David Imerglik v Wintex Knitting Mills Pty Ltd

[2002] ATMO 95

TRADE MARKS ACT 1995

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

Re:Opposition by David Imerglik to registration of trade mark applications 858024(25), 858027(25), 858029(25)- BORN TO BE WILD MELBOURNE AND DEVICE - in the name of Wintex Knitting Mills Pty Ltd.

Background

On 22 November 2000 Wintex Knitting Mills Pty Ltd ('the applicant') filed trade mark applications 858024, 858027 and 858029 each in respect of Men, ladies and children clothing such as T-shirt sweat-shirt etc in class 25.

The applications were duly examined under the provisions of the Trade Marks Act 1995 ('the Act').  There were no substantive grounds for rejection but the examiner suggested to the applicant that each specification of goods be amended to a more precise wording.   The applicant agreed to amend the specifications as suggested, and the applications subsequently proceeded to acceptance as detailed below:

Application No	Trade Mark	Class	Specification
858024	25	Men's, ladies and children's clothing
858027	25	Men's ladies and children's clothing
858029	25	Men's, ladies and children's clothing

Advertisement of acceptance of the trade marks appeared in the Australian Official Journal of Trade Marks dated 5 July 2001.

On 4 October 2001, within the time allowed for doing so, David Imerglik ('the opponent') filed Notice of Opposition in respect of each of the applications. Each Notice of Opposition listed grounds in terms of sections 42, 43, 58, 59, 60, 61 and 62 of the Act, as well as the following:

The onus of establishing that the applicant is entitled to registration of the opposed application is upon the applicant and the applicant has failed to discharge this onus.

Registration of the trade mark ought to be refused in the exercise of the Registrar's discretion, by reason of the conduct of the applicant and/or the nature of the mark and/or of its use and/or on such other grounds as the Registrar may see fit to allow.

In considering the matters set forth in the preceding paragraphs, the Registrar in the exercise of the Registrar's discretion, ought to refuse the opposed application and award costs to the opponent.

Evidence in support was due on 4 January 2002.  After seeking and being granted one extension of time in which to do so, the opponent filed and served evidence in support by 4 February 2002.  The applicant did not file or serve evidence in answer. 

Neither party requested to be heard, and the matters came before me, as Registrar's delegate, to decide on the material on file.  Written submissions were provided on behalf of the applicant by its agent, Davies Collison Cave, Melbourne.

Evidence

The opponent's evidence in support consists of three statutory declarations of David Imerglik, Retailer, dated 30 January 2002.  The declarations are identical in material particulars, differing only in their reference to the different trade mark application numbers in respect of which the oppositions have been filed.

The declarations state that Mr Imerglik has a clothing stall at the Queen Victoria Market in Melbourne where he sells clothing bearing the "Born to be Wild Melbourne" design.  Mr Imerglik declares that he and his late partner had plates bearing the "Born to be Wild Melbourne" motif created by Tee-Shirt Graphics (Aust) Pty Ltd, the plates were paid for on 13 September 1999, and that he was the first supplier of T-shirts bearing the "Born to be Wild Melbourne" design.  Mr Imerglik avers that he and his late partner introduced the motif before the applicant filed applications to register the opposed trade marks.

Submissions

In written submissions, the applicant's agent argues that the onus does not fall on the applicant to establish that it is entitled to registration of its applications, but it is on the opponent to establish the validity of its opposition grounds.  The agent contends that the opponent has not provided evidence to support any of its claims, and in particular has not:

• pointed to prior trade mark use in Australia of any specific mark as would establish ownership,

• provided any evidence from which the issue of reputation could be determined for the purposes of section 60, or

• provided any evidence of copyright ownership or any other particular as would render use of the marks by the applicant to be contrary to law.

The agent submitted that the opposition as a whole should be dismissed and that costs be awarded to the applicant.

The opponent did not provide written submissions but I note that in each Notice of Opposition it has requested that costs be awarded to the opponent.

Reasons

Onus of proof

The opponent claims that the onus rests with the applicant to establish that it is entitled to registration.  The applicant refutes this, pointing to the Draft Manual of Practice and Procedure, Part 46, paragraph 2 where the guidelines clearly state: "The onus is upon the opponent to convince the Registrar of the validity of the grounds of opposition that they have cited."

In both examination and opposition proceedings under the Trade Marks Act1955 the onus was on the applicant to show that its mark should be registered (Re Appn byKarachi Aerosol Co Ltd (1985) 6 IPR 33 at 34). This is not the case under the current Act. The Registrar must have regard to the extent to which any of the grounds for opposition has been established when deciding whether to refuse to register a trade mark. But, as the applicant's agent points out, the onus of proof of the validity of the opposition grounds rests with the opponent.

I turn now to the substantive grounds of opposition.

Section 58

Section 58 reads:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

Ownership may be established by first use of the mark in Australia in respect of the relevant goods or services, or authorship and the making of an application for registration, whichever is the earlier (Shell Co (Aust) Ltd v Rohm and Haas Co (1949) 78 CLR 601).

