Chrysler Corporation v Mark Grundy

[2000] ATMO 104

TRADE MARKS ACT 1995

DECISION OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Chrysler Corporation to the registration of trade marks numbers 732836(12) – RAM - and 732837(12) – the device of a RAM’S HEAD IN A SHIELD - filed in the name of Mark Grundy.

On 21 April 1997 Mark Grundy applied to register two trade marks in respect of goods described as vehicles and vehicle accessories. The first application, 732836, is for registration of a simple word trade mark ram. The second application, 732837, is for registration of a device trade mark showing (as below) a ram’s head in a shield.  The opponent refers to this mark as the ram’s head logo, and I shall do the same.

These two trade marks, which together I shall refer to as the ram trade marks, were examined and, in the Australian Official Journal of Trade Marks of 19 June 1997, the Registrar advertised the fact that both marks were accepted for registration. 

Chrysler Corporation, now DaimlerChrysler Corporation, has opposed both marks.  For the sake of simplicity I shall refer to the opponent by the name that appears throughout the opposition documents viz Chrysler Corporation.  In due course, Chrysler Corporation  filed 14 declarations and one affidavit as evidence to support its opposition.  Mr Grundy’s evidence in answer comprised 20 declarations. As evidence in reply, Chrysler Corporation filed three more declarations.  Subsequently both Mr Grundy and  Chrysler Corporation were given leave to serve further evidence.  It is useful here, I think, to list the declarants and the dates of their declarations.

Chrysler Corporation’s declarations and affidavit in Evidence in Support

ANDERSON, Warren Preston                   18 December 1998  
BERRY, Donna L  16 November 1998  
BRIGHT, Benjamin William  14 December 1998  
BROWN, David William Drayton            26 November 1998  
CARPENTER, Robert Harley                   24 November 1998  
CARRISON, Mark  30 November 1998  
CLAUSSEN, David  27 November 1998  
DOUGLAS, Craig Raymond  17 November 1998   (affidavit)
DOUGLAS, Craig Raymond  18 December 1998  
HODGKINSON, Hugh Rudyard               18 December 1998  
LIANG, John Alexander  18 December 1998  
MARTIN, Bradley James  18 December 1998  
MULFARI, Maurice  16 December 1998  
NEEDHAM, Norman Selden  19 November 1998  
STANSFIELD, Robert Gordon                 25 November 1998  

Mr Grundy’s declarations in Evidence in Answer

ADDISON, Peter  19 July 1999
COOK, David   4 June 1999
CRABTREE, Geoffrey Leslie Alan          26 November 1998
DARLEY, Charles Peter   4 December 1998
FELL, Martin   9 September 1999
GIBSON, Fredrick Charles  12 January 1999
GRUNDY, Mark   9 June 1999
GRUNDY, Mark  15 July 1999
HARDY, Margaret  15 July 1999
HINKLEY, Ron   4 June 1999
JONES, Kim   9 June 1999
MILLER, Bryan  18 June 1999
RAMSAY, Malcolm  13 July 1999
REED, Allan   8 June 1999
REED, Brian  12 June 1999
SCHENKEN, Timothy Theodore  21 May 1999
SKINNER, Paul  31 May 1999
SMITH, Bruce  2 June 1999
VAN LEEUWEN, John   10 June 1999
VAN SOEST, Roland  26 December 1998

Chrysler Corporation’s declarations in Evidence in Reply

BERRY, Donna L  10 February 2000  
DOUGLAS, Craig Raymond  11 February 2000  
SIMPSON, Justin Ryan  11 February 2000  

Mr Grundy’s declaration in Further Evidence

GRUNDY, Mark  19 May 2000

Chrysler Corporation’s declaration in Further Evidence

McINNES, Kenneth John   14 July 2000  

The hearing on 19 July 2000 was attended on behalf of the opponent, Chrysler Corporation,  by Ms Carmen Champion of Counsel assisted by Mr Kenneth McInnes of Hodgkinson Old McInnes, Patent and Trade Mark Attorneys of Sydney.  The applicant, Mr Mark Grundy, did not attend, but he did furnish copious written submissions which ran to some 400 pages.  In order to deal with these it was necessary to adjourn the hearing to allow the Chrysler Corporation team reading time.  It also proved appropriate to allow further time, subsequent to the hearing, for the Chrysler Corporation team to compile a written response. The response was sent to Mr Grundy, and he in turn was allowed time to provide me with his comments, which he did within the time allowed.

I now proceed to consider and decide the opposition on the basis of Chrysler Corporation’s evidence and submissions, and of Mr Grundy’s evidence and submissions.

