Cusp Creative Pty Ltd v Kusp Limited

[2002] ATMO 111

TRADE MARKS ACT 1995

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

Re:Opposition by Cusp Creative Pty Ltd to registration of trade mark application 824916, 824917, 828875(9, 16, 35, 36, 38, 41, 42) - KUSP & K DEVICE, KUSP (STYLISED), KUSPWARE - filed in the name of KUSP Limited.

DATE OF DECISION:

27 November 2002

DELEGATE:

Hearing Officer Jock McDonagh

REPRESENTATION:

Opponent

Dr Geoffrey Levy of Griffith Hack, Attorneys

Applicant

Joanna Lawrence, Andrea Lee and Serena Sing, of Blake Dawson Waldron, Lawyers

DECISION:

1. Section 52 Opposition: registration allowed - s 55(b)

2. Costs awarded against opponent

Background

The applicant, Kusp Limited of Melbourne Victoria, filed trade mark application numbers 824916 and 824917 on 25 February 2000 and trade mark application number 828875 on 24 March 2000. 8249116 is an application to register the words kusp k and device as shown:

824917 is an application to register the word kusp and 828875 is an application to register the word KUSPware. All three applications were for the following Classes:

Class 9: Electronic communications hardware and software for recording, transmitting and reproducing data, sound and images

Class 16: Printed matter, such as, brochures, pamphlets, leaflets, newsletters, magazines, manuals and handbooks for electronic and information technology

Class 35: Advertising, management and administration of electronic communications systems, technology and networks and compilation and systemization of information into computerised databases

Class 36: Insurance; financial affairs; monetary affairs

Class 38: Telecommunications

Class 41: Production of content for entertainment, news and education purposes by video, audio, data or multimedia devices and a process for dissemination of that content by electronic communications

Class 42: Acquisition, development and licensing of technology and intellectual property; design, development and dissemination of content for electronic communication networks; remote, off-line and on-line computer services including computer programming

The applications were duly examined and accepted for registration. The acceptance of 824916 and 828875 was advertised in the Australian Official Journal of Trade Marks on 10 May 2001, while the acceptance of 824917 was advertised on 17 May 2001.

On 28 June 2001, in accordance with Part 5 of the Trade Marks Act 1995 ("the Act"), the opponent, Cusp Creative Pty Ltd of St Kilda Victoria, filed a notice of opposition to the registration of 824916, 824917 and 828875.

The opponent's evidence in support and the applicant's evidence in answer was duly served and filed.

The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Melbourne on 2 September 2002. Dr Geoffrey Levy of Griffith Hack Attorneys of Melbourne appeared for the opponent. Joanna Lawrence, Andrea Lee and Serena Sing, of Blake Dawson Waldron Lawyers of Melbourne appeared for the applicant.

Preliminary Matters

On 28 August 2002, the opponent’s attorneys wrote to me seeking an adjournment of the hearing date. The request was made because the opponent had realized that two further grounds of opposition should have been included in the notice of opposition. The applicant opposed such an adjournment.

I decided to maintain the scheduled hearing date to hear submissions by the parties relating to the preliminary issue, and also to hear submissions relating to the original notice of opposition.

Submissions by the opponent included the overall contention that in the interests of justice it would be fair and reasonable to include the additional grounds of opposition. Consequently, additional time would be required for parties to adduce evidence relating to the new grounds.

Further, it was submitted on behalf of the opponent, that there were opposition proceedings instituted by the applicant in these proceedings against application 829404 - cusp - filed by the opponent in these proceedings. There was common evidence in both opposition proceedings. If this hearing was postponed, to be heard with the 829404 opposition, evidence served out of time by the applicant in these proceedings could be relied upon, along with other relevant evidence adduced in the extended evidence service phases.

The applicant opposed the adjournment of this hearing on a number of grounds. It was argued that the separate opposition proceedings comprised different matters to be determined. Applicant stated that it had acted diligently in this matter, whereas the opponent had not. Delay would be at the expense of the applicant. The applicant also stated that it did not intend to rely on the evidence served out of time.

Section 66 of the Act provides for amendment of applications, notices, and documents where, inter alia, the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.

In considering what is fair and reasonable, I took into consideration the submissions of the parties. While there are advantages in allowing parties time in which to gather all relevant material pertaining to proceedings, the Regulations and procedural fairness require time limits to be imposed in opposition matters.

I decided that it would not be fair and reasonable to allow the amendment of the notice of opposition and adjournment of the opposition hearing. The request for an adjournment was made on 28 August 2002, and allowed only two clear working days before the hearing. The hearing had been formally notified on 12 August 2002, following an informal hearing notice issued 13 July 2002. The applicant was ready to proceed on the scheduled date, and should not be penalized, either in terms of time or in terms of additional costs, by delaying the hearing of the matter.

While it is in the public interest that matters are dealt with on the merits, rather than shut out in consequence of a failure in procedure, it is also in the public interest that issues relating to the ownership of trade marks are dealt with as expeditiously as possible. In my opinion the likely additional time and expense imposed upon the applicant, combined with the late request for adjournment outweighs the public interest in having all possible matters ventilated at hearing.

