Darley Stud Management Company Limited v Kevin Francis Darley

[2009] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by Darley Stud Management Company Limited to registration of trade mark application 1096978(41, 44) - DARLEY - filed in the name of Kevin Francis Darley.

Delegate:	Ian Thompson
Representation:	Opponent: Tracy Berger of Spruson & Ferguson Applicant: Grant Adams of Fisher Adams & Kelly
Decision:	2009 ATMO 91 S52 Opposition – s44 – whether use of the applicant’s surname is use as a trade mark – evidence does not establish that the use of the applicant’s surname was use as a trade mark – sections 41 and 44 established. Application refused Costs awarded against applicant.

Background

1.In this matter Kevin Francis Darley (‘the applicant’) of Bruxner Highway, Tenterfield, NSW has applied to register a trade mark, current details of which appear below:

Application No:                 1096978
Priority Date:  1 Feb 2006

Goods:Class: 41 Animal training and racing services, including such services for thoroughbred horses

Class: 44 Animal breeding and grooming services, including such services for thoroughbred horses

Trade Mark:  DARLEY

(‘the opposed trade mark’)

2.The opposed trade mark was examined and then accepted under the provisions of sections 41(5) and 44(4) of the Trade Marks Act 1995 (‘the Act’).

3.Following acceptance, the application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 27 July 2006.

4.On 29 January 2007, after seeking and receiving an extension of time in which to do so, Darley Stud Management Company Limited (‘the opponent’) of Newmarket, England, filed Notice of Opposition to the registration of the opposed trade mark. The Notice is couched in broad terms and nominates several grounds of opposition under the Act.

5.As a delegate of the Registrar of Trade Marks, I heard the arguments of the parties at a hearing: those of the opponent were put to me by Tracy Berger of Spruson & Ferguson.  Those of the applicant were put by Grant Adams of Fisher Adams & Kelly.

Evidence

6.This matter is a relatively straightforward one but heavily reliant on the evidence of the parties – in particular the evidence of the applicant which I will come to in due course.  Initially, for the sake of convenience and because it was filed first and forms a part of the evidence of both parties, I will discuss the evidence of the applicant which was submitted to the examiner to secure acceptance of the application in terms of subsections 41(5) and 44(4).  The applicant deposed:

I am the owner of New South Wales Business Name Registration BN98224255 Darley Thoroughbred Syndications. [I note that the documentation of this business name registration is not exhibited to this declaration].

All thoroughbred horses throughout the world are descended from three stallions including “The Darley Arabian” imported from Aleppo (Saudi Arabia) [sic] to England in 1705 by John Brewster Darley Esq. of Aldby (England), my direct ancestor.

Annexed hereto as Exhibit KFD-1 is a copy of a circular chart of several generations of progeny of The Darley Arabian Stallion; annexed hereto as Exhibit KFD-2 is a copy of a print of The Darley Arabian from the original picture by John Wootton.

The Darley family introduced thoroughbred horses to Australia in the early 1800's.

My grandfather, who was a Chief Justice of the Supreme Court of New South Wales, owned racehorses by “Hyperion”; “Gainsborough” and “Stardust”.

I commenced breeding and training thoroughbred horses 52 years ago and have continued to do so. I have used the Darley name for all the services for which registration is being sought. At present, I have 47 brood mares.

Australian Trade Mark Registration 952147 (International Registration 799947), which has been cited against this application, is dated 10 March 2003, approximately 49 years after I commenced use of the Darley mark, as the successor to my ancestors in the Darley family.

7.I note now that the declarant does not expressly claim to have used the trade mark DARLEY on, or in relation to, services.  Rather the declarant more frequently states that he has used the ‘name’ or once that he has used the ‘mark’ DARLEY.  This point is a recurring theme in the evidence and one which shapes the outcome of these proceedings.

8.Next, I will discuss the evidence in support of the opposition which comprises a declaration by Dawn Logan who is a legal representative for the opponent.

9.Ms Logan avers:

[O]n the 19 June 2007, I conducted a Google® Internet search with a view to investigating a number of the statements made by the Applicant in his Statutory Declaration of 30 June 2006, submitted to the Trade Mark Office in support of application No. 1096978 (“the Internet Search”).

Now shown to me and marked Exhibit DL-2 is a hard copy selection of the relevant results of the Internet Search.

On reviewing the Internet Search results forming Exhibit DL-2 hereto, I found no reference to the name or trade mark DARLEY in relation to the breeding of thoroughbreds other than historical reference to the Darley family in England in the 19th Century. Additionally, I was unable to locate any reference to the Darley family name and/or the trade mark DARLEY in relation to the famous thoroughbred horses Hyperion, Gainsborough and Star Dust referred to in the Applicant's declaration of 30 June 2006.

Additionally, I was unable to locate any reference to the Applicant or the Applicant's company Darley Thoroughbred Syndications (“the Applicant's Company”) on the Thoroughbred Breeders Association (“the TBA”), which can be found at The TBA is the foremost industry association governing the breeding of thoroughbred horses in Australia and helps produce and monitor the Australian Stud Book, a reference list of the available thoroughbred stallions and stud farms in Australia. On reviewing the Australia Stud Book information available online, it was apparent to me that all references to the trade mark DARLEY and the name Darley was in association with the Opponent and its associated company Darley Australia Pty Ltd.

