it has been argued by both parties.
Section 35(6) of the Copyright Act states:
(6) Where a literary, dramatic or artistic work to which neither of the last two preceding subsections applies, or a musical work, is made by the author in pursuance of the terms of his or her employment by another person under a contract of service or apprenticeship, that other person is the owner of any copyright subsisting in the work by virtue of this Part.

The law is clear that the trade mark is an “artistic” work within the meaning of section 10 of the Copyright Act. Absent any evidence to the contrary, I am satisfied too that the applicant is the first owner of the copyright in the trade mark under operation of section 35(2) of the Copyright Act. The question is whether by operation of section 35(6), the opponent replaced the applicant as the owner of the copyright in the trade mark.
Section 35(6) draws a distinction, in broad terms, between employees and independent contractors. By its language, it equates the former with the expression “contract of service”. In this respect I note that the opponent has characterised, both by the contract itself, and in its written submissions, the applicant as an independent contractor and not as an employee of the opponent. Assessed simply on that basis, the applicant would remain the owner of the copyright in the trade mark. Nevertheless, even if I ignore the opponent’s own characterisation and apply the tests often used to draw the distinction between the two roles, I come to the finding that the applicant was indeed an independent contractor. The questions commonly asked include:
§ Did the opponent supervise or manage the applicant’s work?
§ Did the applicant follow the orders, instructions or directives of the opponent in the course of performing the work?
§ Was the applicant paid wages or a salary for the services it provided?
§ Did the opponent pay income tax on behalf of the applicant?
§ Did the opponent pay or give you leave entitlements (such as annual leave, sick leave, long service leave etc.)?
§ Did the opponent pay benefits to the applicant’s superannuation fund?
§ Did the applicant use the opponent’s resources when supplying services to the opponent (e.g. office space, word processing and other services)?
§ Did the opponent supply transport services or reimburse the applicant for transport expenses related to performing the services?
§ Did the applicant pay a fee for or towards the overhead costs of the opponent’s business?
§ Did the applicant delegate work to others?
§ Did the applicant invoice the opponent for the performance of services?
§ Was the applicant engaged to work for the opponent on a long-term basis or indefinite period of time?
§ Was the applicant obliged to work certain hours?
§ Did the applicant usually seek permission to leave the Cronulla Centre or report to the opponent if it intended to arrive late or temporarily leave the Centre?
Based on the available evidence, I find that there is no obvious answer to many of these questions. However, what evidence there is points towards the applicant as an independent contractor and not an employee of the opponent. In consequence of that finding, it follows that section 35(6) of the Copyright Act does not apply.
For the sake of completeness I would add that even if I were shown to be wrong in reaching that conclusion and the opponent were held to be the owner of the copyright in the trade mark, then as we have seen before and as the opponent has argued, the opponent may be the owner of the copyright but not the owner of the trade mark in the same material. In that eventuality I would be led to the conclusion that the opponent’s actual ground for opposition is not section 58, as has been argued, but section 42(b) which was abandoned.

Decision

For all the foregoing reasons, I decide that the opponent has failed to make out the ground of opposition under section 58 of the Act and for that reason the overall opposition fails. Accordingly, I direct that the application proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that the disposition of the applications be in accordance with the Court’s direction or order.
Appeal
An appeal from this decision lies with the Federal Court. Please note the provisions of the Federal Court Rules Order 58, Rule 4(2) and (2A) which read, respectively:
(2)an appeal must be instituted [at the Federal Court] within 21 days after the date of the decision appealed from or within such further time as the Court, on application, fixes, unless a law of the Commonwealth provides otherwise.
(2A) the notice of appeal must be served on the Commissioner (Registrar) and all other parties to the appeal within 5 days of the day on which the notice of appeal is filed.
Costs
The applicant having been successful, I order that the opponent pay its costs (if any) in the matter according to the published scale.
Debrett Lyons
Hearing Officer
Trade Marks Hearings

8 June 2007

[2007] ATMO 32

7 June 2007

Key Legal Topics

Areas of Law

Civil Procedure

Negligence & Tort

Legal Concepts

Appeal

Costs

Damages

Duty of Care

Negligence

Standing

Delegate:	Debrett Lyons
Representation:	Decision on the Written Record
Decision:	2007 ATMO 32 s. 52 opposition – s. 58 : applicant owner of the trade mark Costs – opponent to pay the applicant’s costs ( if any)

*Declarant*	*Exhibits*	*Date*
Opponent	CMA-1	27 March 2006
Alanna Todd	AT-1	3 April 2006
Kylie Fitzpatrick	KF-1	4 April 2006
Teresa Eades	TE-1	3 April 2006