Notice of opposition

The grounds of the opposition are as per the provisions of Part 5 of the Trade Marks Act 1995 and are broadly drawn. At the outset of the hearing, however, Ms Champion made it clear that the opposition relies only on the grounds provided for by section 58 – ownership; by section 60 – prior reputation and deception and confusion; and by section 62 – that 732836 and 7332837 are defective applications.

Background and Evidence

The Chrysler Corporation history and evidence

Ms Berry is a staff attorney in the Trademark Department of the General Counsel of Chrysler Corporation.  She exhibits[1] in her 16 November 1998 declaration an extract from a publication entitled Encyclopedia of Consumer Brands, Volume 3[2], which gives an account of the history of Chrysler Corporation and its acquisition of the motor company originally founded by the Dodge  brothers (Horace and John).  The history begins early in the 20^th century when Dodge Brothers Inc first established the dodge trade mark, and continues to the 1990s. Chrysler Corporation acquired Dodge Brothers in 1928. Chrysler was then the third largest automobile company in the United States and most of its manufacturing, from that point up to the end of World War II, depended on dodge vehicles.

[1] Exhibit C

[2] St James Press, Detroit, 1994

By 1935, when dodge vehicles were holding fourth place in the United States market, Chrysler phased in a new trade mark - the device of a charging ram.  This trade mark was designed as a hood ornament and the depiction of the Chrysler Dodge vehicles in evidence shows its use continued into the 1940s. In the 1960s modified forms appear, and vehicles pictured in the Dodge Pickup Color History[3] show further variations in the 1970s and 1980s.  In the 1990s a new form appears which to all intents and purposes looks to be the same as the ram’s head logo, the subject of Mr Grundy’s application number 732837. I reproduce a copy of Chrysler Corporiation’s trade mark  below on the left, with application number 732837 on the right.

[3] Hodgkinson declaration, 18 December 1998, Annexure A - Dunn & Mueller, Motorbooks Internat., Osceola WI, 1996

The word trade mark ram was taken up by Chrysler Corporation, in the United States, in July 1979[4].  It has mainly been used in respect of pick-up trucks, sometimes referred to in the evidence, as sports utilities. The Encyclopedia of Consumer Brands[5] describes this development. It says[6]  that during the 1970s Dodge joined the growing sport utility segment .. with the launch of the “Ram Tough” Ramcharger.   Trucks … would become a mainstay of the brand, comprising more than half of unit sales by the mid-1980s.  Then, in 1994, the ram pick ups were completely and startlingly revamped[7]  and accounted for a market of US$22 billion.  This new model ram garnered “Motor Trend’s” Truck of the Year award and was praised for its combination of car-like ride, interior room and comfort, state-of-the-art safety features, performance, durability and reliability, not to mention over 50 important product features that ranked as industry first, Dodge exclusives, or best-in-class.

[4] Berry , 16 November 1998, paragraph 3

[5] ibid Exhibit C

[6] ibid, p107 column 1

[7] ibid column 2

Chrysler Corporation  now has one of the largest advertising budgets in the world[8].  From January to November 1997 it spent US$1.1 billion on world-wide advertising.   World-wide unit sales of ram vehicles range from approximately 106,000 in 1993 to a peak of 431,000 in 1996.  There is no evidence of advertising or sales being specifically directed to the Australian market, and it is apparent that prior to 21 April 1997 (the date of the current applications), Chrysler Corporation did not directly ship its ram vehicles to this country.   Nevertheless, it seems that the force of global promotions has had an effect and that by April 1997, advertising and reputation had penetrated the Australian scene.  

[8] Berry, 16 November 1998, paragraph 6

I note, in particular,  the following material in the opponent’s evidence.

• The publication entitled Dodge Pickup Color History, Bunn D. and Mueller, M.,  Motorbooks International Publishers & Wholesalers, Osceola, Wisconsin, USA, 1996 gives space to various ram  pickups and, according to the Hodgkinson declaration,[9] this book has been sold in commercial quantities in Australia since September 1996.

  [9] paragraphs 4 and 5

• Articles and advertisements about ram models appeared in the Australian press from 1993 to 1997.  The Simpson declaration exhibits over a dozen examples. The first six are:

  Sydney Morning Herald 23 April 1993: Why Kelpie Kargo has gone to the dogs

  .. a new version [of a revolutionary pick-up truck] was designed based on the Dodge Ram with front-wheel drive,  a transverse engine and special rear section and suspension.

  Sydney Morning Herald 8 July 1994: US car makers on the road to riches.

  This is a report on vehicle models currently in greatest demand. Under the sub-heading Dodge Ram 1500 Laramie SLT pickup - it says -

  The aggressive-looking Ram, which could pass as a nephew of the big semi-trailer cabs built by Kenworth and Peterbilt, is far more popular than the dated pickup it replaced…

  Financial Review  17 October 1995: Burying demographic research

  The hottest pick-up truck in the US is the Dodge Ram. Unlike Chevy and Ford who advertise in print and television, Dodge spends a lot more of its marketing money on event marketing.  They sponsor a lot of country music concerts because anyone who comes along either owns or would like to own a pick-up.