The information located by me as a result of the Proprietor Search and the Internet Search appears to confirm the findings of earlier investigations instructed by my Firm and conducted by Rumore & Associates Pty Ltd and/or its authorised agents (collectively referred to as “Rumore & Associates”).

On 29 March 2007, my Firm instructed Rumore & Associates to make enquiries in relation to the nature and extent of use of the DARLEY trade mark, by the Applicant.

The purpose of the investigation was to assess whether the Applicant is or had used its trade mark DARLEY on any or all of the services specified.

On 2 May 2007, my Firm received a written report from Rumore & Associates containing the results of the investigations into the Applicant's use (if any) of its DARLEY trade mark (“the Investigation Report”).

The Investigation Report disclosed that an Internet search had failed to reveal any direct evidence of use of the trade mark DARLEY by the Applicant. Reference is made to the British jockey Kevin Darley, which it is assumed is not the Applicant.

The Investigation Report also states that a review of current telephone directories in Australia found no listing for the Applicant, the Applicant's Company or the trade mark DARLEY in relation to the Applicant. A historical telephone records search dating back to 2003 also failed to reveal any such results.

The Investigation Report further states that a number of magazines available in Australia pertaining to horse racing, thoroughbred horses or horse breeding, including The Horse Magazine, Australian Performance Horse, Practical Punting and Horse Sales, were reviewed and found to contain no evidence of use of the DARLEY trade mark by the Applicant and no evidence to suggest that the Applicant was an active breeder, trainer or seller of thoroughbred horses or other horses in Australia.

As part of the investigation into the Applicant's use of the trade mark DARLEY, Rumore & Associates attended upon the Tenterfield Shire Council and Land Stock Agents with a view to determining the full address of the Applicant. The address was listed as “The Gains”, 1027, Sunnyside (the “Applicant's Property”).

On 24 April 2007, Rumore & Associates attended upon the Applicant's Property and the Investigation Report notes the absence of any relevant signage at the entrance of the property, other than “The Gains”. The Investigation Report states that there was no reference to the trade mark DARLEY. Additionally, from Rumore & Associates observation from the boundary line of the property, the Investigation Report states that there were no visible signs of stables or other facilities commonly found at a stud farm.

Now shown to me and marked Exhibit DL-3 are copies of photographs taken by Rumore & Associates from the boundary line of the Applicant's Property.

On 27 April 2007, the Investigation Report indicates that an agent of Rumore & Associates was able to speak to the Applicant. The Investigation Report describes the Applicant as a “man of some sixty years of age”. When asked specifically about his current nature of his business activities, the Investigation Report states that the Applicant responded with words to the effect “you know, a bit of this and a bit of that”.

The Investigation Report concludes that the investigation revealed no direct evidence to suggest that the Applicant was or is engaged in activities relating to the services specified under application No. 1096978 and that its observations have found that the Applicant's Property is not set-up for such activities. Rumore & Associates were unable to locate any evidence of use of the trade mark DARLEY or any evidence of advertising or promotional material showing use of the trade mark DARLEY in relation to the services of interest.

10.  The essential point to be derived from this declaration is that the applicant has been squarely put on notice that his use of the opposed trade mark is being questioned by the opponent and the declaration that he presented to the examiner has been strongly queried.  Clearly, this should influence his declaration in answer and prompt more affirmative evidence and objective corroboration of his use of the trade mark; sales figures, or business records showing the trade mark in use and so forth.

11.  The other declaration filed in support of the opposition is by Oliver Tait, General Manager of Darley Australia Pty Ltd, which is a related entity to the opponent.

12.  Mr Tait avers:

The Opponent was created in the early 1980s in the United Kingdom by Sheikh Mohammed bin Rashid al Maktoum of Dubai, United Arab Emirates. The initial operations were located at Dalham Hall Stud outside Newmarket Race Course in the UK and involved horse stud services and the breeding of thoroughbred horses.

The Opponent has since expanded and is home to 52 stallions in seven countries (England, United Arab Emirates, Ireland, France, United States, Australia and Japan) and was the leading owner of thoroughbred race horses in the United Kingdom every year from 1985 to

The Darley Trade Mark was first used in Australia on 27 July 2000 in relation to horse stud services and the breeding of thoroughbred horses. The Darley Trade Mark has been used continuously in Australia, in the same form, since that date. Now shown to me and attached hereto marked Exhibit OT-2, is a selection of the Opponent's brochures and catalogues provided to its Australian customers over the period 2002-2006, clearly showing use of the Darley Trade Mark.

My Company is one of the top three thoroughbred stud management companies in Australia and New Zealand. The Opponent will be standing at stud 22 stallions in 2007, with approximately 190 broodmares of its own and approximately 2400 client broodmares.

