Consolidated Properties Group Pty Ltd v Garry Sandy Vereb

[2002] ATMO 110

TRADE MARKS ACT 1995

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

Re:Opposition by CONSOLIDATED PROPERTIES GROUP PTY LTD to registration of trade mark application 861596 (classes 35, 41) - CASUARINA BEACH - filed in the name of GARRY SANDY VEREB.

Background

Trade mark application 861596 was filed by Garry Sandy Vereb on 29 December 2000.  The trade mark in question is the plain words Casuarina Beach, in mixed upper and lower-case letters as shown.  Mr Vereb has sought registration for services specified as follows, in two classes of the International (Nice) Classification of Goods and Services:
Class 35: Promotional management, including the collection and presentation of information in respect of the goods and services of others, promotion of tourist and entertainment businesses
Class 41: Entertainment services being mobile discotheques; entertainment management, including management of mobile discotheques

From the evidence, to which I will come below, it appears that the company of which Mr Vereb is Managing Director uses the trade mark to promote bands, performance acts, entertainers and local businesses in south-east Queensland and northern New South Wales.

The application has been accepted for registration.  Registration is now opposed by Consolidated Properties Group Pty Ltd.  The opponent is a major Queensland property developer.  One of its subsidiary companies, Kings Beach (No 2) Pty Ltd has been involved in developing and selling property in the Casuarina Beach land development.  I think the distinction between those two companies is immaterial for present purposes, and will ignore it.

The parties followed the evidence stages set out in the regulations, with Mr Vereb being granted permission to serve and rely on one additional declaration.  I have been assigned to decide the opposition, under delegation from the Registrar of Trade Marks and what follows is my decision on the matters argued.

The opponent, represented by Dr Gillian Dempsey of counsel, instructed by Maureen Grant-Thomson of the law firm Deacons, appeared at the hearing which I conducted.  Mr Vereb and a business associate, Mr Freeman, attended the hearing as observers.

Evidence

This is as follows:

Opponent's Evidence in support

Declaration by	Dated	Annexures
Philip Hourigan	6/11/2001	A and B
Jennifer Laird	6/11/2001	A to O

Mr Vereb's evidence in answer

Declaration by	Dated	Annexures
Luke Ballard	29/1/2002	A to E

Opponent's Evidence in reply

Declaration by	Dated	Annexures
Jenifer Fischer	30/4/2002	A to F

Mr Vereb's further evidence

Declaration by	Dated	Annexures
Garry Vereb	20/5/2002	A to O

Issues and decision

The opponent relied on four grounds of opposition

• Ownership (s 58)

• Conflicting prior reputation (s 60)

• Trade mark contains misleading connotation (s 43)

• Accepted on basis of false representations (s 62)

I dealt with the last of these at the hearing.  The opponent argued that Mr Vereb made an untrue statement in requesting the Trade Marks Office to expedite the examination of the application.  However, the expedition of examination merely brings forward that which must be done in any case, the process of examination.  There is no evidence that expedition in any way contributed to the decision to accept the application.  Therefore, this ground has not been established.

I will now deal with the remainder of the grounds, two of which can efficiently be treated in combination.

Sections 58 and 60

Section 58 lays down that:

Applicant not owner of trade mark

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

Note:  For applicant see section 6.

Section 60 is a more complex piece of drafting.  It says:

Trade mark similar to trade mark that has acquired  a reputation in Australia

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.

However, as a threshold, there must, at the priority date - the filing date of this application, 29 December 2000 - be a (deceptively similar) trade mark with a reputation.  Dr Dempsey's arguments about ownership and conflicting trade mark reputation therefore both have a common hinge in the ownership of, or reputation in, a trade mark.  A trade mark is, (s 17):

... 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.

Dr Dempsey took me to evidence that shows that the opponent created the name "Casuarina Beach" as the name of its real estate development, described as a new oceanfront township.  It has spent considerable amounts of advertising money to alert people to the fact that property in this new estate, with various existing and proposed community facilities, is available for purchase.  The extent of this is ambitious: the opponent intends to deliver a complex of 600 homes, with grocery outlets, shops, cinemas, cafes and restaurants. 

In the evidence, the opponent clearly invites people to purchase property in the estate that it has created.  One of the earliest promotions of this development was via a brochure called Casuarina Beach Footprints.  This 4-page brochure was inserted in newspapers, chiefly the Brisbane Sunday Mail and the Gold Coast Bulletin, in April 2000.  The opponent, it appears, is responsible for a set of architectural covenants that require houses to be of a "beach-house" style.  The focus is on ensuring that all residents have good access to the beach, which is apparently to be protected from environmental degradation.