  Sydney Morning Herald, Jan 12 1996:Pick-ups speed to the top of the US sales charts

  Further down the best-seller charts, non-cars accounted for positions 11, 12 and 13.  The huge Dodge Ram pick-up, which looks like a prime mover and comes with an optional eight-litre V10 engine, just missed the top 10 cut with more than a quarter of a million sold.

  Financial Review 18 April 1996: $1bn profit has Chrysler in top gear

  Chrysler was the US market leader in mini-vans with its Voyager model – voted  the Best Car of 1995 in January – while its Dodge Ram pick-up truck was now the fourth best selling vehicle in the market.

  The Age 23 May 1996: 25 models in Mazda Bravo range

  An evolutionary restyling has given the Bravo a nose somewhat reminiscent of the huge Dodge Ram pickup sold in the United States.

• Many advertisements and promotional articles on the ram pick-ups featuring the ram trade marks have been published in a  magazine entitled Four Wheeler.  A number of editions dating from early 1996 are appended to the Douglas Affidavit of 17 November 1998.  Four Wheeler is published in Santa Monica, California, and according to the Douglas evidence,[10] this magazine is imported and sold on the Australian market, and distributed by Gordon & Gotch, in substantial quantities.  It is available in newsagents and bookshops throughout Australia.  Annexed to the Douglas declaration of 11 February 2000, are sales figures for Four Wheeler. In each of the 12 months preceding April 1997, the average number of  these magazines sold in Australia is 544.  Typical entries include:-  

  [10] Douglas affidavit, 17 November 1998,  paragraph 20

February 1996 - p43 (Douglas Affidavit Attachment C) :

1996 PICKUP TRUCKS AT A GLANCE  - Dodge is not offering a new product this year, but looks to sell more Rams than ever before, possibly making it onto the Top Ten chart for the U.S. sales.    

April 1996 - p86 (Douglas Affidavit Attachment E)

The only truck with both Magnum Power and J.D. Power  -  Now it seems that Dodge Ram isn’t just part of the most powerful overall line of pickups on the planet.  According to a J.D. Power and Associates survey of owners, it’s also the most appealing pickup in America. 

[This is an advertisement.  It features, as do many others, the ram’s head logo  - both in the picture of the vehicle, and in the body of the accompanying text.] 

October 1996 - back page (Douglas Affidavit Attachment H)

Give the voice of your inner child a bullhorn  - Ram Sport is one emotionally expressive ride.   But its practical benefits come through loud and clear as well.  First and foremost, Ram Sport is a Dodge Ram.  The truck that changed the rules.  So of course, along with those neat looks, cool fog lights and beefy tires, it has a standard driver airbag and a roomiest-in-class interior … And because it’s a Dodge,  Ram Sport draws from our Magnum engine …. Here’s another reason you’ll be glad Ram Sport is a Dodge:  Ram has better resale value that Ford, Chevy or GMC.  [This advertisement also features the ram’s head logo]. 

December 1966 - p74 (Douglas Affidavit Attachment J) - an article

Delightful Dodge -  A custom-sprung 1995 Dodge Ram  - The new Dodge Ram 4x4s have proven extremely enthusiast-friendly. This brightly-painted 1995 Dodge ¾-ton Club Cab owned by Perry Bagley … is a prime example of what Dodge fans have been up to lately.  Perry customized it … and now estimates its value at around $48,000.

[The two page spread shows various views of this 1995 Dodge Ram, and goes into some detail about Mr Bagley’s ‘customization’   In the same edition there is a four page fold out advertisement promoting a vehicle described as the Dodge Dakota.  It too features the ram’s head logo.]  

Further, there is evidence that shows that, in spite of the fact that Chrysler Corporation was not specifically directing promotional material to Australia, there has been a steady importation of small numbers of ram vehicles into this country.  This evidence comes from a number of declarants. 

• Maurice Mulfari is a company director of Crows Nest, New South Wales.  Mr Mulfari declares that he had a conversation with Mr Hugh Hodgkinson of H.R.Hodgkinson & Co [now Hodgkinson Old McInnes] and said  to him :

  I am aware that Dodge is a division of the Chrysler Corporation.  I own three dodge ram vehicles which I purchased second hand in the United States in 1995 and imported into Australia for the purpose of resale.  Each vehicle bears the trade mark ram and the Ram’s head device.