The Opponent has invested considerable time and resources into developing and protecting the Darley Trade Mark. The result is that the Darley Trade Mark has become a well known mark within the thoroughbred horse breeding and racing industry, in Australia and worldwide.

Now shown to me and attached hereto marked Exhibit OT-3, are copies of articles from the Australian national press and relevant Australian industry publications, showing use of the Darley Trade Mark in relation to the Opponent's horse stud and breeding services and horse racing.

Additionally, My Company has been the official sponsor of a number of prestigious horse racing events in Australia, including the Darley Guineas Day at the Golden Slipper Festival, in Rosehill Gardens. Such sponsorship has generated a substantial reputation under the Darley Trade Mark in relation to horse racing in Australia. Now shown to me and attached hereto marked Exhibit OT-4, are copies of promotional material relating to the Darley Guineas Day 2003.

I believe that due to the substantial use of the Opponent of the Darley Trade Marks in relation to horse stud services and in particular, the breeding of thoroughbred horses, the Opponent has acquired a significant reputation for the aforesaid services in Australia and that the Darley Trade Mark should be regarded as a well known mark within the horse breeding and horse racing industry.

Now shown to me and attached hereto marked Exhibit OT-9 are printouts of various prestigious United States horse racing events which are sponsored by the Opponent and show use of the Darley Trade Mark under sponsorship.

Now shown to me and attached hereto marked Exhibit OT-10 are recordings, photographs, press releases, magazines and promotional material for several highly prestigious horse racing events in Japan, where the Opponent was an official sponsor and which clearly shows use of the Darley Trade Mark under sponsorship.

Now shown to me and attached hereto marked Confidential Exhibit OT-11 is a document showing the approximate annual value of the services provided internationally under the Darley Trade Mark during the period 2001-2007.

13.  In reply to the evidence in support, the applicant has served and filed declarations by David Stewart Rathie, Kevin Roy Langby, Mel Schumacher, James Grant Adams, Anthony Arthur King and Kevin Francis Darley.

14.  Mr Rathie swears that:

I am a former Rugby Union international and Sheffield Shield cricketer. I am also a director on the AgForce Cattle Board and I hold the position of Vice President of the Beef Improvement Association of Australia.

I retired from the legal profession in 1997 having practised as a partner for some 25 years with the legal firms Henderson Trout ( now Clayton Utz ), Blake Dawson Waldron and Minter Ellison.

Upon retiring from the legal profession I acquired a cattle and horse breeding property located approximately 15kms to the east of Stanthorpe in the state of Queensland.

My property is situated a 35 minute drive from the property owned by Kevin Darley near Tenterfield in the state of New South Wales.

I have known Kevin for some 12 years.

I am aware of Kevin's long involvement in the thoroughbred industry with particular reference to the breeding of racehorses.

I am also aware that his forebears in England imported an Arab stallion in 1703 from Syria which became the foundation sire of the thoroughbred breed. Furthermore, Kevin has retained the family name “DARLEY” in the form of a registered trademark under which he conducts his thoroughbred business. [1]

I own a stockhorse stud and have used thoroughbred genetics extensively in my breeding program. Given Kevin's depth of knowledge in this field, I have and continue to consult with him as regards the most suitable genetics for my program.

On 27 April 2007, I was passing through Tenterfield on my way to Stanthorpe and paid Kevin a visit without notice to see his mares.

On opening the front gate, I was confronted by two mares with breeding collars around their necks. Those mares - believing that feeding time had arrived - approached in very close proximity and I was able to read the stud names and the dates upon which the birthing process was anticipated to begin. This information was recorded on tags attached to the breeding collars.

These mares were in the lane which runs from the front gate adjacent to the Bruxner Highway to the house. There were no horses in the front paddock but in an adjoining paddock, I observed some 30 -40 mares.

On the occasion of this visit Kevin was not at home.

0n 17 June 2008, I visited Kevin's property to see the progeny of the previous breeding season. I observed approximately 20 weanlings in the front paddock and numerous mares in adjoining paddocks.

I cite these two instances with particularity which should not be considered in isolation. As a consequence of the mutual interest in horses, Kevin and I have remained in constant contact over the past years either by telephone, meeting in Stanthorpe or visiting one another's properties. Inevitably, the topic of conversation turns to that of horse breeding. During my other visits to Kevin's property, I have witnessed a thoroughbred breeding program in operation.

[1] The applicant does not have a registration of the trade mark DARLEY; I believe it is possible that the declarant refers to this application to register a trade mark.

15.  I accept that the above declaration establishes that the applicant breeds horses – or has breeding horses on his property.  Except for the erroneous reference to a registered trade mark, there is no mention of use of a trade mark either at the property or in the applicant’s business dealings.

16.  Mr Langby attests that he has known the applicant since their school days and Mr Darley has had, and still has, thoroughbred horses as an owner and trainer.  Mr Langby states that Mr Darley’s name is significant “in racing and breeding of Darley” [sic].  Mr Langby states that he was a leading jockey in Sydney for a number of years and was stable jockey for the late TJ Smith.

17.  Mr Schumacher avers:

I have been involved as a jockey at the highest level in thoroughbred racing around the world all my life.

