Council of the City of Shellharbour v Bright Events Pty Ltd
[2018] ATMO 48
•6 April 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Council of the City of Shellharbour to registration of trade mark applications 1687851 (41) – WINGS OVER ILLAWARRA and 1687852 (41) – WINGS OVER ILLAWARRA (Composite) - filed in the name of Bright Events Pty Ltd
Delegate:
Nicholas Smith
Representation:
Opponent: Shauna Ross of Counsel instructed by Sparke Helmore Lawyers
Applicant: Andrew Sykes of Counsel instructed by Cameron Lang and Colin Cheung of Actuate IP
Decision:
2018 ATMO 48
Trade Marks Act 1995 (Cth) - Section 52 opposition: s 58 considered – ground established in respect of 1687851 – s 60 considered – ground established in respect of 1687851 and 1687852 – registrations refused
Background
1. This is an opposition brought by the Council of the City of Shellharbour (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade marks (collectively, the ‘Trade Marks’) which are the subject of the applications detailed below in the name of Bright Events Pty Ltd (‘Applicant’).
Application Number:
1687851
Filing Date:
23 April 2015
Services:
Class 41: Arranging of Air Shows
(‘Applicant’s Services’)
Trade Mark:
WINGS OVER ILLAWARRA
(‘Trade Mark’)
Application Number:
1687852
Filing Date:
23 April 2015
Services:
Class 41: Arranging of Air Shows
(‘Applicant’s Services’)
Trade Mark:
(‘Composite Mark’)
2. Following the examination process, the applications’ acceptance for possible registration was advertised on 30 June 2016 in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose on 30 August 2016. The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 30 September 2016. The SGP raised grounds of opposition under ss 42(b), 58, 60, 62 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 15 November 2016.
Evidence and Submissions
3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 22 February 2017. This evidence consists of a declaration made on 22 February 2017 by Matt Youell, the Director of Shellharbour Enterprises, a directorate of the Opponent, with annexures A to Y (‘Youell 1’).
4. The Applicant filed Evidence in Answer (‘EIA’) on 29 May 2017. This evidence consists of a declaration made on 29 May 2017 by Mark Bright, Director of the Applicant, with Annexures 1-24 (‘Bright Declaration’), a declaration made on 29 May 2017 by Michael Hough, founding event co-ordinator of the event known as Wings Over Illawarra, with Annexure MH-1 (‘Hough 1’) and a declaration made on 29 May 2017 by Ian McKensey, member of the Rotary Club of Wollongong (‘McKensey Declaration’).
5. The Opponent filed Evidence in Reply (‘EIR’) on 3 and 7 August 2017. This evidence consists of a declaration made on 3 August 2017 by Matt Youell with annexures 2A to 2C (‘Youell 2’) and a declaration made on 7 August 2017 by Carey McIntyre, former employee of the Opponent, (‘McIntyre Declaration’).
6. The entirety of Youell 1 and 2, including publically available information such as content of website of the Historical Aircraft Restoration Society, is claimed to be confidential to the business affairs of the Opponent. I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:
The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.
This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]
[1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6].
7. In March 2018 the Applicant filed further evidence being declarations made on 5 March 2018 by Cameron Lang, legal representative of the Applicant (‘Lang Declaration’) and 9 March 2018 by Michael Hough (‘Hough 2’) along with submissions as to why these declarations should be considered under reg 21.19 of the Trade Marks Regulations. At the oral hearing the Opponent’s representative indicated that the Opponent opposed the admission of the late-filed evidence and I provided Ms Ross with the opportunity to make oral submissions in opposition to their admission.
8. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. On 11 September 2017 both parties requested an oral hearing. The matter was set down for a hearing in Canberra on 14 March 2018 and the matter was allocated to me. In line with usual practice, an email was sent to the parties on 13 December 2017 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing, which was later amended slightly by email on 27 February 2018. The Opponent filed written submissions on 1 March 2018 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 8 March 2018 (‘Applicant’s Submissions’). At the hearing Shauna Ross of Counsel instructed by Sparke Helmore Lawyers represented the Opponent, appearing in person and Andrew Sykes of Counsel instructed by Actuate IP represented the Applicant, appearing by video conference.
9. As this matter was factually complex, it was not possible for the parties to complete the oral submissions in the time allocated. At the hearing and confirmed by e-mail shortly afterwards, I provided a schedule for the parties to file additional written submissions to supplement the oral submissions made at the hearing. The Applicant filed written submissions on 21 March 2018 and the Opponent filed written submissions on 28 March 2018 (‘Opponent’s Supplementary Submissions’). The schedule for the parties to file additional written submissions specifically limited the Opponent’s Supplementary Submissions to 10 pages. The submissions were 12 pages. In the circumstances I have only reviewed the first 10 pages filed by the Opponent.
