Danielle Piat v JimmyRum Pty Ltd

[2019] ATMO 139

TRADE MARKS ACT 1995

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

ReOpposition by Danielle Piat to registration of trade mark application 1875654 (33) – JimmyRum - in the name of JimmyRum Pty Ltd

Delegate:                   Robert Wilson

Representation:        Opponent: Mark Metzeling of Macpherson & Kelly Lawyers (Brisbane) Pty Ltd

Applicant: Ben McEniery of Counsel, instructed by Julie Simpson of Pizzeys Patent and Trade Mark Attorneys

Decision:                   2019 ATMO 139

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 60 considered – no reputation established – trade mark may procced to registration

Background

1. This decision concerns an opposition brought by Danielle Piat (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark the subject of the application detailed below. The application is in the name of JimmyRum Pty Ltd (‘the Applicant’):

Application Number:	1875654
Filing Date:	26 September 2017
Goods:	Class 33: Rum		(‘the Applicant’s Goods’)
Trade Mark:	JimmyRum	(‘the Trade Mark’)

2. On 22 February 2018 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration, and a Statement of Grounds and Particulars (‘the SGP’) on 22 February 2018. The SGP nominated grounds of opposition under ss 41, 43, 44, 58A, 59, 60 and 187 of the Act. As is required by the Trade Mark Regulations 1995, the Registrar assessed the adequacy of the particulars of the nominated grounds and in the end all grounds other than s 60 were deleted from the SGP. The Applicant filed a Notice of Intention to Defend the opposition on 1 May 2018.

Evidence

3. The Opponent filed Evidence in Support of its opposition (‘EIS’) being a Declaration made on 26 July 2018 by James Gorman, the husband of the Opponent, with Annexures (‘the Gorman declaration’).

4. The Applicant filed Evidence in Answer (‘EIA’) being a Declaration made on 6 November 2018 by James Alexander McPherson, a Director of the Applicant, with Exhibits JA1 to JA17 (‘the McPherson declaration’).

5. The Opponent did not file Evidence in Reply.

6. 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 4 February 2019 the Applicant requested to be heard. 

7. I note at this point that for most of the proceedings the Opponent was represented by Mr Gorman who—as indicated in submissions from the Opponent which are discussed below—has no legal training and is neither a solicitor nor a trade mark attorney. The Opponent initially engaged an attorney firm in about late May 2019. It is apparent that the Opponent changed representation again shortly afterwards and a request to enter a different attorney firm, McPherson Kelly (Brisbane) Pty Ltd (‘McPherson Kelly’), as the Opponent’s address for services was received by IP Australia on 21 June 2019.

8. On 21 February 2019, after the deadline to file any Evidence in Reply had passed, a document entitled ‘Evidence in Answer’ was filed by the Opponent. The document was a Declaration made on 18 February 2019 by Mr Gorman. No cover letter, explanation why the document was filed, or request that it be considered in evidence accompanied the document. Consequently, this document does not form part of the evidence in this matter.

First hearing date

9. On 22 March 2019 a hearing notice was sent to the parties indicating that a hearing had been scheduled for Canberra on 30 May 2019. For various reasons, principally due to a request from both parties for a cooling-off period, the first hearing date was vacated. The cooling-off period was ended by the Applicant almost as soon as it was put in place.

Ultimate hearing date

1. On 4 June 2019 a second hearing notice was sent to the parties which indicated that the hearing would be held on 7 August 2019. The notice indicated that the Opponent’s summary of submissions for the hearing were due by 24 July 2019, with the Applicant’s being due by 31 July 2019.

Request to amend SGP

1. On 12 July 2019 the Opponent’s newly appointed legal representatives, McPherson Kelly, filed a request to amend the SGP to add certain grounds of opposition (‘the Refused Grounds’). For reasons provided to the parties at the time, that request was refused on 25 July 2019.

Opponent’s request to file further evidence

1. Also on 25 July 2019, the Opponent filed her written summary of submissions for the hearing. The submissions were prepared by Macpherson Kelly. Filed at the same time as the submissions was a further declaration made by Mr Gorman. In the words of Opponent’s representative:

   The further declaration of James Gorman relates to evidence the Opponent only became aware it was entitled to file upon engaging Macpherson Kelly. To this end I note:

   ·the Opponent was self-represented when it filed the Statement of Grounds and Particulars;

   ·the Opponent has no legal training and isn’t either a solicitor or trade mark attorney;

   ·it was only after had reviewed all documents related to this matter and advised the Opponent that it was entitle do file the evidence contained in the further declaration of James Gorman that the Opponent was aware it could do so.