• Warren Preston Anderson, of Greensborough, Melbourne deposes to the fact that he has been a member of the Chrysler Restorers Club of Australia for ten years and was President up till 1998.  He currently owns a 1935 KC Dodge Utility which features a Ram mascot.  He says that he is aware that Dodge began producing vehicles known as “the Ram Pickup” in early 1980 and this vehicle is still being manufactured with a number of these vehicles in use in Australia. 

• Benjamin William Bright is a retired farmer of East Ballina, NSW. In 1996 he contacted the Australian representative of USAction, a company in California which specializes in purchasing and shipping cars from the USA to overseas locations, including Australia.  Through this agency Mr Bright arranged for the purchase of a ram pickup vehicle (identified in a Certificate of Origin issued by Chrysler Corporation as a 1997 (year) dodge (make) ram (model).  This vehicle was imported into Australia on a Federal Office of Road Safety grant of approval – Vehicle Import Approval number 23273788/1.

• Craig Raymond Douglas is a consultant investigation agent employed by Nationwide Investigation Services Pty Limited in Bayswater, Victoria. In his 18 December 1998 declaration Mr Douglas states that he located the premises of Californian Cars & Sport Trucks Pty Limited and met there with Mr Alan (sic) Reed. At these premises Mr Douglas deposes, he saw two Dodge ram  Pickup vehicles and one Dodge dakota Pickup truck.  The ram vehicle was in the process of being converted to a right hand drive.  Mr Douglas was told by Mr Reed:

  We import from the USA, we will bring in for you and in your name, a Dodge or GMC Pickup truck.  We do full mirror conversions and all our work complies with Australian Design Rules.  Vehicles are imported in your name and we have a three part payment program covering the importation of the vehicle

  In response to questions about his firm’s competence to carry out conversions, Mr Reed is reported to have said:

  We have made application to the Federal Office of Safety for approval for the conversion of Dodge Rams.  We expect this application to be processed within the next two months.  All vehicles converted by us are inspected by our engineer who approves the work that we do and once we gain Federal approval, we will be able to fix compliance plates to the vehicles that we have converted.

  Mr Reed provided Mr Douglas with a 1998 Dodge Ram brochure[11] and, says Mr Douglas,  he made comments to the effect;

  [11] Douglas, 18 December 1998, Annexure B

  Only a couple of years ago, Dodge changed their mascot to the new Rams Head  … Dodge have used the ram mascot for about 40 years on their vehicles.  Dodge have sold both cars and trucks in Australia for a long time and as far as I can remember, they have always used the ram logo on these vehicles. 

• Kenneth John McInnes is a registered patent attorney with Hodgkinson Old McInnes.  Annexed to his declaration (filed as further evidence) is a copy of Australian Customs Service Trace Extracts for Dodge branded vehicles imported into Australia in the period between January 1994 and December 1997.  Mr McInnes was advised by the Customs Service that there was a reasonable probability that the Trace Extracts may not identify the total number of relevant Dodge vehicles.  Thus, says Mr McInnes, the results stand as the minimum reflection of the actual number of relevant imported vehicles.  The Trace Extracts show that between 7 August 1995 and 8 April 1997, some 19 Dodge vehicles, bearing the trade mark RAM, were brought into Australia. 

• Further to Mr McInnes’ declaration is evidence that the Commonwealth Department of Transport and Regional Services recorded 533 imports of Dodge vehicles between 1990 and 2000 included in which were a number of Dodge Rams. In the relevant years over which these records extend, the Department says it tested two Dodge ram  vehicles in 1995, and 14 in 1996.

Mr Grundy’s history and evidence

I now turn to Mr Grundy’s evidence.  There are 20 declarations in answer to the opposition, and one declaration filed as further evidence.  There is, however,  no account of Mr Grundy’s association with the ram trade marks prior to application, and no other account of his business history.

Sixteen of the declarations in Mr Grundy’s evidence in answer are short declarations from people associated with the motor industry who do little more than identify themselves and record a conversation with Mr Grundy.   These declarants were asked the question:

In the automotive field, what do you associate the word ram with?

Not one of these declarants associated the word ram  with Chrysler Corporation.

Brian Reed is managing director of Durango Sport[s] Vehicles Pty Ltd in Riverstone NSW.  He is involved in the importation of motor vehicles, including US-made vehicles, and in the conversion of these vehicles to Australian specifications.  He has been involved in the industry for 10 years.  To his knowledge, no vehicles bearing the name ram have ever been sold in Australia by or on behalf of Chrysler Corporation.  To his knowledge the opponent has no permission to import vehicles. Further, according to records which Mr Reed holds – including a Vehicles Standards Bulletin of 21 April 1997 –  a publication issued by the Federal  Office of Road Safety –  no permit has been granted to any person to affix Australian Compliance Plates to Dodge ram  vehicles. At paragraph 22 he states that to his knowledge Chrysler vehicles in Australia have never featured a mascot or emblem in the shape of a ram or ram’s head.