To successfully establish its claim in this regard, the opponent must show a prior use of the same or of a substantially identical trade mark (Carnival Cruise Lines Inc v Sitmar Cruises Ltd 31 IPR 354 at 391), in Australia, in respect of the same kind of thing (Re Hicks' Trade Mark (1897) 22 VLR 636). A very small amount of use is sufficient, but such use must be use as a trade mark. That is, the mark must be used in the course of trade as a "badge of origin" in relation to the goods concerned.

It may be inferred from the Imerglik declaration that the mark on which the opponent is basing his opposition contains some graphic in addition to the words "Born to be Wild Melbourne".  However, the declaration does not provide any particulars of a composite mark, nor any sample of the "motif" in use.  It may be that in each case the mark concerned is the applied-for trade mark, or some other composite mark.  In the absence of specific evidence of a composite mark, however, I must conclude that the opponent bases his claim on the word mark "Born to be Wild Melbourne" or that the opponent has not established his claim to have used the combination "Born to be Wild Melbourne" and graphical element.

The standard test for substantial identity of trade marks is that set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 415:

In considering whether marks are substantially identical they should, I think, be compared side by side their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison . . .

I find that the mark "Born to be Wild Melbourne" and the applied-for trade marks are not substantially identical.  The applicant's trade marks consist of the stylised words BORN TO BE WILD MELBOURNE coupled with, respectively, the device of a cartoon female character surrounded by flowers and hearts, a cartoon character wearing a headscarf and earring, and three cartoon characters wearing headscarves.  On a side-by-side comparison, it is plainly evident that the graphic elements included in each of the applicant's marks give them a different identity to the plain mark "Born to be Wild Melbourne".

The opponent claims that introduction of the putative motif was before the priority date of the subject applications but has not provided any evidence to substantiate this claim.

The applicant's agent submits that no substantial weight should be given to the opponent's evidence relating to ownership and in this regard refers to Hearing Officer Williams' findings in Simpla Plastics Australia Pty Ltd v Bromberg (1999) 46 IPR 621. I agree with the applicant's submissions. In the absence of any clear evidence of prior trade mark use of a mark substantially identical to any of the applied-for marks, the opponent's claims of ownership must be regarded as mere assertion.

On the basis of the evidence provided, I am not satisfied that before the relevant priority date the opponent had used as a badge of origin a mark the same as, or substantially identical to, any of the applicant's applied-for marks. I therefore find the opponent has failed to establish the oppositions under section 58.

Section 60

Section 60 reads:

Trade mark similar to trade mark that has acquired  a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

To be successful under section 60, the opponent must show the existence of a trade mark that is at least deceptively similar to the applicant's mark, demonstrate that the pre-existing trade mark had a reputation in Australia before the priority date of the application, and that because of that reputation, deception and confusion are likely to occur. The opponent may rely on a trade mark which is not registered, but which has been used at common law.

As the opponent has not provided any details of any other mark, I must, as with section 58, base my findings on the mark "Born to be Wild Melbourne".

I have already found that mark is not substantially identical to any of the applied-for trade marks.

To determine if the competing marks are deceptively similar, I have applied the familiar test set down in Shell v Esso, above.  In Shell v Esso at 415, Windeyer J observed:

On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question.  The marks are not now to be looked at side by side.  The issue is not abstract similarity, but deceptive similarity.  Therefore, the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have, and, on the other hand, the impression that such persons would get from the defendant's television exhibitions.

I am satisfied the mark "Born to be Wild Melbourne" is deceptively similar to each of the applied-for trade marks, which consist of the words BORN TO BE WILD MELBOURNE and various graphic elements.  Where a mark is a composite mark consisting of words and a device, it is more likely to be recalled by its word elements (Golden Crumpet Co. Australasia v Hardings Manufacturers Pty Ltd (1987) 8 IPR 147). Hence the competing trade marks are likely to be known and remembered as BORN TO BE WILD MELBOURNE in the marketplace. Such similarities are likely to lead to confusion arising.

The priority date of each application is 22 November 2000.

The opponent, in his statutory declaration, states that he was the first supplier of T-shirts bearing the design and that the motif was introduced prior to the applicant having made its trade mark application.  But no sales or advertising figures have been provided, and there is no other material from which I can determine the extent, if any, of the opponent's reputation as at the relevant priority date.

In the absence of specific evidence, I cannot be satisfied that the applicant has gained the requisite reputation in the mark "Born to be Wild Melbourne" before the priority date of the applied-for trade marks.

I find therefore that the ground of opposition under section 60 has not been made out.

Remaining grounds of opposition

The opponent has provided no evidence to support its claims under sections 42, 43, 59, 61 or 62. I find the opponent has not established those grounds.

I find no other apparent ground of opposition or see any reason why I, as Registrar's delegate, should exercise my discretion to refuse to register the trade mark applications.

Decision

I find the opponent has not established any of the grounds relied on in respect of each of the oppositions.  If the Registrar has not been notified of appeals within four weeks of the date of these Reasons, the applications may proceed to registration.  If appeals are filed against these Reasons, the application should remain pending until the Court proceedings are finalised or withdrawn.

Costs

Both parties requested costs in this matter.  As the opponent has failed to make out any of the grounds relied on, I award costs against the opponent at the official scale.

Frances Aarnio

Senior Examiner

22 October 2002