10. I am a delegate of the Registrar of Trade Marks and I am to decide the oppositions as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide on the basis of the written record, comprised of the materials mentioned in the preceding paragraphs and the oral submissions made at the hearing:
(a)to refuse to register the trade marks; or
(b)to register the trade marks (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 applications was opposed has been established.
Admission of Late Filed Evidence
11. Both the Lang Declaration and Hough 2 were filed after the closure of evidence. The Applicant sought that this additional evidence be considered by the Delegate under the provisions of Regulation 21.19 of the Trade Marks Regulations1995 (Cth).
12. Regulation 21.19 provides:
21.19Registrar may use information available
(1)If:
(a)information that is available to the Registrar is relevant to proceedings before the Registrar; and
(b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and
(c)the Registrar proposes to take the information into account in making a decision in the proceedings;
before making the decision the Registrar must:
(d)provide the information to the party; and
(e)give the party a reasonable opportunity to make representations about the information.
(2)For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
13. The delegate of the Registrar in Federation Square Pty Ltd v Federation IP Pty Ltd (‘Federation Square’) provided a useful summary of Regulation 21.19:
Historically, regulation 21.19 has been utilised by delegates of the Registrar to take into account information provided at examination that was not served for opposition purposes,[2] or for material arising from notices to produce[3] and other information the delegate became aware of that was pertinent to the proceedings.[4] In essence, the applicability of regulation 21.19 is not limited in the type of material it may allow into proceedings. Neither is the regulation limited to a particular point at which it may be considered, although it has ordinarily been applied by the delegate at around the time the substantive opposition matter is heard and after the other party has had an opportunity to respond.[5]
[2] Laboratoires La Prairie v Wendy Stockden-Brock [2005] ATMO 80.
[3] Lodestar Anstalt v Austin, Nichols & Co Inc [2009] ATMO 38; (2009) 82 IPR 308.
[4] Davide Campari-Milano SpA v Perfection Fresh Australia Pty Ltd [2008] ATMO 53.
[5] Federation Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42, [36].
14. The delegate in Federation Square also noted that as there are;
· no longer any ‘further evidence provisions’ in relation to matters commenced after April 2013;
· that there is a reduced evidence in reply stage, and
· that there are more rigorous requirements for extensions of time,
it was anticipated by the legislature that Regulation 21.19 may play a different role in trade mark oppositions than it had in the past.[6] The delegate referred to the following from the Explanatory Statement to the ‘Raising the Bar’ amendments:
Current regulation 21.19 provides a general discretionary power to the Registrar to inform herself of any information available to the Registrar by reference to any document available in the Trade Marks Office. Following the restructuring of the Trade Marks Regulations by item 11, the Registrar will still have the discretion to consider whether the information is relevant and whether it should be taken into account. However, it is not intended that the provisions of current regulation 21.19 be used as a substitute for the repealed further evidence provisions.[7]
[6] Ibid [38].
[7] Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1) p 29 (emphasis added).
15. The delegate also stated:
The clear intention is that Regulation 21.19 should not [be] interpreted as a substitute for the repealed further evidence provisions. The fact that prior to the ‘Raising the Bar’ amendments Regulation 21.19 existed concurrently with the further evidence provisions affirms that the original intent of the regulation was to stand apart from the regular evidence stages of the opposition. Parties should not assume an entitlement to the application of Regulation 21.19 and the presence of an evidence stage appropriate for that material will not assist the party applying.[8]
However:
[T]he intent of the ‘Raising the Bar’ amendments cannot be to entirely shut out [of] oppositions where there is a serious issue to be heard, the evidence is of high probative value, submitted shortly after the due date and is immediately available to the Registrar and the other side.[9]
[8] Federation Square, [40].
[9] Ibid [52].
16. The delegate of the Registrar in TWG Tea Company Pte Ltd v Tsit Wing International Company Limited stated her view that:
[A] serious opposition should be able to be decided on the merits of the case, with all relevant information available to the delegate of the Registrar for the making of that decision. This principle remains undiminished and is a potent factor to be weighed into the balance whenever a Registrar’s delegate exercises discretion under legislation that has the potential to exclude evidence crucial to an opposition outcome.[10]
[10] [2015] ATMO 64, [45].