Mr Allan Reed is the managing director of Californian Cars and Sports Trucks Pty Ltd , a company that is also located in Riverstone NSW.  Like Mr Brian Reed, Mr Allan Reed has been involved in importing and converting foreign cars. His company, during the last 4 years, has imported and converted some 50 US made pick up trucks. Mr Reed deposes to the fact that he reads the Sydney Morning Herald, The Daily Telegraph Mirror, and a number of motor magazines.  He does not recall seeing any articles in any Australian publications relating to the Dodge ram prior to 24 July 1997, although subsequent to that date,  he found six or seven articles in local publications.  As with Mr Brian Reed, Mr Allan Reed’s records indicate that no Australian compliance plates have been issued in respect of any ram vehicles and he is not aware of any ram motor vehicles being sold in Australia on behalf of Chrysler Corporation.  Mr Reed reports that dealers in the USA have advised him that they could not sell vehicles to him without incurring financial penalties from Chrysler Corporation. Mr Maurice Mulfari (whose declaration, noted above, formed part of Chrysler Corporation’s evidence) came to Mr Reed for advice on registering the three second hand ram pick up trucks that he intended to purchase. Mr Reed deposes that he confirmed with the Federal Office of Road Safety that it was not possible to register these vehicles, and he passed this information on to Mr Mulfari.  At paragraphs 24 and 25 Mr Reed denies comments attributed to him by Mr Douglas in the Douglas declaration of 18 December 1998.   Mr Reed says that he never said that Dodge has used the ram mascot for 40 years, and he annexes a number of photographs to his declaration showing (though not very clearly) a variety of other trade marks used in respect of Dodge vehicles.  Mr Reed does state, however:

58  With regard to the use of a Rams Head Motif by Dodge, I confirm that Dodge used a ram shaped hood ornament on some vehicles in the USA in the 1930s but that over  the years these ornaments became progressively more stylised and were eventually phased out in the USA in the late 1940’s or very early 1950’s.  Since then, Dodge vehicles in the USA have featured a variety of different emblems.

60  To my knowledge, Chrysler  vehicles in both the USA and Australia have never featured any ram shaped hood ornament or mascot. 

Mark Grundy, the applicant,  has two declarations in the evidence in answer - one dated 9 June 1999 and the other 15 July 1999.  A third, dated 19 May 2000, comprises his further evidence.

I must say, at the outset, that on the whole, I do not find this evidence useful.   The 9 June 1999 declaration is nothing more than a sequence of paragraphs - 166 in all - listing well over 160 annexures.  On the whole, this appears to be an attempt to prove a negative, namely, that Chrysler Corporation has not used its ram trade mark in Australia.  It does this, in the main, not by directly countering the opponent’s evidence, but by building up a succession of instances where a search for the ram trade marks has either failed to locate that trade mark, or revealed only a very low incidence. A random selection illustrates the nature of this material.

annex 8A letter from the ACT Government listing the number of dodge brand vehicles registered for use on public roads, and stating that there does not seem to be any ram trucks registered as such.   

annex 11BA letter from GIO Australia advising that they were not underwriting any ram trucks 

annex 21A letter from Wheels magazine stating that since 1953 it only published one article about dodge rams - that was in June 1997

annex 40Gregory’s Which Car For You  –  this is a list of cars and there is no mention of ram

annex 65.       SKF Wheel Bearing Kits - Australian Edition –  a range of Chrysler vehicles for which parts are produced is listed, and there is no ram

annex 75NJOY Training & Consulting brochure - a Universal Tyre Fitment Guide - and there is no mention of ram

annex 81APrices and current makes and Models from Wheels - and there is no reference to ram

Mr Grundy’s 15 July 1999 declaration gives a report of his endeavours to search various Internet sites.  He had some success with dodge, but no success with ram.  He also gives an account of his attempt to arrange the purchase of a Dodge pickup truck from three USA companies:  Westoaks Chrysler Dodge Inc, of Thousand Oaks, California; Huntington Beach Dodge Inc, of Huntington Beach, California; and Downey Dodge, of Downey, California.  Each contact advised him that they could not ship a vehicle to Australia, the concern being that to do so would be in breach of the law. His declaration concludes with a report of a conversation with Mr Joe Richelieu and Ms Karen Torres both of whom work for USAction - an Australian run business, located in Los Angeles, and engaged in purchasing vehicles and shipping them to Australia[12].  Mr Richelieu told Mr Grundy that Some dealers were unable to sell new vehicles for export –  Chrysler/Dodge [is] typical of companies who had .. no export policy.