Mr Kevin Darley has been well known to me for over 40 years as an active owner and breeder of thoroughbreds, continuing a family history stretching back hundreds of years.

In my opinion Kevin would be well known to many people in the industry since his early days in Orange NSW to today where he now operates from his property at Tenterfield NSW.

I have ridden many winners bred, owned and prepared by Kevin over the years and been a guest at his home on more than one occasion.

I still think of Kevin when I see the name Darley advertised around the industry, not the conglomerate that moved in from overseas a few years ago, buying up smaller local outfits and even the Ingham's business recently.

I know his son Tim has also been involved in the “family business” as well.

Kevin is “Old School” and from my experience works by personal contact and being upfront and honest. He has said “Darley is my name and my name is my brand”. I reckon it's stamped on his forehead.

I know that Kevin is or was friends with the greatest names in the business like Tommy Smith, Billy Cook, George Moore and many others.

I know Kevin to be a careful breeder, choosing mares and covers with care, as I can't see him doing anything to damage the name that goes back to one of the very first thoroughbreds in the Darley Arabian.

I well remember coming back from overseas and at my first ride a trainer said to me that Kevin had a runner the next Saturday at the Gold Coast. I called Kevin, booked that ride and won for him by 7 lengths. I remember it was one of his colts by Kaoru Star.

18.  There is no mention of the use of the word DARLEY as a trade mark in the above declaration, although Mr Schumacher does refer to ‘the name’.

19.  The declaration by Mr Adams brings the declaration of Mr Darley submitted to the examiner into evidence in these proceedings.

20.  The declaration of Mr King attests to his knowledge of the applicant for fifty years and to the applicant’s involvement in racing.  Mr King is a former CEO of the Australian Jockey Club and Secretary of the Western District Racing Association. 

21.  I will quote Mr Darley’s evidence in answer at length as it both illustrates his concerns and the underlying difficulty of his case.  Mr Darley says:

I am the owner of New South Wales Business Name Registration BN98224255 Darley Thoroughbred Syndications.[2]

[2] I note that, according to the NSW Business Names Register, this business name was registered by the applicant on 15 June 2006.

Furthermore, I was a Co-Applicant, with my son, Timothy F. Darley, in respect of Trade Mark Application 832039 for DARLEY in Class 41, and further reference will be made that Application 832039 hereinafter in this Declaration.

All thoroughbred horses throughout the world are descended from three stallions, including “The Darley Arabian” imported from Aleppo (Syria) to England in 1705 by John Brewster Darley, Esq. of Aldby (England), my direct ancestor.

My direct ancestors in the Darley family introduced thoroughbred horses to Australia in the early 1800's.

My grandfather, who was a former Chief Justice of the Supreme Court of New South Wales, owned racehorses descended from “Hyperion”, “Gainsborough” and “Stardust”.

I commenced breeding and racing thoroughbred horses 54 years ago (ie., in 1954) and I have continued to do so, without break.

Since 1954, I have used the DARLEY name in respect of all of the services for which registration of the DARLEY Trade Mark is being sought by myself in Application 1096978.

At present, I have approximately 40 breeding and racing thoroughbred horses worth approximately $5 million.

For many years, and certainly before 2000, I have raced thoroughbred horses, descended from Star Kingdom, and many other well known stallions in Australia; and I still continue to do so.

Australian Trade Mark Registration 952147 (International Registration 799947), owned by the Opponent, is dated 10 March 2003, approximately 49 years after I commenced use of the DARLEY Trade Mark, as the successor to my ancestors in the Darley family.

In April 2000, I was living at Karana Downs, Queensland (4306), Australia and operating in partnership with my son, Timothy F. Darley, using the DARLEY Trade Mark for inter alia the breeding, training and racing of thoroughbred horses.

On 7 April 2000, my son, Timothy and I jointly filed Trade Mark Application 832039 for the DARLEY Trade Mark, in Class 41, for: “Education, providing of training, entertainment, sporting and cultural activities.” An extract from the ATMOSS Database in respect of Application 832039 is annexed hereto as Exhibit KFD-3.

Application 832039 was accepted on 20 November 2000 and the Acceptance was advertised in the Australian Official Journal of Trade Marks (A.O.J.T.M.) on 7 December 2000. The Application was advertised lapsed in the A.O.J.T.M. on 12 July 2001.

Application 832039 lapsed as the official registration fee was not paid by the official deadline of 7 June 2001.

The “Trade Mark History” for Application 832039 alleges that a “registration fee reminder notice” was sent to myself and my son, at our address-for-service (PO Box 858, Kenmore, 4069, QLD, Australia) on 17 May 2001. The “registration fee reminder notice” was never received by myself or my son; and in conversations with officers of IP Australia, they confirm that they cannot prove that the “registration fee reminder notice” was actually sent to our address-for-service.[3]

[3] The onus is on trade mark applicants to ‘police’ or diarize deadlines associated with their applications.  Whereas the Registrar has a statutory obligation to send a renewal notice to registrants, there is no such obligation to send reminder notices to applicants.  Obviously, it is impossible for the Registrar to ensure that every item of mail dispatched from the Trade Marks Office reaches its destination.