17. There must be a compelling case for the Registrar to take information into account that is not part of properly filed evidence. The decision of a delegate to take into account information under Regulation 21.19 requires consideration of a number of factors which include: the public interest and that of the parties in matters being decided in a timely and predictable manner; the public interest that the delegate of the Registrar have before them all material relevant to a decision; the requirement that principles of procedural fairness be adhered to; and the relative inconvenience to the parties. There can be significant tensions between these factors and the Registrar must weigh up each factor in making her decision.
18. In the present case the evidence in the Lang Declaration and Hough 2 operates to correct and explain the provenance of an error in Hough 1, namely that Hough 1 uses the term ‘WOI Trade Mark’, intending to refer to the Trade Mark, without clearly defining the term as the Trade Mark. I accept that the error in Hough 1 was an unintended omission, and that the Applicant was not aware of the error until it was raised in the Opponent’s Submissions. While I acknowledge the inconvenience the Opponent has suffered as a result of this late filed evidence, it is not in the public interest for this case to be decided on the basis of what I accept is a straightforward drafting error that failed to properly capture the evidence that Professor Hough intended to provide in this matter. As such I will consider the evidence in the Lang Declaration and Hough 2.
The Opponent
19. The Opponent is the local government authority for the city of Shellharbour.
20. Youell 1 contains the following claims/statements:
· Wings over Illawarra (‘WOI’) is an aviation event, established in 2007 and held annually at Illawarra Regional Airport, which is owned and operated by the Opponent.
· In or around 2007, prior to the first WOI, a committee (the ‘WOI Committee’) was formed by the Opponent to organise the WOI Event. The WOI Committee consists of representatives from the Opponent and various community organisations. The Declarant has been the chair of the WOI Committee since 2014.
· In 2007 the WOI Committee selected the Trade Mark under which the WOI Event would be run and the Opponent ran the event in partnership with the Historical Aircraft Restoration Society Incorporated. This relationship continued until 2013 and the Opponent remained responsible for traffic management, local approvals, development applications and insurance.
· From 2007 to date the WOI Event has been conducted by the Opponent and the WOI Committee under and by reference to the Trade Mark. During that time the Trade Mark was used in respect of the WOI Event by the Opponent and the WOI Committee on various documents and websites, including the original WOI website at The Trade Mark was promoted significantly by the Opponent and through third party media sources.
· The Applicant has never been a member of the WOI Committee, though Kerry Bright, one of the directors of the Applicant, was a member of the WOI Committee in 2013 as a representative of the tenants of Illawarra Airport.
· In 2013 the WOI Committee and Opponent considered engaging a third party to operate the 2014 WOI Event and in October 2013 the Opponent made a recommendation to the WOI Committee that the Applicant be retained to operate the 2014 WOI Event.
· Prior to the formal appointment of the Applicant as operator of the 2014 WOI Event the Applicant registered the business name ‘Wings over Illawarra’.
· In 2014 the Opponent wrote to the Applicant confirming that the Opponent endorsed the recommendation of the WOI Committee to offer the management of the 2015 WOI Event to the Applicant. At the same time, the Opponent issued an expression of interest for event organisers to organise the WOI Event for the Opponent for 5 years. The expression of interest document included the statement ‘the event is owned by the Shellharbour City Council. Council will enter into a licences agreement with a third party to operate the Event…’
· On 13 April 2015, as part of the expression of interest process, an email was sent by the Opponent to a member of the WOI Committee inquiring whether the Trade Mark had been registered. Ten days later the Applicant applied to register the Trade Mark.
· On 27 October 2015 the Opponent resolved to enter into a licence agreement with the Applicant which granted it a licence to occupy Illawarra Airport for the operation of the WOI Event for the next 5 years.
· The Trade Marks were applied for without the knowledge and consent of the Opponent or WOI Committee. The Opponent has written to the Applicant requesting that it assign ownership of the Trade Marks to the Opponent.
21. Youell 2 contains the following claims/statements:
· The Declarant is not aware of any transfer of ownership of the WOI Event to the Applicant that purported to occur in 2013.
· The statements in Hough 1 that ownership of the WOI Event and the Trade Mark was transferred in 2013 cannot be correct. In particular Professor Hough was present at WOI Committee meetings in 2014 and 2015 and received numerous communications in 2015 in respect of the Opponent seeking to oppose the registration of the Trade Marks on the basis that they were not owned by the Applicant. On 12 September 2015, by email, Professor Hough agreed that the Opponent should become the legal owner of the Trade Marks.
22. The McIntyre Declaration states that the Declarant attended the meeting of the WOI Committee on 7 November 2013 and has no recollection of the Opponent or the WOI Committee agreeing to transfer ownership of the WOI Event, brands or trade marks to the Applicant.