   ·Additionally, as previously notified to the Registrar, the Opponent has formally added grounds of opposition to the Statement of Grounds and Particulars, in support of which the Opponent relies on the evidence contained in the further declaration of James Gorman.

   Accordingly, it wasn’t until today that the Opponent was able to file the further declaration.

2. It is apparent that the further evidence, and the submissions to support its inclusion, were prepared on the assumption that the SGP would be amended as earlier requested by the Opponent. As noted above, that request was refused. Following the principles regarding the filing of further evidence, which are discussed at length in cases such as Brilliance Publishing Inc v My Brilliance Pty Ltd,[1] I refuse also to consider the further evidence on the basis, amongst other things, that it relates to the additional grounds which were not added to the SGP and the evidence therefore lacks relevance.

   [1] [2018] ATMO 144.

The hearing

1. I heard the matter on 7 August 2019 as a delegate of the Registrar of Trade Marks. Mark Metzeling of McPherson Kelly appeared for the Opponent. Mr Metzeling was accompanied at the hearing by James Gorman. Ben McEniery of Counsel, instructed by Julie Simpson of Pizzeys Patent and Trade Mark Attorneys, appeared for the Applicant.

The Opponent

1. It is apparent from the evidence that the Opponent, along with her husband James Gorman, runs a cocktail bar in Port Douglas in far north Queensland. James Gorman is also known as Jimmy Rum. The cocktail bar is called Jimmy Rum’s Mixing Lounge. The cocktail bar opened in June 2017.

The Applicant

1. In his declaration, James McPherson refers to the Applicant as ‘my company’ and indicates that he has been a director of the Applicant since it was registered in August 2016. The McPherson declaration indicates that the Trade Mark was designed around mid-late 2016 and is ‘derived from the nickname “Jimmy” from “James” and combining it with the produced goods “rum”’.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above, the opposition is proceeding in respect only of the ground of opposition available under s 60 of the Act. The onus of proof in this opposition rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 26 September 2017, being the filing date of the application (‘the Relevant Date’).[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [3] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Discussion

1. The particulars in the SGP are lengthy and include what amounts to evidence along with the particulars. An abridged version of the particulars is provided below:

   1875654 has NOT used [the Trade Mark] and per their internet site won’t be selling rum for 2 years (if ever?) while I have used the mark since 22/6/17 when we opened doors …[5]

   As well, our cocktail bar, Jimmy Rum’s Mixing Lounge, is all over the internet, we have hired bartenders that are in the top 100 in country … we are extremely well known in the industry and we are highly unique and cutting edge, we are competing to be the best in the country, we are opening our first (of many) franchise(s) of Jimmy Rum’s in Brisbane … The ‘W’ Hotel in Brisbane has approached me to use my Jimmy Rum Brand for their Lobby and Pool Bar … every bartender I meet in the best bars in this country know of my bar and jump to attention, shake my hand, and greet me as Jimmy Rum, as I’ve taken on this name ala [sic] other great bar franchisers in the world such as Trader Vic and Don The Beachcomber, and as I always say, along with those 2 and Tommy Bahama and Mau Jim—I’m the fifth finger on that glove—Jimmy Rum!

   [5] This ellipsis appeared in the particulars. The remaining ellipses in the quoted passage are used by the writer in the normal manner.

2. 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.

3. To establish a ground of opposition under s 60 the Opponent must demonstrate that at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion. The particulars in the SGP do not specifically state which trade mark, or trade marks, upon which the Opponent is relying to support this ground. However, in her submissions in respect of s 60 the Opponent refers specifically, and only, to JIMMY RUM’S (‘the Opponent’s Trade Mark’) and I take this as the trade mark upon which the Opponent relies.

4. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[6] Her Honour quoted with approval the following words of Lockhart J from 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 …[7]

   [6] [2000] FCA 1335, [81].

   [7] [1992] FCA 159, [118].

5. 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.[8]

   [8] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).