Grounds of Opposition

Following my decision to proceed with the original notice of opposition, the opponent’s attorney advised that it would only rely on Grounds 1 and 3 of the notice of opposition, namely:

• S.42(b): its use would be contrary to law; and

• S.60: Trade mark similar to trade mark that has acquired a reputation in Australia.

Evidence

The following evidence was filed and served:

Declarant	Date	Exhibits	Referred to as
Evidence in Support
Adelina Colangelo & Noel Pennington	26.09.01	A1 to A10	Colangelo
Evidence in Answer
Dael Samuel Perlov	14.12.01	DP-1 to DP-29	Perlov
Lucy Catherine Shelton	18.12.01	LCS-1 to LCS-12	Shelton
Ashley Midalia	18.12.01	AM-1 to AM-5	Midalia
Charles Alexander Mercer White	20.12.01	CAMW-1 and CAMW-2	White

It should be noted that the Colangelo declaration was in fact served and filed as three separate, but materially identical, declarations.

At the commencement of the hearing it was brought to my attention by Dr Levy, for the opponent, that exhibits to the Perlov declaration had been served out of time, and thus Regulation 21.7 provided that the entire declaration is taken to have been served out of time. In the absence of an application for extension of time, the declaration was inadmissible in these proceedings. Ms Lawrence, for the applicant, stated that she would not be relying on the Perlov declaration.

The Colangelo declaration states that the opponent has continually used the cusp trade mark in relation to marketing services, graphic design services and e-commerce business solutions. Examples of use were:

• 15 June 1999, registration of business name Cusp Creative Communication;

• 3 August 1999 - 3 May 2000, internet e-mail account [email protected], with example messages sent to that address on 29 October 1999 and 8 November 1999;

• 23 August 1999, signage at business premises: Cusp/Noel Pennington Design;

• 14 October 1999, Cusp Creative Pty Ltd registered as company with ASIC;

• 11 November 1999, Cusp Creative Pty Ltd registered in Australian Business Register;

• 22 November 1999, Cusp Creative Pty Ltd commences use of business cards and stationery using cusp and Cusp Creative Pty Ltd;

• 8 January 2000, registration of domain name cusp.com.au

The Colangelo declaration states that the opponent was a finalist in the “Towards a New Age in Creativity” competition conducted by the Australian Coalition 99 and Ad News, the latter being a publication for the advertising and marketing industries. It states that the opponent’s entry form displayed the cusp trade mark. No copy of the entry form was exhibited.

The Colangelo declaration also states that the opponent has received numerous telephone calls in which the caller had intended to contact the applicant. Also the opponent has received courier parcels intended for the applicant. It asserts that use of trade mark 824917 is misleading and deceptive in trade and commerce and is causing confusion in the marketplace.

The applicant’s evidence in answer comprises declarations made by staff of its legal representative. Each of the declarants details research conducted in respect of the opponent.

The Shelton declaration details a media search, an Internet and domain name search, and a Yellow Pages online directory search. In effect, the search found no reference to cusp or Cusp Creative Communications during the period 1 January 1999 and 1 March 2000. Further, the and cusp.com.au URLs did not connect to web sites. The Yellow Pages online search did locate the opponent under the category “Advertising Agencies”.

The Midalia declaration details further research into the opponent’s hard copy and online White and Yellow Pages entries and the opponent’s web site. Inquiries determined that the opponent first contacted the White and Yellow Pages in May 2001, with online listings available then but listings in hard copy not appearing until 2002. Inquiries also revealed that the opponent’s domain name was not delegated to a server and thus was not functional.

The White declaration relates to research into the “Towards a New Age in Creativity” competition conducted by the Australian Coalition 99 and Ad News mentioned in the Colangelo declaration. The Ad News report of the competition is exhibited, but shows no reference to the opponent.

Ground 1 - Contrary to Law

Section 42 of the Act provides:

Trade mark scandalous or its use contrary to law

42. An application for the registration of a trade mark must be rejected if:

(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.

Dr Levy submitted that the applicant’s mark is contrary to each of s.20 of the Act, s.52 Trade Practices Act 1975, and to the common law of passing off.

As to the s.20 submission, I note that s.20 of the Act relates to rights given by registration of a trade mark. It provides no protection for unregistered trade marks. Here, the only relevant trade marks are those of the opponent, which is unregistered, and of the applicant. Because of the lack of registration the opponent’s mark cannot be relied upon. In relation to the applicant’s trade mark, a trade mark cannot infringe itself. I reject this limb of this ground.

Dr Levy also submitted that the applicant’s use of the three opposed marks would amount to engaging in conduct that is misleading or deceptive or is likely to mislead or deceive contrary to s.52 Trade Practices Act, and such conduct would also amount to the common law action of passing off.