The Applicant
23. The Applicant is a company incorporated in October 2012 that has operated the WOI Event since 2014.
24. The Bright Declaration contains the following claims/statements:
· The Trade Mark has been used since 2007 as the name of the WOI Event. The Composite Mark was created in or around November 2013 by the Applicant and has been used since then in relation to the WOI Event.
· The main instigator of the WOI Event was Professor Michael Hough who was the event co-ordinator appointed by the WOI Committee for the 2007-2013 WOI Events. The various activities required by the WOI Event, including managing the website and maintaining the bank account, were conducted by the members of the WOI Committee and their related community organisations.
· Between 2007 and 2013 the WOI Events were organised and run by the WOI Committee, with all rights in the event held by the WOI Committee.
· The directors of the Applicant have been involved with the WOI Event and WOI Committee since its inception. Until 2013 the directors operated the Aviator Lounge Café and Restaurant, being the venue for most of the WOI Committee Meetings.
· In 2013 the Opponent circulated a paper indicating that it was looking for an organisation or group willing to take ownership of the event, although the Declarant considered the paper unusual since he considered the WOI Committee the owner of the WOI Event.
· In 2013 the Declarant had discussions with Michael Hough, the chair of the WOI Committee, and Marianne Saliba, Mayor of the Opponent, indicating that the Applicant would make a proposal to take over ownership of the event. The proposal was sent to Marianne Saliba on 22 September 2013 and stated that ‘…Bright Events Pty Ltd, take over the ownership, funding and liability of Wings Over Illawarra as a commercial venture’. This approach was supported by Michael Hough.
· On 30 October 2013 the Declarant attended a meeting with the General Manager of the Opponent to discuss the proposal. The General Manager of the Opponent indicated that he was happy to recommend to the WOI Committee that the WOI Event be handed over to the Applicant.
· On 7 November 2013 the WOI Committee met. At that meeting it was unanimously agreed that ownership of the WOI Event should be transferred to the Applicant and the committee disbanded. Strangely no minutes were taken of this meeting.
· On 29 November 2013 the Applicant received a letter from Carey McIntyre, an employee of the Opponent, who confirmed that the Applicant had been given full control of the WOI Event following the 7 November 2013 meeting. This was supported by a media release from the Opponent dated 15 January 2014.
· On 4 May 2014 the 2014 WOI Event was staged. It was organised and run by the Applicant.
· Although the WOI Committee had been disbanded, due to the need to overcome an administrative issue it reconvened in 2014 to appoint the Applicant as WOI Event Co-ordinator for 2015 and put in place some additional process going forward. This occurred in November 2014 and on 11 December 2014 the Applicant received a letter from the Opponent confirming that it had been appointed as Event Co-Ordinator for the 2015 WOI Event.
· On 11 June 2015 the Opponent sent an e-mail to the Applicant advising of an opportunity to tender for the ‘management licence’ for the WOI Event going forward. This came as a shock to the Opponent who considered that it had been given full ownership of the WOI Event in 2013.
· The Applicant was concerned with the Opponent’s actions but considered it would be commercially impractical to fight the Opponent and submitted a response to the opportunity to tender even though it did not agree with the Opponent’s statements about ownership of the WOI Event.
· The Trade Mark was created by Michael Hough in 2006 and used from the inaugural event until 2013 by the WOI Committee and its members. At no time did Michael Hough assign the Trade Mark to the WOI Committee or anyone else.
· Around late 2013 the Declarant proposed to Michael Hough that the Applicant would take ownership of the WOI Event. Following discussions, the Declarant and Professor Hough agreed that should the WOI Committee transfer ownership of the WOI Event to the Applicant, Professor Hough would assign his rights to the Trade Mark to the Applicant.
· Since on 7 November 2013 the WOI Committee assigned ownership of the WOI Event to the Applicant, Professor Hough’s rights to the Trade Mark were also transferred to the Applicant. Professor Hough has signed a confirmatory Deed of Assignment dated 27 May 2017.
· At the time the Applicant filed the applications, they believed that they were the owner of the Trade Marks. The Composite Mark was not used prior to 2014.
25. Hough 1 contains the following claims/statements:
· From 2007 to 2013 all WOI Events were organised and run by the WOI Committee with the Declarant as event co-ordinator. Each member of the WOI Committee contributed to the running of the WOI Events, with the Rotary Club of Wollongong handling the financial administration, the Historical Aircraft Restoration Society providing the aviation expertise (and ownership of the domain name <woi.org.au>) and the Opponent providing insurance and some facilities.