6. The Gorman declaration consists largely of submissions and a relatively small amount of evidence. Much of the declaration refers to the activities of the Applicant and the likelihood of confusion should consumers be exposed to both the Trade Mark and the Opponent’s Trade Mark should those trade marks be used in connection with rum. The assessment of the likelihood of deception or confusion under s 60 is one that is only necessary when, and if, the Opponent establishes that the Opponent’s Trade Mark acquired a reputation in Australia. If the Opponent fails to establish that the trade mark had acquired a reputation in Australia by the Relevant Date this ground of opposition must fail.

7. The Gorman declaration refers variously to Jimmy Rum’s Mixing Lounge, ‘my Jimmy Rum Brand’, as well as to the Opponent’s Trade Mark. The declaration contains the following statements which are relevant to a consideration of reputation:

   ·I am a cocktail bar. My bar is named Jimmy Rum’s Mixing Lounge.

   ·[The cocktail bar is] an already well-established, highly acclaimed and well-known ‘Cocktail Lounge’ that I’m in the process of franchising nationally.

   ·I have (and continue) to establish more and more solidly in the marketplace every day (Please see National Press for Jimmy Rum’s Mixing Lounge within Attached Exhibits/Pages 16–21 and Please see our many Advertisements within Attached Exhibits/Pages 22–33).

   ·Jimmy Rum’s Mixing Lounge is all over the internet (Please see internet sites directly below).

   ·[W]e have hired bartenders that are in the top 100 in the country (Nick Harris was in the Top 100 Last year as well.

   ·We are already extremely well known in the industry as we are highly unique and cutting edge, we are already on a top 100 in the country list (Please see Attached Exhibit/Page 9).

   ·We are in the process of opening our first (of many) franchise(s) of Jimmy Rum’s in Brisbane and Cairns—and separate to that bar—The ‘W’ Hotel in Brisbane has approached me to use my Jimmy Rum Brand for their Lobby and Pool Bar (Jimmy Rum’s Dive Bar)… of which for our ongoing meetings I’ve put together a complete advertising campaign with Ogilvy and Mather that marries the classy Jimmy Rum Brand with The ‘W’ (Please see The W/Jimmy Rum’s Mixing Lounge Joint Venture Promotion within the Attached Exhibits/Pages 10–15).

   ·[E]very bartender I meet in the best bars in this country know of my bar and jump to attention, shake my hand, and greet me as Jimmy Rum, as I’ve taken on this name.

   ·I’ve been operating and becoming a major player … since June 2017. As well, I’ve become a recognized name in this industry and in 2 years I’ll be even more well-known.

   ·I have wholly established a very awesome (fictional, if not legendary) name for myself and my explosive bar and I have very extensive plans to become the next ‘Trader Vic’.

   ·[T]he buzz surrounding Jimmy Rum’s Mixing Lounge in the industry is really spreading very quickly all around the country.

   ·Port Douglas is a tourist mecca for Victorians.

8. As indicated above, it is necessary that the Opponent establish that the Opponent’s Trade Mark acquired a reputation by the Relevant Date. Any reputation that might have been acquired after the Relevant Date does not support this ground of opposition. Any expectation of future business expansion which might result in future acquisition of a reputation also does not support the very specific requirements of this ground of opposition.

9. Mr Gorman has indicated that the cocktail bar opened for business on 27 June 2017; this is a mere three months prior to the Relevant Date. For the Opponent’s Trade Mark to have acquired the necessary reputation in that three month period there would have to be extraordinary circumstances surrounding the launch and/or operation of the business. There would, for example, need to have been an enormous promotional campaign and/or extremely high levels of sales associated with the trade mark. The evidence in this matter falls well short of demonstrating anything like the necessary circumstances. Further, the Gorman declaration has significant shortcomings. Many of the claims are unsupported by evidence, and where there are annexures which have the potential to support the claims they are largely undated and without sufficient information about them to enable any firm conclusions to be drawn. There are no figures provided for promotional expenditure surrounding the launch of the business. There are also no sales figures provided.

10. The Opponent has failed to satisfy me that the Opponent’s Trade Mark (or any other relevant trade mark) acquired a reputation by the Relevant Date. Consequently, the Opponent has failed to establish her ground of opposition.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (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 application was opposed has been established.

   Note:For limitations see section 6.

2. The Opponent has failed to establish the ground of opposition she nominated in the SGP. Accordingly, application 1875654 may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

1. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish her ground of opposition, I award costs against the Opponent under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson
Hearing Officer
Trade Mark Oppositions and Hearings
19 September 2019