Dana Corporation v Unidrive Pty Limited

[1995] ATMO 21

TRADE MARKS ACT 1955

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

Re:Opposition by UNIDRIVE PTY LIMITED to registration of trade mark application numbers 358776, 358777 AND 358778 in the name of DANA CORPORATION for the mark SPICER

Background

Application numbers 358776, 358777 AND 358778 were lodged, on 7 April 1981, in the name of DANA CORPORATION (Dana).  The applications were for registration of the word mark SPICER for the respective statements of goods,

"Drivelines, clutches, transmissions, axles, driveshafts, power steering systems for land vehicles, constant velocity joints, yokes, transfer cases and power take-off devices; all the foregoing being goods in this class", in Class 12 (358776),

"Metal stampings, castings and forgings for drivelines, clutches, transmissions, axles, driveshafts, power steering systems, universal joints, castings and forgings for constant velocity joints and yokes; all the foregoing being goods in this class", in Class 6 (358777),

"Drivelines, clutches, transmissions, axles, driveshafts, power steering systems other than for land vehicles; universal joints, constant velocity joints, yokes and bearings; all the foregoing being goods in this class", in Class 7 (358778).

The marks were advertised as accepted in the Official Journal of 19 July 1990.

Notices of opposition to registration of the mark were lodged, on 18 January 1991, by UNIDRIVE PTY LIMITED (Unidrive).  The oppositions were based on multiple factors but the main grounds, as stated in the notices and as pursued at the hearing in the matter, may be summarised as relating to: s.28, that the mark's use by Dana would be likely to deceive or cause confusion, would be contrary to law and would not be entitled to protection in a court of justice; and to s.40, that Dana was not the proprietor of the trade mark and therefore not entitled to apply for registration.

The evidence

The service and lodgment of the Unidrive's and Dana's respective evidence in support, answer and reply in the matter was completed by 8 September 1993.  The evidence comprised:

Evidence in support

*Statutory declaration by Geoffrey Norcott dated 15 April 1991 and Exhibits A to D

*Statutory declaration by Christine Faye Lowe dated 17 January 1992 and Exhibits CFL1 and 2 (first Lowe declaration)

Evidence in answer

*Statutory declaration by Kate Johnston dated 6 August 1992 and Exhibits KJ-1 to 12

Evidence in reply:

*Statutory declaration by Christine Faye Lowe dated 2 September 1993 (second Lowe declaration)

*Statutory declaration by Gary Leslie Tempany dated 28 April 1993 and Exhibits A to N

In Mr Norcott's declaration forming part of the evidence in support, the declarant, the General Manager of Unidrive, described the history of Unidrive's mark HARDY SPICER, and the various business agreements and changes in business structures of Unidrive and predecessors in title involved with that mark.  He listed the value of goods and services sold under the mark and the annual amounts spent on advertising under it.  Attached as exhibits to his declaration were samples of advertisements showing the mark, stationery showing the mark and a letter from Dana to Hardy Spicer Limited.  In her declaration forming the balance of the Evidence in support, Ms Lowe, a solicitor from Davies Collison Cave, said that she had collected trade declarations in support of Unidrive's applications for registration of that mark.  Attached as exhibits to her declaration were copies of those declarations.

In her declaration forming the evidence in answer, Ms Johnston, a solicitor from Spruson & Ferguson, gave the history of Dana's use of the mark SPICER.  Attached as exhibits to her declaration were copies of declarations lodged by Dana in support of various applications for registration of its mark and an agreement regarding use of that mark between Dana and Sonnerdale Limited.

Ms Lowe, in her second declaration forming part of the evidence in reply, said that she had been advised that settlement negotiations between the parties had broken down and that she had arranged for searches to be made regarding the trading activities of Dana's distributors in Australia.  Mr Tempany, in his declaration completing the evidence in reply, gave further details of the history and business details associated with use of the mark HARDY SPICER.  Attached as exhibits to his declaration were brochures showing the history and background of use of that mark.

The matter was set down before me, as the Registrar's delegate, for hearing in Sydney on 28 February 1995.  At that hearing, Unidrive was represented by Mr Martin Pollock of Davies Collison Cave.  Appearing on behalf of Dana was Ms Kate Johnston of Spruson & Ferguson.