[12] this appears to be the same company that Mr Bright dealt with

Annexed to Mr Grundy’s 19 May 2000 declaration are copies of three applications, made by Mr  Mulfari, to the Administrator of Motor Vehicle Standards, for the importation of three dodge ram vehicles. Mr Grundy identifies various entries in these documents, including the fact that in each of the application forms, in answer to the question — 

Is the vehicle going to be converted to meet the requirements of the Australian Design Rules and a compliance plate fitted?

Mr Mulfari says:

Vehicle to be used as a market evaluation vehicle.  Please see attached.

The attachments are letters addressed to The Administrator stating:

We submit for your consideration our application for Import Approval in relation to a Market Evaluation Vehicle.

The vehicle is to be used for the purposes of demonstration to prospective purchasers in Qld, NSW and Vict.

I now turn to the grounds of opposition.

The section 58 ground of opposition

Section 58 of the Trade Marks Act 1995 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.

In her submissions at hearing, Ms Champion first refers me to case law dealing with proprietorship.  In terms of the Trade Marks Act 1995, this law applies to the section 58 question of ownership. She reminded me that the first user of a trade mark in Australia becomes the owner of the mark at common law, and may become the owner of the registered trade mark. This is established as per Shell Co. of Australia Ltd. v. Rohm and Haas Co[13]  with Dixon J’s frequently quoted passage:

[13] (1949) 78 CLR 601 at 627

.. it is clear enough from the course of legislation and of decision that an application to register a trade mark so far unused must, equally with a trade mark the title to which depends on prior user, be founded on proprietorship. The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration.

The ‘use’ on which ownership can be established is then set down by the High Court in Moorgate Tobacco Co. Limited v. Philip Morris Limited and Another[14].  The  Court says:   

[14] (1984) 156 CLR 414 at 432

The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of "proprietor" of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person … The requisite use of the mark need not be sufficient to establish a local reputation and there is authority to support the proposition that evidence of but slight use in Australia will suffice to protect a person who is the owner and user overseas of a mark which another is seeking to appropriate by registration under the Trade Marks Act. In such a case, the court "seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia" (see The Seven Up Co. v. O.T. Ltd. (1947) 75 CLR 203, at p 211; Aston v. Harlee Manufacturing Co. (1960) 103 CLR 391, at p 400).

Ms Champion points to the Mulfari declaration. This indicates that Mr Mulfari purchased three vehicles second hand in the United States, in 1995, and imported them into Australia for resale. This I think, is clearly confirmed by the Grundy declaration of 19 May 2000. The McInnes declaration of 14 July 2000 provides material from the Australian Customs Service (the result of searches carried out under the provisions of the Freedom of Information Act) and this shows that between August 1995 and 21 April 1997, a number of vehicles identified by the names dodge and ram were imported into this country. The list shows the terms:

1996 DODGE RAM 4X4
1997 DODGE RAM VEHICLE
DODGE “RAM 5 LIT” TRUCKS
DODGE RAM
DODGE RAM CAB MOTOR VEHICLES
DODGE RAM P/UP
DODGE RAM PICKUP
DODGE RAM PICK-UP
DODGE RAM PICKUP TRUCK
DODGE RAM TRUCK
MODEL RAM 1996 DODGE PICK UP

Further in the McInnes declaration is a letter from the Commonwealth Department of Transport and Regional Services, dated 24 May 2000.  It indicates that two dodge ram vehicles were tested by that agency in 1995, 14 were tested in 1996 and 15 in 1997.  This, says Ms Champion, establishes use by Chrysler Corporation that precedes Mr Grundy’s application dates of April 1997.  Then there is the Douglas affidavit and the evidence of circulation, in Australia, of the Four Wheeler magazines featuring advertisements of and articles about Chrysler Corporation’s ram vehicles in February, April, October and December 1996.  These advertisements, as I have already noted, included not only the word mark ram, but the ram’s head logo.  

A superior claim for ownership of a trade mark depends not only on first use, but on first use of the same mark for the same goods – or at least for the same kind of thing[15].

Mr Grundy argues against the section 58 ground on the basis that any use demonstrated by Chrysler Corporation has been use of the trade mark dodge ram and that this is a different trade mark to the application trade mark ram. He points to the Berry declaration of 16 November 1998 and to her paragraph 3 - the trademark dodge ram  was first used in July 1979.  There are undoubtedly many other instances where these two words are used in tandem.  However, I do not agree that this shows that Chrysler Corporation has no use of ram solus. It is commonplace for motor vehicle manufacturers to use a house mark to indicate the make, and a different trade mark for each of its models. This is demonstrated in the Bright declaration where, on the Certificate of Origin, Chrysler Corporation enters the word ‘dodge’ as the ‘make’ and ‘ram’ as the ‘model’. Other examples of this kind in the motor trade, are numerous - holden camira, ford escort,  nissan bluebird, honda accord. It is apparent from this evidence that Chrysler regularly operate in this way – I note for example references to dodge dakota, dodge ramcharger, dodge omni and  dodge rampage.  I think that it is very clear that the manner in which the words dodge and ram are applied to vehicles as per p121 of the Dodge Pickup  Color History[16],  and as per the examples in attachment “E” to the  Douglas affidavit of 17 November 1998, shows use of the word ram  as a trade mark. The ram’s head logo, as depicted below, is consistently  used by Chrysler Corporation

in its advertisements of vehicles in the Four Wheeler magazines and is shown applied to these vehicles in the Dodge Pickup Color History (pp102 - 104).