I note that this source also showed that construction of stage 1 was not to commence until July 2000, with the first homes to be built from mid 2001.  I therefore take it that, when Mr Vereb filed the opposed application, very little suburban infrastructure actually existed.  Similarly, there is no evidence that Casuarina Beach is a formally approved geographical name.  In the evidence, the only maps on which Casuarina Beach is shown are those that the opponent uses for advertising purposes.  However, the opponent went to the trouble of telling over half a million potential readers that a new oceanfront township was soon to be extant.  It has apparently delivered on this promise.  Therefore, I do not think that I should be quick to say that it is wrong as to its facts.  Casuarina Beach is now a town, and there are many people who were aware of this town-to-be by December 2000.

So far as the evidence goes, the opponent coined the combination of words "Casuarina Beach".  However, I do not find that it has used this combination, per se, as a trade mark.  The words themselves have apparently been dedicated to the public as the name of a new place, to quote one of the Managing Directors, a place which will become "established as a new living township".  That is not to say that the opponent does not have trade mark rights in various renditions of that word.  It appears to have made prominent and extensive use of a particular logo form of those words.  However, I fail to see how the opponent can claim any exclusivity in the words themselves.

That being so, is there anything to impede Mr Vereb from claiming ownership of the words in question by filing an application to register them as his trade mark for these particular services?  These, I note, are offered in more or less the same area as the location of the Casuarina Beach estate.

I find that there is.  The words are now in the public domain.  Just as the opponent cannot, in my respectful opinion on the material now presented, claim to have trade mark rights in the words that indicate the town in question, neither can the applicant claim such a monopoly for services in that area.  My decision, below, is that on the evidence available, the words Casuarina Beach had a connotation as a geographical identifier.  Therefore, in terms of the present headings, I find that the opponent has established that the applicant, Mr Vereb, is not the owner of a trade mark for these services.  The ground under s 60, however, is not established.

Section 43

This lays down that:

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

This provision is confined to situations where the connotation, or meaning, either direct or implicit, is inherent in the mark.  See, in that respect T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc, [2000] FCA 720, 48 IPR 512, at 43. I am satisfied, from the evidence, that the words Casuarina Beach do have a connotation as a place. The opponent may wish to assert that this place has proprietorial overtones but these do not cloud the issue. Doubtless there are proprietorial overtones about other places, for instance perhaps Disneyland, but these issues do not detract from the main point. Casuarina Beach, as the name of a place that is particularly relevant to the (differing) business conducted by the applicant and the opponent, has a geographical connotation.

Potentially, given this, the trade mark, if misused, is likely to deceive or cause confusion.  However, there is no evidence that this is likely.  Mr Vereb is based in the area near Casuarina Beach.  The opponent has brought in no material to suggest that mis-description is likely.  It argues that Mr Vereb represents businesses in the Tweed Heads region but not Casuarina Beach as a "principal client base".  However, to the extent that this may be true, it does not amount to a misrepresentation.  The services are somewhat nebulous and may be provided in a variety of ways and under many different circumstances.  Without somewhat more, there is nothing to suggest that the services in question will not be available in the place in question, or have relevance to people from that place, or by a firm that has a presence in that place.  There is, it is true, some potential for the trade mark to be misused.  However, the potential is not such that I can say that the opponent has established this ground of opposition.

The opponent, instead, has taken s 43 as dealing with acquired proprietorial connotations.  It argues that the words Casuarina Beach will be misdescriptive because they would indicate, if used by Mr Vereb, a "commercial association" with the opponent.  This view of s 43 was expressly excluded by the Full Federal Court in T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc, supra, and I therefore do not agree that this aspect is relevant to s 43 in the first instance.

Conclusion

I have confined myself, in deciding this opposition, to the grounds argued by the opponent.  While I have made no comment on the viability of other grounds such as s 41, I think that, had the opponent chosen to argue that ground, it too might have been substantiated.  Either way, I have found that the applicant is not the owner of the trade mark, essentially because it has a geographical connotation.  I therefore refuse to register the trade mark application.  I order the applicant, Mr Vereb, to pay the opponent's costs, to the extent set by the scale in the regulations.  In the event of a dispute about this, the Trade Marks Office will tax these costs.

Terry Williams

Hearing Officer
25 November 2002