Submissions

Mr Pollock said that, with respect to the opposition as it was based on disputed proprietorship of the mark SPICER, common law property in a mark could be established by public use of it as a trade mark - Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402. It was a principle of law that the first user of a mark in this country was the proprietor - Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414 and Thunderbird Products Corp v Thunderbird Marine Products Pty Limited 131 CLR 592. He said that the evidence of use submitted showed that the mark HARDY SPICER had been used by Unidrive and its predecessors since the early 1950s. This use was substantial and on a wide variety of goods associated with motor vehicles.

Mr Pollock said that the relevant date in establishing proprietorship was the date of the application in question - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 - here 7 April 1981. He discussed the evidence lodged in answer by Dana, saying that it did nothing to show the fact of use of the mark at issue by that entity since 1955. Much of the evidence suggested an intention by Dana to use its mark, SPICER, but nothing conclusive regarding actual use had been presented. At best, Dana could only claim use from 1977. In contrast, the evidence supplied by Unidrive clearly showed concrete use of its own mark, HARDY SPICER, since 1954 to the present day, by the Repco Group and others in a clear chain of title to the present proprietor, Unidrive. He said that, despite any criticisms which might be made by Dana's attorney regarding the transfer of the mark's ownership, the Registrar was not competent to rule on company law and any claims regarding the devolvement of title to Unidrive should be accepted at face value.

He said that, to be successful in an opposition under s.40, the marks of the respective parties must be so identical as to be virtually the same - Kendall Company v Mulsyn Paint and Chemicals 109 CLR 300. Here, neither of the marks in question comprised invented words. Both contained the surname SPICER, with the added element of the word HARDY in the case of Unidrive's mark. He said that the present situation was analogous to the cases of George Ballantine & Son Ltd v Ballantyne Stewart & Co Ltd (1959) RPC 273 and R.K.H. Pty Ltd v Christian Dior (1985) 6 IPR 78, where surnames which formed an essential feature of marks, were important in establishing a case of deceptive similarity. He said that, on this basis, the marks of the present parties were virtually identical, were certainly deceptively similar, and should be refused on the grounds of the lack of proprietorship.

In relation to the s.28 leg of the opposition, Mr Pollock said that, given the reputation of the Unidrive's mark, HARDY SPICER, use of the mark SPICER by Dana would be likely to deceive or cause confusion to a substantial number of persons.  He said that the goods manufactured by Unidrive were wide ranging and overlapped those made by Dana.  An analogy could be drawn between the present case and that of R.K.H. Pty Ltd v Christian Dior, supra, for the marks DIOR and CHRISTIAN DIOR, and Tavefar Pty Ltd v Life Savers (A'asia) (1988)12 IPR 159 for the marks DOOPA and SUPER DOOPER. Mr Pollock said that he was aware that the Office now required that blameworthy conduct be shown, in addition to likely deception and confusion, for a party to be successful in an opposition under s.28. He said that Dana had made a conscious decision to enter the market with a similar mark. Such an action, having regard to the reputation of the HARDY SPICER mark owned by Unidrive, was not innocent use of Dana's mark and amounted to blameworthy conduct. This satisfied the requirements of para 28(d). In any case, it was open to the Registrar to exercise his discretion not to register the mark.

In reply, Ms Johnston said that Dana relied upon her own and Ms Griffin's declarations, and the various trade declarations lodged in answer to Unidrive's opposition.  She said that, in relation to the opposition based on the grounds of proprietorship, she agreed that the proprietor of a trade mark was the author of that mark provided that no other party had established a prior right to the mark in Australia - Shell Company (Australia) Limited v Rohm and Haas Co (1949) 78 CLR 601. This Unidrive had failed to do. She said that the evidence in support only showed use by Unidrive of its own mark, HARDY SPICER, since 1987. Unidrive had made claims regarding use of that mark by other entities said to be connected with it but had submitted no evidence to support this. A great number of catalogues showing the mark had been attached as exhibits to declarations forming part of Unidrive's evidence but these did not constitute evidence of sales of goods bearing the mark by that entity. In contrast, the present applications, for the mark SPICER, were made in 1981. The agreement annexed to her own declaration represented an intention, from as early as 1955, by Dana to use the mark, whilst Ms Griffin, in her declaration, had known of use by Dana since 1958 and certainly from 1977 as was shown from the enclosed sales figures from that year.

