Cosentino S.A. v Stephen Silvestro and Tai Evans

[2000] ATMO 45

TRADE MARKS ACT 1995

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

Re:Opposition by Cosentino S. A. to registration of trade mark application 769102(19) - SILESTONE with device - filed in the name of Stephen Silvestro and Tai Evans.

Background

Stephen Silvestro and Tai Evans (the applicants) jointly filed application number 769102, depicted below, on 3 August 1998 in respect of 'Building materials' in class 19.

The application was accepted on a first examination report and advertised as such in the Australian Official Journal of Trade Marks of 3 December 1998. Cosentino S. A. (the opponent) filed a notice of opposition on 2 March 1999. This notice claimed grounds of opposition under the Act under the terms of s.57 in respect of s.39, s.41, s.42, s.43 and s.44, and also under s.58, s.59, s.60, s.61 and s.62. The opponent's evidence in support of its opposition, a single statutory declaration from Jose Martinez Justo, was filed and served by 2 September 1999. The applicants chose not to file any evidence in answer to this material. The opponent requested to be heard in the matter and it came before me, as a delegate of the Registrar, on 10 March 2000.

The Evidence

Before I begin with a consideration of the substance of the evidence, I note that the declarant is initially identified as Jose Martinez, but is later identified in all exhibits as Jose Martinez Justo. No submissions have been made by either party concerning this circumstance. However, I understand that this is a conventional practice for declarations notarised in certain Spanish speaking localities and I intend to allow the declaration as properly filed evidence.

Mr Justo is the Manager of Cosentino S. A., a Spanish company. His declaration says that the opponent had a commercial relationship with Stonelink Enterprises (Stonelink) from as early as 10 March 1997, when Stonelink was appointed the Western Australian agent/representative/distributor for the opponent. One of the applicants, Tai Evans, was a registered proprietor of Stonelink at that time. From April 1997, Stonelink imported the opponent's building materials and acted as a distributor until the opponent terminated the agency/distributorship agreement on 17 October 1998.

Earlier than the opponent's commercial venture with Stonelink, other Australian companies had also imported the SILESTONE goods from the opponent. The first of these is documented to have been a Brisbane company, Naomi Marble and Gran. Pty Ltd., on 18 May 1993. Also in evidence are copies of two invoices, for the SILESTONE goods, from the opponent to Elegant Group of Companies, also located in Brisbane, dated 25 May and 4 June 1993 respectively. This activity pre-dates a set of invoices from the opponent to Stonelink dated from 22 April 1997 to 26 March 1998.

The form in which the opponent has used its trade mark, as displayed in the letterhead in the evidence, is as shown below.

Submissions

Mr Ben Fitzpatrick, of Counsel, represented the opponent via telephone at the hearing held on 10 March 2000. Despite the notice of opposition detailing opposition under ten sections of the Act, Mr Fitzpatrick only presented arguments under two of those grounds of opposition, those taken under s.58 and s.59.

In relation to ownership of the mark Mr Fitzpatrick directed my attention to the opponent's first evidenced use in Australia in 1993. He argued that the subject trade mark, applied for on 3 August 1998, is substantially identical to that used by the opponent for identical goods prior to that date. These factors, he said, satisfied the requirements for finding in favour of the opponent under s.58.

In addition, Mr Fitzpatrick pointed out that the many thousands of dollars of use, between April 1997 and March 1998, when Stonelink acted as a distributor for the opponent, would inure to the benefit of the opponent[1]. This documented use occurred well before the present date of application, he said.

[1] Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd (1967) 116 CLR 254

In relation to the s.59 ground, Mr Fitzpatrick argued that the applicants had no intention to use the mark as at the date of application because the application had been made while Stonelink enjoyed the status of a distributorship for the opponent. He argued that because at least one of the applicants was a proprietor of Stonelink that this relationship prevented such use by the applicants.

Mr Fitzpatrick concluded his submissions with a request for costs on behalf of the opponent.

Discussion

As I mentioned earlier, the opponent initially claimed grounds of opposition covering 10 sections of the Act. The evidence and submissions presented, however, only pressed two of those grounds, those under s.58 and s.59. Thus I formally find that, on the other eight grounds, those taken under s.39, s.41, s.42, s.43, s.44, s.60, s.61 and s.62, the opposition is not successful. I now turn to the remaining two grounds of opposition.

(a) Section 58 - Applicant not owner of trade mark

The relevant legislation for this ground 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.

Note:  For applicant see section 6.

The law is well settled in relation to determining ownership of a trade mark under the Act because the provisions of proprietorship under s.40 of the Trade Marks Act 1955 equate to the provisions of s.58.