· The role of the Opponent was primarily as owner of the Illawarra Regional Airport. The Opponent was initially very supportive of the WOI Event but at no point was the owner of the event.
· In 2013, with the arrival of a new general manager, the Opponent became less supportive of the WOI Event. It was concerned about potential liability to rate payers and wanted a more ‘arms-length’ relationship.
· As a result of the growth of the WOI Event and Opponent seeking to minimise its role in the WOI Event, it was necessary to have a private operator take the event over. The Applicant proposed to take over the operation of the WOI Event and make a proposal that was discussed with all members of the WOI Committee over a series of meetings.
· On 7 November 2013 it was unanimously agreed by the WOI Committee that responsibility, organisation and ownership of the WOI Event should be given to the Applicant.
· The actions of the Opponent from 2014 onwards in seeking to put the WOI Event up for tender were in complete contrast to its earlier behaviour. At the time the declarant did not understand how the Opponent could put the WOI Event up for tender since the Opponent was not the entity responsible for creating the WOI Event, nor did the Opponent own the WOI Event.
· The declarant states that he [Michael Hough] created the Trade Mark in 2006 and at no time prior to 7 November 2013 did he assign ownership of the Trade Mark to any other entity and in particular he did not assign ownership in the Trade Mark to the Opponent.
· In late 2013 the declarant was involved in discussions with the Applicant about the Applicant taking ownership of the WOI Event. During those discussions the declarant verbally agreed to support the Applicant’s proposal, as part of which he would assign any interest or rights that he held personally in the Trade Mark to the Applicant.
· The declarant considers that the committee members of the WOI Committee jointly held ownership of the WOI Event and ownership was never held by the Opponent. The WOI Committee unanimously agreed on 7 November 2013 to transfer organisation, responsibility and ownership of the WOI Event to the Applicant and that this confirmed the declarant’s verbal assignment of the Trade Mark to the Applicant.
26. The McKensey Declaration contains the following claims/statements:
· The Declarant was involved in the running of the WOI Event since 2010 and served on the WOI Committee from 2011 to 2013.
· In or around late 2013 the Applicant put forward a proposal to take over the WOI Event.
· While no minutes were taken the Declarant recalls that the WOI Committee meeting on 7 November 2013 it was unanimously agreed to hand over the control and running of the WOI Event to the Applicant. At the time it was also understood that Michael Hough would assist the Applicant in taking over the WOI Event and would transfer all intellectual property rights relating to the WOI Event.
· The Deponent believes that the Applicant is the owner of the WOI Event and also the Trade Mark.
Grounds of Opposition, Onus and Standard of Proof
27. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 60, 62 and 62A of the Act though in its submissions it indicates that it does not press the s 62 ground in respect of both the Trade Marks, nor does it press the s 58 ground in respect of the Composite Mark. To successfully oppose the application the Opponent needs to establish at least one of those grounds. As will become apparent, the Opponent has successfully established grounds of opposition pursuant to s 58 (in respect of the Trade Mark) and s 60 (in respect of both marks). Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.
28. The onus of proof in an opposition rests upon the Opponent.[11] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[12] The date at which the rights of the parties are to be determined is 23 April 2015 (‘relevant date’), being the filing date of the applications in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[13]
Discussion
Section 58 – Applicant not owner of trade mark
[11] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[12] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
[13] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).
Section 58 of the Act is reproduced below:[14]
[14] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].
Section 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.
Note:For applicant see section 6.
This ground is only pressed in respect of the Trade Mark, and not the Composite Mark and hence I will limit my consideration to the ownership of the Trade Mark. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:
· that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[15]
[15] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.
· that the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[16] and
[16] Re Hicks’ Trade Mark (1897) 22 VLR 636.
· that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[17]
[17] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.
The ground based on s 58 of the Act was particularised in the SGP as follows:
The trade mark “WINGS OVER ILLAWARRA” (“Trade Mark”) was first used as a trade mark by the Opponent in 2007, in relation to at least the provision of an air show event. The use of the Trade Mark by the Opponent predates the priority date of each of the Opposed Applications (being 23 April 2015).
There was some discussion between the parties as to what the Opponent is required to prove in order to succeed under the s 58 ground of opposition. What is required, as set out in the plain words of s 58, is that I be satisfied on the balance of probabilities that the Applicant is not the owner of the Trade Mark. While the Opponent has chosen to particularise its ground of opposition on the basis that it is the owner of the Trade Mark, I am not required to make a finding that the owner of the Trade Mark is either the Applicant or the Opponent; indeed, given the evidence of the Applicant that the Trade Mark was created by Professor Hough and used by the WOI Committee and/or its members, it is open to me to reach the conclusion that the Trade Mark continues to be owned by one of those entities.