Ms Johnston disputed Mr Pollock's reliance upon the R.K.H. Pty Ltd v Christian Dior and George Ballantine & Son Ltd v Ballantyne Stewart & Co Ltd cases, both supra, where the tests in those cases were whether those marks were substantially identical.  She said that, here, the respective marks were not the same, or almost the same - essential for establishing a successful claim of proprietorship - Innes v Lincoln Motor Co (1921) 29 CLR 277. The addition of the word HARDY to the shared word SPICER in Unidrive's mark was an important factor in differentiating the marks. She said that, given all of the foregoing, it was obvious that Dana was the first user of the mark in Australia of the mark SPICER and the opposition based upon s.40 should be dismissed.

With respect to the opposition based upon s.28, Ms Johnston said the relevant date for considering Unidrive's reputation in its mark was 7 April 1981.  She said that the evidence did not show any reputation or sales by the opponent prior to that date under its own mark and that there was accordingly no possibility of deception or confusion stemming from the use of the present mark from that date.  In any case, the additional word, HARDY, in Unidrive's mark was sufficient to distinguish the two marks and so precluded any possibility of deception or confusion occurring.  She said that any claims of blameworthy conduct by Dana which stemmed from an alleged prior knowledge of Unidrive's mark were baseless and were not supported by any evidence.

Ms Johnston said further that, if I was to find that Unidrive was successful in either the s.40 or s.28 legs of its opposition then, on the grounds of honest concurrent use, it was open to me to exercise the Registrar's discretion in s.34(1) to permit registration of the current applications.  The elements which needed to be considered by the Registrar with respect to the application of the provisions of s.34(1) were laid out in Alex Pirie Ltd's App'n 50 RPC 147 and John Fitton & Co Ltd's App'n (1949) 66 RPC 110. These were, firstly, the degree of confusion between the marks. Here, the combination of the word HARDY to the word SPICER in opponent's mark makes confusion unlikely with the word SPICER, solus. Next, the instances of confusion needed to be considered. In the present case, no confusion had been shown, despite years of parallel use and fact that the trade declarants from both sides knew and identified the competing marks as belonging to the respective parties. The honesty of the concurrent use of the marks should also be considered. Ms Johnston said that, in the present case, there was no reason to doubt the honesty of Dana in its adoption of its mark. The extent of the use of the marks is also a consideration. In the present instance, Dana had used its mark since 1958, as was shown in its evidence, and it was readily recognised in the market place. Lastly, the relative inconvenience to the parties was a factor to be determined. She said that the competing marks here had co-existed for nearly 40 years and it would seem in the interests of both parties and also the public in allowing the present applications to proceed to registration.

Discussion

Section 40 - Proprietorship

The provisions of s.40, so far as is relevant here, are that:

A person who claims to be the proprietor of a trade mark may make application to the Registrar for registration of that trade mark in Part A or Part B of the Register

On that subject, McGarvie J said in the Settef case, supra:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd(No 2) 59 ALJR 77 at 83.
 ...

In considering who, within s.40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 at 625 and 627.

In other words, the first user of the mark in Australia (for relevant goods and prior to the date of application) becomes the proprietor at common law.  That proprietorship, however, is limited to "the same kind of thing", as per Holroyd J in Hick's trade mark (1897) 22 VLR 636. Any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation, in the minds of those concerned, of an impression that goods of a particular trader are being offered for sale in Australia. This has been affirmed in later cases such as in Seven Up Co v O.T. Ltd (1947) 75 CLR 203, where Williams J. said at 211,

But the position is different if at that date the mark has become identified with the goods of the foreign trader in Australia because those goods have been brought into Australia by the foreign trader himself or by some importer or in some other manner.

Mr Pollock has argued that the mark HARDY SPICER is in the same category as the BALLANTINE and DIOR marks, both supra, in that both it and the mark SPICER contain a common surname which would be called to mind by purchasers of similar products.  However, Unidrive's mark also contains another word, the surname HARDY, and I think that it is an equally memorable portion of the mark which cannot be ignored.  I am not concerned, in deciding the issue of proprietorship, with the question of whether the opponent's and applicant's marks are so alike as to lead to the deception or confusion of customers.  That question is relevant in relation ss.33 and 28, but not to s.40 which only applies when the marks are identical or so similar as to be virtually the same mark - Kendall Co v Mulsyn Paint and Chemicals, and Tavefar Pty Ltd v Life Savers (A'asia) Ltd, both supra.  In the consideration of the BALLANTINE and DIOR marks, the issues at hand were infringement and deceptive similarity, respectively.  I therefore cannot agree that the present situation, where it is alleged that two parties are claiming proprietorship of substantially the same mark, is one where there is room for the consideration of the former questions.  In the present case, the marks of the respective parties are clearly different.

