Condor Cycles Limited v Reid Cycles Pty Ltd

[2018] ATMO 74

TRADE MARKS ACT 1995

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

Re:Opposition by Condor Cycles Limited to registration of trade mark application 1731877 – CONDOR - in the name of Reid Cycles Pty Ltd

Delegate:	Bianca Irgang
Representation:	Opponent: Written submissions by Phillip Ormonde Fitzpatrick Applicant: Chris Round of K & L Gates
Decision:	2018 ATMO 74 Trade Marks Act 1995 (Cth) - Section 52 opposition: Section 44 established but evidence sufficient to apply section 44(4). Section 58 argued and established.

Background

1. Trade mark application number 1731877 was on 2 November 2015 in class 12 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:  CONDOR  (the ‘Trade Mark’)

   Trade mark application no:    1731877

   Filing Date:  2 November 2015

   Owner:             Reid Cycles Pty Ltd ( the ‘applicant’)

   Specification:  Class 12: Bicycles

   Endorsements: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied

2. Acceptance of the application for possible registration was advertised in the Australian  Official Journal of Trade Marks dated 7 July 2016. Subsequently Condor Cycles Limited (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars[1].

   [1] Taken together form ‘the Notice’.

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

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 22 February 2018. The opponent was not represented at hearing but did provide written submissions by way of its legal representatives Phillips Ormonde Fitzpatrick. The applicant was represented Chris Round of K & L Gates.

   Grounds of Opposition

5. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’). Those grounds under sections 42(b), 44, 58, 58A and 60 were pursued at the hearing. The opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3] Should the opponent establish one ground of opposition in relation to all of the applicant’s services, there is no requirement for me to consider the other grounds of opposition.

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

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

   Evidence

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

   Opponent’s Evidence

   ·Declaration of Robin Croker (‘Croker declaration’) dated 29 November 2016 with exhibits RC-1 to RC-4

   ·Declaration of Michael Peter Squires (‘Squires 1 declaration’) dated 30 November 2016 with exhibits MPS-1 to MPS-7

   ·Declaration of Robert Peter Bath (‘Bath declaration’) dated 30 November 2016 with exhibit RPB-1

   ·Declaration of Michael Peter Squires (‘Squires 2 declaration’) dated 8 February 2017 with exhibits MPS-8 to MPS-26

   Applicant’s Evidence

   ·Declaration of Anthony Watson dated 2 May 2017 with the following declaration annexed:

   oDeclaration of Bruce Reid (‘Reid declaration’) dated 4 August 2016 with exhibits BCR-1 to BCR-10

   Discussion

   Section 44 –Substantially Identical or deceptively similar

7. Section 44 of the Act relevantly provides:

   44       Identical etc. trade marks

   (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a) it is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)  a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

8. To establish its opposition under section 44 of the Act the opponent must show all of the following:

   Øa trade mark (or trade marks), either registered or applied for, in the name of a person other than the applicant, and in relation to which the applicant’s trade mark is either substantially identical or deceptively similar;

   Øthe trade mark(s) in the name of the other person must be in respect of similar services or closely related goods; and

   Øthe priority date of the trade mark(s) of the other person is (must be) earlier than the priority date of the Trade Mark

9. The opponent cited one trade mark registration in support of the section 44 ground of opposition which is as follows:

   Trade mark:  CONDOR  (‘the opponent’s trade mark’)

   Trade mark application no:    1723273            

   Filing Date:  22 September 2015

   Specification:  Class 12: Bicycles and bicycle frames; parts and fittings for bicycles and bicycle frames; none of the foregoing being motor cycles, frames for motor cycles or parts and fittings for motor cycles and frames for motor cycles

10. The opponent is the registered owner of the above trade mark which has an earlier priority dates than that of the Trade Mark. The trade mark registration covers the same goods as the goods claimed by the Trade Mark; namely bicycles. The key issue to be decided is whether the Trade Mark is either substantially identical or deceptively similar to the opponent’s trade mark. The respective trade marks can be seen below:

Opponent’s trade mark	Trade mark
CONDOR	CONDOR

1. I am satisfied the Trade Mark is substantially identical with the opponent’s trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (“Shell”).[4] Both trade marks are for the identical plain text word CONDOR without any embellishments or other elements.

   [4] (1963) 109 CLR 407 at 414

2. I find the opponent’s trade mark to be substantially identical to the Trade Mark and the ground of opposition under section 44 has been made out. However, subsection 44(3) and 44(4) of the Act make provision for the applicant to overcome a section 44 ground of opposition on the basis of prior use, honest concurrent use or other circumstances.

3. In order to consider the potential prior use and honest concurrent use or other circumstances which may allow the applicant to overcome the established section 44 ground of opposition I turn to the applicant’s evidence.