What is also relevant in this case is that if the trade mark has been used before the relevant date (in the absence of fraud) the owner of a trade mark in Australia is taken to be the first person to use it in the course of trade in relation to those goods or services. The first user need not have invented or first thought of the trade mark,[18] but rather it is the first party to use it as a trade mark in Australia.
[18] Aston v Harlee Manufacturing Co (1960) 103 CLR 391, 399.
The Trade Mark is identical to the trade mark relied upon by the Opponent. I am satisfied that the Trade Mark has been used by an entity other than the Applicant for the same kind of services as the Applicant’s Services prior to the relevant date or any use of the Trade Mark by the Applicant; indeed the first use of the Trade Mark for the Applicant’s Services took place in connection with the 2007 WOI Event, prior to the Applicant’s incorporation. Thus the first and second factors are satisfied.
The third and key factor is whether a person other than the Applicant has the earlier claim to ownership of the Trade Mark. The Opponent’s case is essentially that it has the earlier claim to ownership as the first user of the Trade Mark. The Applicant, which was not established until 5 years after the first use of the Trade Mark submits that either:
a)the owner was Professor Michael Hough, who assigned the Trade Mark to the Applicant in 2013; or
b)the Trade Mark was first used by the various individuals that make up the WOI Committee and that it was abandoned following the dissolution of the Committee in 2013, prior to the relevant date (and the use of the Trade Mark by the Applicant in connection with the 2014 WOI Event).
I am not satisfied that the owner of the Trade Mark prior to 2013 was Michael Hough. While I accept Professor Hough’s evidence that he came up with the name ‘Wings Over Illawarra’ I do not find that he was the person/entity that first used the Trade Mark for the Applicant’s Services. The entity that provided the Applicant’s Services (and hence first used the Trade Mark) would have been the entity that organised the WOI Event in 2007. On the Applicant’s evidence, that entity was the WOI Committee, an unincorporated association, while on the Opponent’s evidence, it was the Opponent. There is no evidence that Professor Hough entered into an agreement to licence the Trade Mark with the entity that organised the WOI Event in 2007; rather the evidence only supports the notion that Professor Hough came up with the name, which was then used in supplying the Applicant’s Services.
The Applicant submits that the WOI Committee could not at any point have been the owner of the Trade Mark since it was an unincorporated association. I do not accept the Applicant’s submissions on this point. Section 27(1)(a) provides that a person may apply to register a Trade Mark if they ‘claim to be the owner of the trade mark’. Section 6 defines a ‘person’ as including an unincorporated body of persons.
The issue of whether an unincorporated association could be the owner of a trade mark was considered in Austbar Pty Ltd v ABA Australian Bar Association Limited,[19]The Registrar’s Delegate concluded that an unincorporated association could be the owner of a trade mark.[20] Of particular relevance are the submissions made by the then opponent in that case, extracted in the decision at [86]. They are:
[19] [2017] ATMO 29.
[20] A similar conclusion was reached in Michael John Stafford v Automotive Distributors Limited [2015] ATMO 40.
Throughout the common law world unincorporated associations have been found to have protectable common law trade mark rights: British Legion v British Legion Club (Street) Ltd (1931) 48 RPC 555; British Medical Association v Marsh (1931) 48 RPC 565; The Holy Apostolic and Catholic Church of the East (Assyrian) NSW Parish Association v Attorney General (1989) 16 IPR 619; Burge v Haycock [2001] EWCA Civ 900; [2002] RPC 28; Southern California Darts Association v Zaffina, Case No. 13-55780 (9th Cir, Aug 11, 2014). A representative action may be brought on behalf of the Association’s members to protect the goodwill in its trade marks: Artistic Upholstery Ltd v Art Forma (Furniture) Ltd [2000] RPC 31 [1999] All ER (D) 913 [2001] FSR 311 at [31]-[40].
The facts in British Legion shed light on the touchstone issue of ownership in relation to unincorporated associations. In 1921 the British Legion was formed as an unincorporated association to promote the welfare of war veterans. In 1925 it was incorporated by Royal Charter and this body took over the association and its property. Many branches and clubs were formed and were authorised to use the name British Legion. In October 1922 the defendant British Legion Club (Street) Ltd, was registered as a social club in Street, Somerset. The British Legion sued for passing off and said that the use of British Legion in the defendant’s company name was not authorized and would inevitably cause confusion. The defendant claimed it was “first in the field” when it incorporated in 1922 because at that date there was no legal entity in existence which could have sued it in the name of the British Legion and restrain it from using that name. This was rejected and the plaintiff was granted an injunction restraining the Defendant’s use of British Legion.