The essence of the opponent’s contentions was that there was no evidence of the applicant using its marks before the priority date, whereas the opponent had been using its mark for at least six month by that stage. Only a relatively slight reputation in the marketplace was required under both s.52 Trade Practices Act and passing off. A significant proportion of the marketplace was likely to be caused to wonder if the two services were related. Intentional conduct was not a requirement. While the test was objective, with a likelihood of misleading or confusion being the test, here there was evidence of actual confusion.

Dr Levy submitted that offending conduct could be specified at any time towards the end of 1999, and for the purposes of the ground specified 9 December 1999.

Ms Lawrence, for the applicant, argued that the opponent had not established a requisite reputation at the relevant time. On the contrary, any confusion is likely to have occurred as a result of the opponent listing itself in the telephone directories, by which time the applicant had established its reputation.

The decision of Madgwick J in Advantage-Rent-a-Car Inc v Advantage car Rental Pty Ltd [2001] FCA 683 ("the Advantage case") is authority for the Registrar of Trade Marks, and delegates of the Registrar, making a decision in respect of a ground in opposition proceedings that the use of the mark the subject of the application "would be contrary to law" within the meaning of paragraph 42(b) in that such use would constitute an infringement of a law other than the Trade Marks Act.

Having regard to the evidence, I am not satisfied that the opponent has established a sufficient reputation in either its trade mark or its trade name for me to conclude that the applicant’s use of its marks would constitute contravention of section 52 Trade Practices Act. Indeed, the evidence falls short of establishing even a slight reputation of the opponent.

The majority of the opponent’s evidence is merely indicative of the creation of a business and the means of establishing a reputation. Thus there is evidence of obtaining a business name and company registration, obtaining an e-mail address and an Internet domain name, and the purchase of corporate stationery. However, there is little or no evidence of those in use. The Colangelo declaration refers to a competition entry form bearing the opponents mark, yet no copy of it is exhibited, only a copy of the entry itself. The entry does not display the opponent’s mark. The two items of e-mail correspondence relating to the competition sent to the opponent’s e-mail address do not mention the cusp mark or business name, rather they refer to Adelina Colangelo and Noel Pennington.

The instances of misdirected telephone calls and parcels are not given any chronological particulars. The facts recited could have happened at any time between the establishment of the opponent’s business and the execution of the declaration. Thus the evidence is of limited utility in these proceedings.

In respect of the common law action of passing off, I think it is clear from submissions made by both parties that the reputation requirement of s.52 is likewise an essential requirement for passing off. Therefore, this limb fails for the same reasons as for the s.52 limb.

Ground 3 - Reputation

Section 60 of the Act provides:

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.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

Accordingly, to satisfy section 60, the opponent has the burden of establishing the following elements:

1. the acquisition, by the priority date, of a reputation in Australia by the pre-existing trade mark;

2. substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark; and

3. a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

Under section 60, the opponent may rely on a trade mark which is not registered, but which has been used at common law. To establish such use, it must show that it has been used as a "badge of origin" - as confirmed by Gummow J in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd[1]. The requisite use must be public use, but need not be sufficient to establish a local reputation: Moorgate Tobacco Co. Limited v Philip Morris Limited & Anor[2], per Deane J.

[1] (1991) 21 IPR 1

[2] (1984) 156 CLR 415

Dr Levy submitted that by the time of the priority date, the opponent had 10 month’s reputation in Australia, particularly in Melbourne, while the applicant had none.

In response, Ms Lawrence, for the applicant, submitted that the opponent had not demonstrated use of its marks, had not established that it had a reputation in its marks prior to the priority dates, and had not established that anyone knew of its marks.

I am neither satisfied that the opponent has publicly used its marks before the priority dates, nor that it has demonstrated that the marks had acquired a reputation before the priority dates.

While the office signage, the stationery and the Internet domain name suggest public use of the cusp mark, I do not think that they go far enough. The sign “Cusp/Noel Pennington Design” is equivocal. While the use of business cards and stationery bearing a trade mark can constitute trade mark use, the evidence presented in these proceedings does not demonstrate that they have actually been used. For example, blank letterhead is tendered, rather than a copy of correspondence using the letterhead. Similarly, the Internet domain name did not connect to a web site for the applicant’s researchers, nor does it now. The opponent did not tender a “print-out” of what the web site looked like had it existed before the priority date, nor explain how trade mark use might have occurred on the web site.

Even if the evidence were to establish use of the opponent’s marks, it does not establish a reputation in Australia by such trade marks before the priority date. I refer to my earlier comments relating to Ground 1.

This ground also fails.

Decision

I find that the opposition has failed on both of the grounds canvassed at the hearing. For completeness, and as I have no basis to be satisfied that any of the other grounds of opposition raised in the notice of opposition, but not argued at the hearing have been made out, I find each of those grounds has also failed.

Each of the trade mark applications - 824916, 824917 and 828875 - may proceed to registration after four weeks from the date of this decision, subject to the payment of the appropriate fees. If the Registrar has been served with notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

Both parties claimed their costs. I see no reason why costs should not follow the event. I direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh

Hearing Officer

Trade Marks Hearings

27 November 2002