Under s.40 of the repealed Act, a successful opposition required three factors to be established by the opponent[2]. These are: (1) the trade marks of the applicant and opponent should be identical or virtually identical, (2) the goods or services involved by the parties should be the 'same kind of thing' and (3) the use or application by the opponent must pre-date the applicant's claim. The applicant's claim for proprietorship could have been based on either the date on which the application for registration was made, or the first use of the trade mark by the applicant, whichever was the earlier.

[2] Shell Co (Aust) Ltd v Rohm & Haas Co (1948) 78 CLR 601

Considering the first of these factors, the test for comparing trade marks for identity is outlined in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 109 CLR 407 at 414 where Windeyer J 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.

A comparison of the respective trade marks of the applicant and the opponent results in an identification of just one difference, being the border device present in the applicant's mark. Every other feature in both trade marks, encompassing the style of lettering, the spelling, the meaning, the pronunciation, the white on black colouration, the proportions of all features and the unusual elongation of the letter 'S' in the middle of the word SILESTONE, is identical. The purchasing public is not likely to pay any heed to whether the trade mark appears with or without a border. The border is an unremarkable element in the face of the essential features of commonality between these trade marks. Applying the test from Shell v Esso, supra, I therefore find that the two marks are substantially identical.

The second factor to be considered concerns the respective goods of the applicant and the opponent. The present application is in respect of 'Building materials' in class 19. The opponent's evidence indicates that the goods that it has sold into Australia through various distributors are silica/quartz agglomerate blocks or slabs. These items are generally in slabs 3.04 metres by 1.24 metres in thicknesses of 12, 20 or 30 millimetres. They are suitable for the production of tiles and paving stones, as well as for the production of tops for kitchen surfaces and vanity units. Such blocks or slabs fall under the general description of non-metallic building materials. Hence, the goods of interest of both parties enjoy an identical description. Thus, the respective goods qualify, as the 'same kind of thing', as required from the test in Hicks' Trade Mark, supra.

The final factor in the test under s.58 concerns the claims for first use of the trade mark. The date of application for the present trade mark is 3 August 1998. The applicant has provided no evidence or assertion of any use of the mark earlier than that time and so it stands as the applicant's claim. The opponent's uncontroverted evidence indicates its use of the mark, in Australia, from as early as May 1993. Moreover, the use from that time has been shown to be ongoing.

From the above, I find that the opponent has used a trade mark virtually identical to the present application on goods that are the 'same kind of thing' from a date more than five years earlier than the present application date. This leads to the conclusion that the opponent is the owner of this trade mark rather than the present applicants. As such, I find that the opponent succeeds under this ground of opposition.

(b) Section 59 - Applicant not intending to use trade mark

This section of the legislation reads:

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

The opponent has argued that the applicants did not have a bona fide intention to use the applied for trade mark. The basis for this contention centred on the allegation that at the date of application, Stonelink was the opponent's distributor in Western Australia and at least one of the applicants was a principal of Stonelink.

The evidence shows that one of the present applicants, Tai Evans, was a registered proprietor of Stonelink at the date of application. A letter from the opponent to its Australian attorneys, dated 22 February 1999, also makes the claim that the other applicant, Stephen Silvestro was a partner in Stonelink. This allegation, however, is not supported in the documents in the opponent's evidence from the Australian Securities & Investments Commission.

The applicants' case of an intention to use the trade mark is supported, prima facie, by the making of the application[3] on 3 August 1998. The opponent has claimed a legal impediment exists for the applicants to use the mark. This contention does not directly attack the applicants' intention to use the mark. Whatever the legal agreement between the opponent and Stonelink - and whatever the legal consequences of proposed use of the mark by the applicants - the intentions of the applicants to use the mark are not directly put under scrutiny by the opponent's evidence. Even allowing for the circumstance, if it existed, that the applicants might have been prevented from using the mark immediately, the intention may still have been to use the mark when any such impediment was removed. The material before me is insufficient to find that the applicants had no intention to use the mark at the time of filing.

[3] Aston v Harlee Manufacturing Co (1960) 103 CLR 391

As such, I find that this ground of opposition is not successful.

Conclusion

From the foregoing, I have found that the opponent is successful under the s.58 ground of opposition but not successful under the s.59 ground. The opponent did not support eight other grounds listed in the notice of opposition in either the evidence or the submissions. The opposition action as a whole is, therefore, successful. As a delegate of the Registrar I, therefore, refuse to register this trade mark.

Costs

The opponent requested its costs in this opposition matter. As I can see no reason why costs should not follow the result, I hereby direct that the applicants pay the opponent's costs in this matter in accordance with the Official scale.

Don Nancarrow
Acting Hearing Officer
11 May 2000.

Re Hicks' Trade Mark (1897) 22 VLR 636
Moorgate Tobacco Co Ltd v Philip Morris Ltd (No. 2) 156 CLR 414