A related case to the decision referred to above is Selth v Australasian Barrister Chambers Pty Ltd(No 3),[21] in which the issue was raised that the Australian Bar Association, being an unincorporated association, could not be the owner of a trade mark. The Federal Court found otherwise, stating at [219] that the Australian Bar Association, for the purposes of the Trade Marks Act, was the owner of the mark as first user.
[21] [2017] FCA 649.
Predominantly on the evidence filed by the Applicant in this matter, I find that the owner of the Trade Mark prior to 2013 was the WOI Committee. If my conclusion that the owner of the Trade Mark prior to 2013 is incorrect, then I would find that the Trade Mark was jointly owned by the members of the WOI Committee (which does not change my ultimate conclusion that the Applicant is not the owner of the Trade Mark). While I accept that the Opponent played a role in the organisation of each of the WOI Events between 2007 and 2013, this was as part of its role as a member of the WOI Committee which took overall responsibility for the operation of each of the WOI Events. The entity that arranged the air shows (and hence provided the Registered Services under the Trade Mark) between 2007 and 2013 was the WOI Committee and it should properly be regarded as the first user of the Trade Mark and hence the owner at common law of the Trade Mark as of 2013.
The next question is whether the WOI Committee assigned the Trade Mark to the Applicant. Neither party has given evidence of this occurring. The Opponent’s evidence is that the WOI Committee did not agree to transfer ownership of the WOI Event or trade mark rights to the Applicant. The Applicant’s evidence is that Professor Hough agreed to assign his rights to the Trade Mark to the Applicant in the event that ownership of the WOI Event transferred. Even if I accept the evidence of Mr Bright and Professor Hough, this has no legal effect: As I have found above, Professor Hough either was not the owner of the Trade Mark that he sought to assign, or he held it jointly with the other members of the WOI Committee.
The next matter to consider is whether the WOI Committee abandoned the Trade Mark on 7 November 2013. In circumstances where:
a)The parties, including attendees at the meeting of 7 November 2013, give differing evidence of what occurred at the meeting;
b)There is no evidence from any participant that the WOI Committee intended to abandon the Trade Mark on 7 November 2013;
c)There are no minutes of the meeting;
d)That, following the conclusion of the 2014 WOI Event, the WOI Committee met again to assign the operation of the 2015 WOI Event to the Applicant;
I am not satisfied, on the balance of probabilities, that on 7 November 2013 the WOI Committee resolved to abandon the Trade Mark, either explicitly, or implicitly (through the dissolution of the WOI Committee). Taking the Applicant’s evidence at its highest, the WOI Committee ceased using the Trade Mark for approximately a year, between 7 November 2013 and 28 November 2014 when the WOI Committee assigned the operation of the 2015 WOI Event (which would necessarily have involved an implied licence to use the WOI Mark) to the Applicant. I accept the Opponent’s submissions (supported by reference to case law)[22] that even if the WOI Committee were dissolved on 7 November 2013, that by itself is not sufficient to establish abandonment. In CUB Pty Ltd v Elixir Signature Pty Ltd, the Registrar’s Delegate reviewed cases involving abandonment and noted that past decisions which have determined that particular trade marks have been abandoned have considered lack of use for varying periods of time, but such lengths of time have always been greater than 21 months.[23]
I note that my factual conclusions in this case are not based on any finding of credibility in the various witnesses as to what occurred on 7 November 2013. In the absence of documented minutes it can be very difficult for any participant to recall precisely what occurred at a meeting held several years before giving evidence. I also accept that the various members of the WOI Committee were trying to solve an immediate problem, namely the operation of the WOI Event in 2014 and, in giving evidence, may have reached different interpretations as to what was intended and what actually occurred at and around the meeting on 7 November 2013[24]. Ultimately I conclude that on the balance of probabilities I am satisfied that the owner of the Trade Mark on 7 December 2013 was the WOI Committee; that while it allowed the Applicant to run the WOI Event in 2014 it did not transfer its rights to the Trade Mark to the Applicant, nor did it abandon the Trade Mark.
[22] See Malibu Boats West Inc v Catanese [2000] FCA 1141, [37].
[23] [2013] ATMO 74, [114].