4. The Reid declaration avers that the applicant operates the Reid Cycles business which is a manufacturer, distributor, wholesaler and retailer of bicycles, bicycle accessories and bicycle products. It sells these goods in Australia through its own retail stores as well as online and by wholesaling its goods to third party bicycle retailers. Mr Reid states that the applicant selected the Trade Mark in August 2008 as it wanted its range of bicycles to all have the name of birds of prey such as Condor, Osprey and Aquila.

5. Mr Reid states that the first instance of use of the Trade Mark took place in Victoria in January 2009 when the Trade Mark was applied to the ten speed road racing bike. According to Mr Reid, the applicant has continuously used the Trade Mark throughout Australia by way of promotion on its website, third party articles and on the goods themselves. The applicant has been able to provide record of sales of its goods bearing the Trade Mark since 2 April 2012 due to different point of sale software packages being used since 2009. Despite this, the applicant’s evidence has demonstrated significant sales of goods bearing the Trade Mark[5].  

   [5] Confidential Annexure BCR-6 to BCR-8 accompanying the Reid Declaration

6. Given all of the above, I am satisfied that it is appropriate to apply subsection 44(4) of the Act. Therefore, the applicant has overcome the section 44 ground of opposition.

   Section 58 – Applicant not the owner of the trade mark

7. Section 58 of the Act provides:

   58             Applicant not owner of trade mark

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

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

   ·   the respective trade marks of the applicant and opponent are either identical or substantially identical [6],

   ·   the respective goods on which the trade marks have been or are to be used  are the ‘same kind of thing’ ^[7]

   ·   the opponent has the earlier claim to ownership based on authorship[8] and use of its trade mark prior to both the filing of the application and any actual use of the opposed trade mark by the applicant[9].

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

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

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

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

9. As I have already discussed above, the opponent has established that they own a substantially identical trade mark which they have applied to the same goods. The remaining issue to be determined is whether the opponent is able to establish an earlier claim to ownership based upon authorship and use of its trade mark prior to both the filing and any actual use of the opposed trade mark by the applicant.

10. To this end the opponent has produced evidence which shows that the opponent was established in 1948 in the United Kingdom, and given the evidence of the Croker and Bath declarations, sold bicycles bearing the opponent’s trade mark in Australia in 1974 and 2005-2006. The Squires 1 declaration attests that the opponent has operated a website which uses the opponent’s trade mark and which has specifically stated that the opponent sold its bicycle by mail order to Australia. Exhibits MPS-1 through to MPS-7 accompanying the Squires 1 declaration contain copies of webpages from the Wayback Machine for the url These Wayback Machine webpages from the opponent’s website clearly demonstrate the opponent’s trade mark being applied to the website and to the opponent’s bicycles. Further to this, in 2005 until 2007 the opponent’s website does state that the opponent has been selling its bicycles to Australian consumers via its online shopping for years.

11. I turn to the comments of the Hearing Officer in Condor Cycles Limited vs. Reid Cycles Pty Ltd [2017] ATMO 161 [20] where he stated:

    Ward Group Pty Ltd v Brodie & Stone Plc[10] is authority that use of a trade mark on a website occurs in Australia when the mark is used on a website accessible in Australia, and when there has been a sale in Australia and/or if there is evidence that the use of the mark on the website was specifically intended to be made in, or directed or targeted at Australia. I find that the test in Ward Group is satisfied by the EIA which shows use of the Trade Mark, prior to the first use of the Reid Mark, on a website targeted at Australia along with the sale of at least one bicycle bearing the Trade Mark to Australia.

    [10] [2005] FCA 471

12. These comments were in regards to the applicant’s section 58 opposition against the opponent’s earlier trade mark 1723273. In this previous matter, the applicant (then opponent) was unable to establish the section 58 ground of opposition in those proceedings based upon the evidence put forward by the opponent (then applicant). That same evidence is before me in the form of the Croker, Squires 1 and Bath Declarations. I, like the previous Hearing Officer, accept the evidence in the Squires 1 declaration that the opponent had used the opponent’s trade mark on its website in 2005 which specifically states that it sold its bicycles by mail order to Australia – one of its target demographics for consumers. Coupled with the Croker and Bath Declaration, I am also satisfied that the opponent had sold at least two bicycles to Australian consumers via mail order in 1974 and 2005-2006 which is all before the first use demonstrated by the applicant.

13. Taken all together, I am satisfied that the opponent had used its trade mark on the same goods as the applicant before any first use demonstrated by the applicant of the Trade Mark. Therefore, the opponent has established the section 58 ground of opposition.

    Decision

14. Section 55 of the Act provides:

    55  Decision

    (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)  to refuse to register the trade mark; or

    (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:          Forlimitationssee section 6.

15. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 58. Accordingly I refuse to register trade mark application no. 1731877.

    Costs

16. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant under section 221 of the Act in terms of the amounts set out in Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Trade Marks Hearings

    16 May 2018