For the foregoing reasons, I find that the opponent is not successful on this ground of its opposition.

Section 28 - Deception and confusion

The provisions of this section of the Act read as follows:

A mark -

(a) the use of which would be likely to deceive or cause confusion;
           (b) the use of which would be contrary to law;
           (c) which comprises or contains scandalous matter; or

(d) which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

The test to be applied under paragraph (a) of these provisions, on which the opponent partly relies, has been well established by cases such as Southern Cross, supra, where it was said:

Registration should be refused if it appears that there is a real risk that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case the two products come from the same source.

That risk must extend to a substantial number of people: Kendall Co v Muslyn Paint and Chemicals, supra.

Following the High Court decision in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd 18 IPR 385, the Moo case, the Registrar now follows the practice as laid out in the decision of Hearing Officer Homann in Titan Manufacturing Co v John Terrence Coyne 22 IPR 613 - that is, that all paras of s.28 should be read together. This means that, should I find that the marks are likely to deceive or cause confusion, then it will also be necessary to find that the mark would not be entitled to protection in a court of law.

In assessing the reputation of the opponent's mark in Australia, the relevant date is the date of lodgment of the opposed application - Southern Cross, supra.  I accept from the opponent's evidence that, at the relevant date, the opponent had an established reputation in this country for its mark, HARDY SPICER, for goods which were the same, or of the same description, as the present applications.  The declaration made by Mr Norcott is prima facie evidence of such use of that mark by Unidrive and its predecessors in title since 1954, and the transfer of that title.  I am not required, given the lack of contrary evidence, to go beyond this.  On the other hand, as at the date of lodgment of the present applications, Dana appears to have an equal claim to a reputation for its own mark, SPICER, since use was said to have commenced in 1958.  This can be inferred from Ms Griffin's declaration.  Use appears to have certainly taken place from 1977, the date from which sales figures under the mark have been given.  Thus, both parties' goods bearing the opposing marks appear to have been available for sale to Australian consumers for a great many years.

Mr Pollock has put forward an argument of potential deception and confusion occurring if the subject applications are registered.  It is true that the marks both contain the common element of the surname SPICER.  Thus, there may be some grounds for a claim that the marks are deceptively similar.  This is exacerbated when consideration is given to the fact that the added element HARDY, in Unidrive's mark, is not only a surname but could also be interpreted as meaning "something very durable".  However, this should be balanced against the very long side-by-side use which the marks have enjoyed in this country on the same goods.  If there had been any occurrences of deception and confusion stemming from their competing use during those years I am sure that evidence of these would have been presented by Unidrive to that effect.  However, none has and I think that the co-existence of the marks for several decades in the Australian market place for competing goods, with no apparent problems occurring, is an extremely compelling circumstance which goes towards negating any claims of potential deception or confusion.

In addition, I am of the opinion that the word HARDY would be more likely seen as a surname and its addition to the word SPICER in Unidrive's mark is a major factor in distinguishing it from Dana's mark, SPICER, alone.  I believe that it would not be usual for a person requesting HARDY SPICER goods to shorten the request to SPICER alone or, if presented with goods bearing the former mark, would make the incorrect assumption they had received those bearing the latter.  Therefore, I do not think that a reasonable person buying goods under the respective marks would be deceived or confused by their being for sale side by side.  As Kitto J said in the Southern Cross case, supra:

While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source.

For the foregoing reasons, I find that use of Dana's mark will not lead to deception or confusion.  I am therefore satisfied that the requirements of paragraph 28(a) have not been made out.

Given the above, I need not proceed further in relation to the s.28 objection.  However, for the record, I note that there is nothing before me to show that there has been any blameworthy conduct on the part of Dana nor any other circumstance which would disentitle the mark to protection in a court of justice.  I cannot agree with Mr Pollock that blameworthy conduct lies with Dana's adoption of the mark.  I find, therefore, the requirements of paragraph 28(d) have also not been made out.  The opponent's case in terms of s.28 must therefore fail.

Conclusion

I find that Unidrive has failed on all of the grounds relied upon in the notices of opposition.  I therefore dismiss the oppositions and, subject to any appeal from this decision, the applications for the mark should proceed to registration.

I can see no reason why costs should not follow the result and I accordingly award costs in the matter to Dana.

Ian Forno
Hearing Officer

10 May 1995