Application 832039 lapsed because neither my son or I were aware of the 7 June 2001 deadline to pay the official registration fee to enable Application 832039 to proceed to registration; and if Application 832039 had proceeded to registration (with an effective date of 17 April 2000), it would have been citable against Australian Trade Mark Application 952147 (International Registration 799947) for the trade mark DARLEY filed by the Opponents, on 10 March 2003, claiming an earliest priority date of 10 February 2003 (based on UK Trade Mark Application 2324234).

My son, Timothy, and I have had correspondence with IP Australia in relation to Trade Mark Application 832039; and from what I recall in diary notes, they told me that we had the DARLEY trade mark; and we continued to carry on our thoroughbred breeding business using the DARLEY trade mark, not being aware that Trade Mark Application 832039 had lapsed.

In 2002, my son Timothy withdrew from our partnership and I continued to use the DARLEY trade mark in respect of the services for which registration is being sought in Application 1096978.

I believe Darley Australia Pty Ltd, which I understand is associated with the Opponent, started operations in Australia in 2003 by buying out the Kelvinside Stud in New South Wales. I assumed that they would have had to have some sort of foreign investment review board (FIRB) or IP Australia permission to use the DARLEY trade mark in respect of “horse stud services breeding of thoroughbred horses”.

I was not aware that the Opponent had sought registration of the DARLEY trade mark in Australia, under Application 952147, as an “International Registration designating Australia” (IRDA) based on International Registration 799947 filed 10 March 2003. An extract from the ATMOSS Database with respect to Trade Mark 952147 is annexed as Exhibit KFD-4.

Trade Mark Application 952147 was advertised as Accepted in the A.O.J.T.M. on 3 March 2005; setting a deadline for third party opposition of 3 June 2005. Trade Mark Registration 952147 was sealed on 14 June 2005 and the registration was advertised in the A.O.J.T.M. on 30 June 2005.

As I was not aware of the existence of Trade Mark Application 952147 for the trade mark DARLEY, in the name of the Opponent, I had no opportunity to file opposition thereto within the period 3 March 2005 to 3 June 2005. The registration of the DARLEY trade mark by the Opponent, the registration being sealed in June 2005, directly contradicted advice I had been given previously by IP Australia; and in 2000, I had been advised by an officer of IP Australia that “Darley is your name so keep using it as a trade mark in your business”.

I became concerned about the operations of Darley Australia, and the use of the DARLEY trade mark by them, when they continued to grow and advertised aggressively. It now seems that the worldwide interests of H. H. Sheikh Maktoum now use the name “DARLEY” everywhere; when he used to race everywhere in the world under his own name and under the “GODOLPHIN” name. Godolphin Barb was a minor sire in the history of the Arabian thoroughbreds. From 1996 to 2005, the proportion of the winners of the 3300 Group races around the world by descendents from the three (3) Arabian stallions was approximately as follows:

i)         DARLEY – 96.6%

ii)        BYERLY TURK – 3.1%;

iii)GODOLPHIN BARB – 0.3%.

This would suggest, at least, that H. H. Sheik Maktoum and his racing interests, including the Opponent, wished to align their activities with the much more successful DARLEY name.

I understand that H. H. Sheikh Maktoum, who owns Darley Stud Management Company Limited, the Opponent; and thereby Darley Australia Pty Ltd; had the name “Al Maktoum Holdings Pty Ltd” (A.C.N. 092 705 630) registered in Australia in 2000-2002.

As a result of my concern about the use of the DARLEY name by Darley Australia Pty Ltd; and of the effect on my business and the use of my name in the industry (as my family are the only true Darleys in the industry in Australia), I instructed Fisher Adams Kelly, Patent and Trade Mark Attorneys, Brisbane, to seek registration of the trade mark DARLEY, in my name, in respect of: “Animal breeding, grooming, training and racing services, including such services for thoroughbred horses”; and Application 1096978 was filed on 1 February 2006, and proceeded to acceptance following the filing of evidence of my reputation in the DARLEY trade mark in Australia, and the division of the services for which registration was sought from Class 44 to Classes 41 and 44. The filing of Application 1096978 also followed my becoming aware of the lapsing of Trade Mark Application 832039 in approximately November 2005 and that application could not be restored.

Since the filing of Trade Mark Application 1096978, I have continued to become more concerned about the effect on my business by the widespread use of the DARLEY name by Darley Australia Pty Ltd when it was announced that H. H. Sheikh Maktoum was buying out the Ingham's racing empire for over $800,000,000. As H. H. Sheikh Maktoum is the ruler of Dubai, I made submissions to the Australian Competition and Consumer Commission (A.C.C.C.) and the F.I.R.B. about the activities of Darley Australia Pty Ltd and the use of the Darley name, and about the thoroughbred racing industry in general.