[24] For example I note the email exchange between Professor Hough and Lee Furness of the Opponent dated 12 November 2014 at Exhibit MB-18 to the Bright Declaration in which Professor Hough both refers to the dissolution of the committee and the Applicant having the right to run the WOI Event in 2014 and potentially 2015. My interpretation of this e-mail and the surrounding evidence is that there was a clear intention for the WOI Committee to allow the Applicant to run the WOI Event in 2014, but that the WOI Committee had simply not considered whether their actions amounted to a permanent assignment of the WOI Event to the Applicant or a temporary license.
In the absence of any evidence of transfer (or abandonment) from the WOI Committee, I find that the Applicant is not the owner of the Trade Mark and that the Opponent has established the ground of opposition under s 58 of the Act with respect to the Trade Mark.
Section 60
45. Section 60 of the Act is reproduced below:
Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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.
46. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark or the Composite Mark would be likely to deceive or cause confusion.[25] However, given the identity between the Opponent’s earlier trade mark with the Trade Mark, should I find that a ground of opposition under s 60 has been established for the Composite Mark, it will follow that the same ground of opposition has been established for the Trade Mark. I have therefore focused the discussion that follows on the Composite Mark.
[25] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.
47. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[26] Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[27]
[26] [2000] FCA 1335, [81].
[27] (1992) 33 FCR 302, 343.
48. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[28]
[28] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.
49. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[29] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955. That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:
What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[30]
[29] (2000) 50 IPR 1.
[30] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].
50. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[31]
[31] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <
51. The Opponent has particularised the ground of opposition in the SGP as follows:
The Opponent has used the “WINGS OVER ILLAWARRA” Trade Mark since 2007 and continuously to date in Australia. The extensive use of the Trade Mark by the Opponent has acquired a reputation in Australia and the use of the Opposed Applications (or any of them) by the Applicant would likely to deceive or cause confusion.
52. As noted in my decision in respect of the s 58 ground of opposition, I have found that, on the balance of probabilities, the owner of the Trade Mark at the relevant date was the WOI Committee.
53. As of the relevant date the WOI Committee (and the Applicant, under an implied licence from the WOI Committee in 2014), had operated 8 separate air shows under the WOI Mark in the previous 8 years. A number of the air shows were notably successful, with approximately 30,000 attendees, and had generated a degree of publicity commensurate with those attendance figures in the local region. Given the limited size of the market for the Applicant’s services, there being a limited number of air shows in Australia each year, I consider that by reason of its use in respect of a number of successful and popular annual air shows over an 8 year period that the Trade Mark is likely to have acquired a reputation in relation to arranging of air shows within the Illawarra region (a region to which the all of the marks concerned here plainly refer).
54. It is not sufficient that the Opponent merely establishes that its trade mark has a reputation. I must also be satisfied that because of that reputation use of the Composite Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to the consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:
An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[32]
[32] (1937) 58 CLR 641, 658.
55. The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[33]
[33] [1979] RPC 410, 423 (citations omitted).
56. It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:
A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[34]
[34] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are applicable to s 60 of the Act.
57. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:
A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[35]
[35] [1999] FCA 1020, [50]. These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.
58. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[36]
[36] [2012] ATMO 124 at [40].
59. The Composite Mark reproduces the words of the Trade Mark along with various device elements relevant to the operation of an air show in the Illawarra region, including aeroplanes and the Sea Cliff Bridge, a local landmark. While the Applicant is presently authorised to operate the WOI Event, I note that the notional use of the Composite Mark could include air shows that are not the WOI Event and/or that the authorisation could be withdrawn or expire. In such circumstances I find that the use of the Composite Mark for the Applicant’s Services would be likely to deceive or cause confusion; a number of persons would see an air show operated under the Composite Mark and be caused to wonder if it came from the same source as the air show operated under the Trade Mark. As foreshadowed, it follows from that finding that use of the Trade Mark by the Applicant would also be likely to deceive or cause confusion. I find that the Opponent has established the ground of opposition pursuant to s 60 of the Act.
Decision
60. I have found the Opponent has established the ground of opposition it raised pursuant to s 58 of the Act in respect of the Trade Mark and s 60 in respect of both the Trade Mark and the Composite Mark. As the Delegate of the Registrar I accordingly refuse to register the Trade Marks.
Costs
61. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. In respect of trade mark number 1687851 I award costs against the Applicant under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Marks Regulations 1995 (Cth). In respect of trade mark number 1687852 I award reduced costs against the Applicant under s 221 of the Act in the same manner as Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[37]
[37] [2001] ATMO 78.
Nicholas Smith
Hearing Officer
Oppositions and Hearings
6 April 2018
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