I find that Chrysler Corporation has shown that it has used both the word mark ram and the ram’s head logo, marks. 

There has been no issue about the goods, and I think that it is self evident the Chrysler Corporation has use the ram and ram’s head logo in respect of the same goods as those claimed in applications 732836 and 732837, that is, vehicles and vehicle accessories.

I now turn to the question of whether the opponent has succeeded in showing that its use of the ram trade marks predated 21 April 1997.   The issue was recently addressed by the Federal Court in Malibu Boats West, Inc v Catanese [17]. Justice Finkelstein, at paragraph 27, comments as follows:

[15]

[16] Hodgkinson declaration annex “A”

[17] [2000] FCA 1141 (18 August 2000)

27 This takes me first to the nature of use that is required for a person to be regarded as the proprietor of a mark at common law. The use must be in relation to goods for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods with respect to which the mark is used and that person: see the definition of "trade mark" in s 6(1) of the 1955 Act; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 432; Re Registered Trade Mark "Yanx"[18] at 204-205. While the mark must be used for the purpose of indicating a connexion in the course of trade, this does not mean that any actual trade or dealing in the goods is required. It is sufficient if there is an offer to trade in the goods, or an existing intention to offer or supply goods bearing the trade mark. In Moorgate Tobacco Deane J (with whom Gibbs CJ, Mason, Wilson and Dawson JJ agreed), after referring to earlier authorities, said (at 433-434):

"The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark (Re Registered Trade Mark `Yanx'; Ex parte Amalgamated Tobacco Corporation Ltd (1951) 82 CLR at 204-205) or that the mark has been used in an advertisement of the goods in the course of trade: Shell Co of Australia v Esso Standard Oil (Australia) Ltd (1963) 109 CLR at 422. In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade. In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade. There was no local use of the mark as a trade mark at all; there were preliminary discussions and negotiations about whether the mark would be so used."

It follows that the goods themselves need not be in Australia. In Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 at 416 McGarvie J said:

"It is not necessary that the goods be in Australia at the time the mark is used. It is enough if the mark is used in Australia at a time when its proprietor intends to supply goods of that mark in Australia, in the sense of being ready and willing to respond to orders for the goods."

To like effect is Re Registered Trade Mark "Yanx" where Williams J said (at 204-205):

"On principle and as a matter of commonsense, however, it would seem that a mark is used as a trade mark in Australia if it is used here to designate the goods of a particular trader which are offered for sale in Australia under that mark whether the goods are actually in Australia or not. The goods are put upon the Australian market whether they are in Australia awaiting delivery upon sale or they may have to be imported for delivery after sale. They are in either case actually a vendible article in the Australian market ..."

…

[18] Re Registered Trade Mark “Yanx:”; Ex parte Amalgamated Tobacco Corporation Ltd (1951) 82 CLR 199

28 While a local trader can deliberately adopt a foreign trade mark not previously used in this country, such action described by Williams J in Re Registered Trade Mark "Yanx" (at 202) as "sharp business practice", the court is inclined to regard this practice with suspicion and to "frown on these borrowings from abroad" (Aston v Harlee Manufacturing Co at 400 per Fullagar J). This is especially so where one of the local trader's motives in adopting the foreign mark is to prevent the foreign owner's use in this country. The corollary is that courts will regard a small amount of use, or slight use, of a mark in Australia by an overseas proprietor as sufficient to establish proprietorship of the trade mark in Australia: Aston v Harlee Manufacturing Co at 400; Moorgate Tobacco at 432; Riv-Oland Marble Co v Settef SpA at 353-354. As Williams J said in Seven-Up Co at 211:

"The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia."

I also note the following passage in Re Registered Trade Mark "Yanx"[19] at 204

[19] Re Registered Trade Mark “Yanx:”; Ex parte Amalgamated Tobacco Corporation Ltd (1951) 82 CLR 199

On principle and as a matter of common sense, however, it would seem that a mark is used as a trade mark in Australia if it is used here to designate the goods of a particular trader which are offered for sale in Australia under that mark whether the goods themselves are actually in Australia or not.