Annexed hereto as Exhibit KFD-5 is a copy of letter dated 1 April 2008 from Malcolm Lomasney, Assistant Director, Trade Mark Administration (IP Australia), in which it is stated: “It would appear from what you told me that you may already have common law rights in the mark, but I am not able to ascertain as to what extent.” - “the mark” being referred to being the DARLEY Trade Mark.

Annexed hereto as Exhibit KFD-7 are a series of photographs of my property (taken behind my residence) showing paddocks, yards and associated facilities, with a number of my horses included therein, together with my signage in use. By deliberate choice, the location of the signage is not particularly visible from the road so as to deter onlookers and “sticky-beaks”. Over the years, I have used variations of the sign illustrated in Exhibit KFD-7 as follows:

a)        a sign with the word “DARLEY” painted on timber at “Inglewood”, Orange, New South Wales from 1956 to 1976;

b)        similar signs with “DARLEY” painted on a blue background at both Caboolture and Mount Mee in Queensland from 1976 to 1993;

c)        a painted sign with the word “DARLEY” at Western Avenue, Montville, Queensland from 1997 to 2001;

d)        a sign similar to that shown in Exhibit KFD-7 at Karana Downs, Queensland; and

e) the sign illustrated in Exhibit KFD-7 at my current Tenterfield, New South Wales address located adjacent the horse yards and sheds from 1999 to the present.

22.  The balance of Mr Darley’s declaration is a discussion of Ms Logan’s and Mr Tait’s evidence and a review of the balance of the evidence in answer served and filed on the applicant’s behalf.  That part of Mr Darley’s discussion is not strictly relevant to the outcome of this matter, although I do, of course give it due weight in my considerations.  I have given all of the evidence my earnest attention and have formed my own views on what it shows.

Grounds

23. The grounds pursued at the hearing included grounds under sections 41 and 44 of the Act under which it is convenient for me to decide this matter.

24. Both of the subsections of the Act (41(5) and 44(4)) under which the application was accepted look to the provision of evidence of use of a trade mark in order that those subsections be applied. The same is true of provisions under subsection 44(3) relating to honest concurrent user of the trade marks.

25. I note (in terms of section 41(3)) that DARLEY is the name of a town in Victoria and thus the trade mark lacks inherent capacity to distinguish the applicant’s services. Accordingly, grounds exist in terms of section 41 of the Act for the rejection or refusal of the application. This appears to be accepted by the applicant who has submitted evidence which is said to address the provisions of section 41.

26. Under section 44 of the Act, the opposed trade mark DARLEY is substantially identical to that registered under 952147 by the applicant. The services registered under 952147 (‘Horse stud services, breeding of thoroughbred horses’) are closely related services to those on the opposed application. For the sake of completeness, I note that that registration on which the opponent relies has an earlier priority date that that of the opposed trade mark.

27. Thus grounds exist in terms of section 44 for the rejection or refusal of the application.

28.  This much does not seem to be in dispute by either party.

29.  It is the application of the provisions of subsections 41(4) and 44(4) or, potentially, 44(3) which are here in contention.  The applicant who states that the provisions should be applied and the opponent who argues that they should not.

30.  In these proceedings, the onus is on the opponent to satisfy the Registrar that a ground of opposition has been established on the balance of probabilities: Registrar of Trade Marks v. Woolworths Ltd (1999) 45 IPR 411; Lomas v. Winton Shire Council (2004) FCAFC 413; Torpedoes Sportswear Pty Ltd v. Thorpedo Enterprises Pty Ltd (2003) FCA 91.

31. However, once grounds are established in terms of section 41 and 44, the onus transfers to the applicant to satisfy me that the provisions of subsections 44(3) or 44(4) and 41(5) should be applied.

Comment

32. The scheme of the Act is the registration of trade mark ownership – not the acquisition of ownership by registration: PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602 at paragraph 78. Trade marks which are unused are readily removed from the register and those for which an applicant cannot evidence an intention to use (or use in terms of sections 41(5) or 44(4) might be successfully opposed.

33. When the Act is viewed in this matter, many of the applicant’s concerns appear to me to be unfounded.

The statutory provisions

34. Subsection 41(5) of the Act provides:

(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)the Registrar is to consider whether, because of the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

Note 1:For goods of a person and services of a person see section 6.

Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

35. Subsection 44(4) of the Act provides:

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:For predecessor in title see section 6.

Note 3:For priority date see section 12.

36.  As I have discussed, the onus is on the applicant to satisfy me that the provisions of the above subsections may be applied.

37. The Act also defines a trade mark within section 17:

17What is a trade mark?

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

Note:For sign see section 6.

1. The Act also relevantly defines:

   7Use of trade mark

   (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

   Note:For prescribed court see section 190.

   (2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

   (3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

   (4)In this Act:

   use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).

   (5)In this Act:

   use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

   9Definition of applied to and applied in relation to

   (1)For the purposes of this Act:

   (a)a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and

   (b)a trade mark is taken to be applied in relation to goods or services:

   (i)if it is applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or

   (ii)if it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and

   (c)a trade mark is taken also to be applied in relation to goods or services if it is used:

   (i)on a signboard or in an advertisement (including a televised advertisement); or

   (ii)in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;

   and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.

   (2)In subparagraph (paragraph (1)(b)(i):

   covering includes packaging, frame, wrapper, container, stopper, lid or cap.

   label includes a band or ticket.

Use as a trade mark

39.  Trade mark use is not just any use of a word, such as a surname or a business name.  Trade mark use must be public use for the purpose of distinguishing one trader’s goods or services from the goods or services of other traders.  In Moorgate Tobacco Co Ltd v Philip Morris Ltd [1984] HCA 73; (1984) 156 CLR 414 at 432 (‘Moorgate’), Deane J said:

‘The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of “proprietor” of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person.’

40.  And, as subsection 7(5) shows, the use of the trade mark must be physical or material – with some concrete or objective existence in relation to the services.

41.  The opponent adverts to signage on his property which is not readily visible to the public and states that this is use of the word DARLEY as a trade mark.  I have doubts whether a sign which is not on display to the relevant public could be use of a trade mark.  In any event, without more, this usage of the name DARLEY appears to me to be very similar to the usage of the expression ‘ON THE RUN’ by Shahin Enterprises Pty Ltd (‘Shahin’) in Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278. In that case, Shahin had placed a sandwich board, or A-frame sign, bearing the words ON THE RUN COMING SOON on a footpath outside their business and claimed this was use of a trade mark. Lander J said:

Subjective intention must be accompanied by some evidence of objective proof of that intent.[4] In Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149, Drummond J said at 155, speaking of dicta of Deane J in Moorgate:

[4] The principle that there be provision of objective proof of intent to use also applies to past use.  Past use is established where there is objective proof of that use.

‘Deane J did not say that a subjective intention of the owner of the mark to use the mark in trade at some time in the future was, without more, sufficient to show use of a mark. What he said was that such an intention, if accompanied by objective proofs of that intention in the form of evidence of action by the mark owner to commit goods bearing the mark to actual trade in Australia, would suffice to show use of the mark here at the time in question, though no marked goods had yet been offered for sale in this country.

McGarvie J understood Deane J’s dictum as being to this effect in Settef. One issue there was whether an Italian company, Settef, had used its “Riv-Oland” word mark in Australia before 1978 so as to become the proprietor of the mark here and thus entitled to the registration of the mark which it obtained in 1978. McGarvie J said at 417–18:

I consider that it follows from the authorities that a mark is used as a trade mark only if it is used with a view to facilitating or promoting the operation of a trading channel which in a business sense had already been opened to Australia. The mark must be used for the purpose of trade ... The forwarding of samples and brochures [in 1967] is not sufficient to indicate that Settef was ready and willing to fulfil such orders as it received from Australia. The purpose of these items may well have been to ascertain whether there was a market in Australia sufficient for it to be worthwhile for Settef to export here. Use of the mark in such preliminary activities would not be a use in the course of trade: Moorgate Tobacco Co Ltd v Philip Morris Ltd [1984] HCA 73; (1984) 156 CLR 414 at 432–3; 56 ALR 193; 3 IPR 545 at 556.’

Drummond J’s explanation is consistent with the passage which I have cited above. A mere claim of intention to use a mark could never be enough. It would mean an intention by itself could give rise to personal property: s 21. In Moorgate and Setteff SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 (the authority to which Drummond J referred), there was evidence that the mark had been applied to the goods. There is no such evidence in this case.

The applicant contended that the flyer which was handed to customers in early June 1999 was evidence of the public use of the mark. It also said that the A-frame which had the words ‘On the Run Coming Soon’ was also evidence of the public use of the mark. I reject that contention. In my opinion, the flyer and the A-frame are both evidence of an intention of the applicant to conduct a business under the name of ‘On the Run’ in the future. That is consistent with the application to register the business names at that time. There is no evidence that there was ever any intention to use that ‘sign’ to distinguish goods or services dealt with or provided by the applicant in the course of trade for goods or services dealt with or provided by any other person. The other dealings with the marketing firm, the shopfitters, the builder and the graphic designer are not evidence of the public use of a mark.

The applicant has established that it intended to use the title ‘On the Run Convenience Store’ in its various stores. The applicant has established, in my opinion, an intention to conduct a business under the name ‘On the Run’ or ‘On the Run Convenience Store’. That intention has been established by the registration of the business names both in South Australia and in New South Wales. It has not, however, established any intention it intended to deal with or provide goods using the ‘On the Run’ mark. There is a clear distinction, in my opinion, between conducting a business under a particular name and using a mark in respect of goods or services. The intention which the applicant needed to establish was an intention to use a mark to distinguish goods or services in the course of the applicant’s trade from goods or services provided by any other person. Because it has established that it intended to use the name to brand its businesses, that does not mean, however, it has established that it has used a mark or a sign to distinguish goods or services in the course of trade.

The applicant contended that it had used a sign in the course of its trade and therefore it had used a mark. I reject that argument. I think the applicant has used a sign to brand its business and has proved, as I have said, that it was its intention for the future. But that is not what is envisaged in s 17 when that section speaks of using the sign in the course of trade. Section 17 is concerned with a sign that is used in the course of trade for a specific purpose. The purpose that must be established is to distinguish the applicant’s goods or services from any other traders, goods or services.