In light of these directives, and considering the evidence as a whole, I think the inescapable conclusion is that by way of articles and advertisements in the Four Wheeler magazines and of articles in Australian newspapers including the Sydney Morning Herald, Financial Review or the Age, Chrysler Corporation has used its ram trade marks in Australia and, in effect, it has put its vehicles into the Australian market. The fact that Chrysler Corporation did not import ram automobiles into the country is not, according to Justice William’s findings fatal. I have taken note of the Reed evidence - and the allegations of both Messrs Brian and Allan Reed to the effect that importation of Chrysler Corporation vehicles has not been allowed and has not occurred.  But the material fact is, that importations and sales have taken place.  Mr Mulfari purchased three vehicles in 1995, and imported them himself.  Mr Bright commenced negotiations to purchase a dodge ram  in 1996 and import approval was given in January 1997. Added to this is the McInnes evidence of 19 imports of various ram vehicles between 1995 and April 1997; and of 16 vehicles in 1995 and 1996 being tested by the Commonwealth Department of Transport and Services.   The sales here are small but in light of Justice Williams and Justice Finkelstein’s directives, they are clearly sufficient for the purposes of this opposition. Moreover, those sales are supplemented by a significant level of publicity and all told put the question of ownership out of contention. In accordance with the directives of the case law in respect of the appropriation of foreign trade marks, this use establishes Chrysler Corporation’s ownership claim of the trade marks sought under application numbers 732836 and 72837. 

I find that the opposition succeeds in terms of the section 58 ground.

The section 60 ground

Section 60 of the Act reads:

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

In terms of paragraph 60(a) Chrysler Corporation are required to show that it has an established Australian reputation in a trade mark which is substantially identical or deceptively similar to the application trade mark.   I have found that the ram trade mark and the ram’s head logo used by Chrysler Corporation is substantially identical to the application trade marks.  In terms of reputation, it is clear that a ram’s head logo has long been associated with dodge vehicles manufactured by Chrysler Corporation.  Use of the ram mascot is recorded in the Dodge Pickup Color History.  Mr Anderson, past  president of the Chrysler Restoration Club, deposes to the fact that he owns a 1935 KC Dodge Utility which features a Ram mascot. His declaration exhibits a photograph of himself holding one such mascot.  He says:

Over the years Dodge has revised and modernised the style of the Ram mascot and Ram’s Head Logo, but all the time retaining the Ram motif as its badge and symbol. 

I note the Mr Allan Reed’s statement that he has never known Chrysler Corporiation  vehicles in Australia to have featured a ram shaped hood ornament, but against the weight of the evidence to the contrary (and my own quite clear recollections), I am inclined to put this down to his inability to remember the 1940s and 1950s. 

Added to the historical record are contemporary articles in the Four Wheeler magazines which, inter alia,  indicate that in 1996 ram vehicles were making the top ten chart in the USA, and articles in the Australian press, such as the item in the Financial Review of 18 April 1996, which says:

Chrysler was the US market leader in mini-vans with its Voyager model - voted the Best Car of 1995 in January - while its Dodge Ram pick-up was now the fourth best selling vehicle in the market. 

I am aware that Mr Grundy’s evidence demonstrates that 16 people associated with the motor industry denied knowledge of the ram trade marks.  However, I do not know if 16 is the sum of the people canvassed, nor do I know the extent of the interest of those 16 declarants in the overseas sports utility market.  Furthermore, they are largely countered by the Needham, Stansfield, Claussen, Carpenter; Brown, Carrison and Mulfari declarations.

On the evidence I find that Chrysler Corporation has acquired a reputation in Australia in its ram and ram’s head logo trade marks. Given the fact that Mr Grundy’s application trade marks are virtually identical to the trade marks, I find that use of the application trade mark would be likely to deceive or cause confusion.

I find, therefore that the section 60 ground of oppositions is made out. 

Section 62 (b)

Having found that the opposition succeeds on two grounds, it is not necessary for me to decide this ground. 

Decision

I have found that the opposition succeeds on the basis of its section 58 and section 60 grounds. I therefore refuse to register trade mark applications numbers 732836 and 732837.

Costs

The opponent has requested costs and I find no reason why, in the circumstances, costs should not follow the cause.  I therefore direct that the applicant, Mr Grundy, is to pay the costs of the opponent, Chrysler Corporation, in accordance with the official scale as set out in Schedule 8 of the Trade Mark Regulations.  If required, the costs will be taxed, allowed and certified by a trade marks officer appointed by the Registrar for that purpose. 

Helen R. Hardie

Deputy Registrar

26 September 2000

(1897) 22 VLR 636 at 640,

confirmed by the Federal Court, Carnival Cruise Lines Inc v Sitmar Cruises Lte (1995) 31 IPR 375