There is no proof that the sign has been used or intended to be used to distinguish goods or services provided by the applicant in the course of trade from goods or services provided by any other. Even if it might be said that the use was in the course of trade that does not establish that the description ‘On the Run’ or ‘On the Run Convenience Store’ is a mark. That is not enough by itself.

In The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1961] HCA 75; (1963) 109 CLR 407 at 426, Taylor J said:

‘I have had the advantage of considering the reasons prepared by Kitto J and I agree that the appeal must be allowed. In particular, I agree that in order for the respondent to succeed in the suit it was necessary that it should appear that the use by the appellant of the animated figure or device which it employed was used by it as a trade mark. It was not, in my view, sufficient merely to show that, in the language of s 62, it was used “in the course of trade”.’

It will only be a mark if the intention is to use the mark to distinguish goods or services dealt with or provided by the applicant from those dealt with or provided by any other person. There was never any intention to brand any goods with the mark.

42.  The applicant has not supplied any of the usual proofs of the use of the name DARLEY as a trade mark.  This is despite Ms Logon’s declaration which I quote at length, above, which obviously calls into question the applicant’s use of the word DARLEY as a trade mark.  Such proofs in cases such as these are examples of the applicant’s uses of the word as a trade mark in the course of trade – on stationery, invoices, receipts, brochures, promotional materials and so forth.  Such proofs where past use is looked to by a party to establish concurrent or prior continuous use or capacity to distinguish are normally accompanied by sales or turnover figures which demonstrate the quantum of sales under the trade mark. 

43. The Act mentions as examples of use, the trade mark being on a signboard or in an advertisement (including a televised advertisement); or in an invoice, catalogue, business letter, business paper, price list or other commercial document. It is implicit in this list that the trade mark is publicly promulgated via these means by the applicant, to customers, in relation to the goods or services which are being supplied.

44.  Moreover, as seen in Shahin Enterprises, above, registration of a business name is not evidence of use of (or intent to use) a trade mark.  In this case, even if it were evidence of such use (which it is not), the business name Darley Thoroughbred Syndications was registered two weeks before the first statutory declaration of Mr Darley was sent to the examiner.  Even if a business name registration were evidence of use, this business name registration (which occurred on 15 June 2006) does not corroborate use of the name DARLEY before the date of the opponent’s registration: 10 March 2003.

45.  The applicant’s supporting declarations in its evidence in answer all attest to the involvement of the applicant in the thoroughbred breeding industry for a considerable time.  I accept that the evidence shows that Mr Kevin Darley is comparatively well-known in that industry.  However, the supporting declarations do not attest to any use of the trade mark DARLEY by the applicant – rather, there is a uniform acknowledgement that Mr Darley’s ‘name’ is very well-known.

46.  Similarly, Mr Darley frequently refers to the use of his name, rather than a trade mark, in his declarations, “I have used the DARLEY name for all services for which registration is sought.”  “I believe that I have established a valuable reputation in the DARLEY name in respect of the services for which registration is sought.”  “… 49 years after I commenced use of the DARLEY name …”  “Since 1954, I have used the DARLEY name in respect of all of the services for which registration is being sought …”

47. As previously discussed, the onus is on the applicant in terms of subsection 41(5) and 44(4) to establish, on the balance of probabilities, that he has used the trade mark DARLEY in relation to the services in respect of which he seeks registration. I am not satisfied that there is objective evidence before me establishing the use of the word DARLEY as a trade mark by the applicant which meets the requirements of the Act such that the provisions of subsections 41(5) or 44(4) might be applied.

Honest Concurrent Use

48. I also note that it logically follows that the evidence before me does not establish the criteria for registration of the opposed trade mark under the provisions of subsection 44(3). In McCormick & Company Inc v McCormick [2000] FCA 1335, Kenny J said at paragraph 70:

Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:

(1) the honesty of the concurrent use;

(2) the extent of the use in terms of time, geographic area and volume of sales;

(3) the degree of confusion likely to ensue between the marks in question;

(4) whether any instances of confusion have been proved; and

(5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.

See In Re Alex Pirie & Sons Ltd's Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd's Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd's Application [1957] RPC 369 at 379.

49. It is, of course necessary that I be satisfied that the use said to go to establish the criteria under subsection 44(3) of the Act be use of a trade mark. As previously discussed, I am not, on balance, satisfied the evidence establishes this.

Conclusion

50. It follows that I am not satisfied, on the evidence before me, that the requirements of subsection 41(5), 44(3) or 44(4) have been met by the applicant.

51. I therefore find that the opponent has established its opposition in terms of section 41 and 44 of the Act.

Decision

52. Section 55 of the Act provides:

55Decision

(1)Unless the proceedings are discontinued or dismissed, 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)Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.

Note:For examine and this Act see section 6.

53.  I refuse to register application 1096978.

Costs

54.  I award costs against the applicant at the official scale set out in the regulations

Iain Thompson
Hearing Officer
Trade Marks Hearings
17 November 2009