Demo Holdings S.A. v Hagemeyer Lifestyle Brands (Aust) Pty Ltd

[2003] ATMO 35

TRADE MARKS ACT 1995

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

Re:Opposition by DEMO HOLDINGS S.A. to registration of trade mark application number 803376(9) - WEBB AND SPIDER DEVICE - filed in the name of HAGEMEYER LIFESTYLE BRANDS (AUST) PTY LTD.

Date of Decision:

16 June 2003

Delegate:

Claudia Murray

Representation:

Opponent

Geoffrey Levy, of Griffith Hack, Patent and Trade Mark Attorneys

Applicant

Simon Kane, of Spruson & Ferguson, Patent and Trade Mark Attorneys

Decision:

1. Section 52 Opposition: s 55(b) registration allowed, subject to a restriction of goods to "sunglasses".

2. Parties to bear own costs.

Background

1. 
   Hagemeyer Lifestyle Brands (Aust) Pty Ltd (the applicant) filed trade mark application no. 803376 on 11 August 1999. The subject of the application is the word and device trade mark:

The application was filed in class 9 of the International (Nice) Classification of Goods and Services, for "Spectacles, sunglasses".

1. Grounds for rejection under the Trade Marks Act 1995 (the Act) were raised against the application during examination, in terms of sections 41 and 44. The bases for these grounds were the frequency of WEBB as a surname in Australia, and the existence of prior trade mark registration number 727858, for the trade mark WEB in respect of "Sight and sun-glasses" in class 9. The prior trade mark was filed on 17 February 1997, and its owner was Demo Holdings S.A. Evidence of the history and use of the trade mark was provided to the examiner, who then withdrew her grounds for rejection. The trade mark was accepted for registration, and advertised in the Australian Official Journal of Trade Marks on 9 December 1999, subject to the following endorsements:

   Provisions of subsection 41(5) applied.

   Provisions of subsection 44(4) applied.

1. On 8 March 2000, Demo Holdings S.A. (the opponent) filed notice of opposition to registration of the trade mark. Fifteen grounds of opposition were listed in the notice.

1. Despite seeking a three months extension of time within which to do so, the opponent chose not to file evidence in support of its opposition. However, in a letter dated 5 September 2000, advising the Office and the trade mark applicant that it would not be relying on evidence in support, the opponent also advised that it no longer sought to rely on thirteen of the fifteen grounds of opposition originally cited in its notice. The applicant, (after also seeking extensions of time), then served and filed its own evidence in answer to the much-curtailed notice. The opponent, having again extended the time within which it might do so, ultimately chose not to serve or file any evidence in reply. The matter then came to a hearing before me, as a delegate of the Registrar, in Melbourne, on 18 February 2003.

1. Dr Geoffrey Levy, of Griffith Hack, Melbourne, represented the opponent in person. Mr Simon Kane, of Spruson and Ferguson, Sydney, tendered written submissions to be considered at the hearing.

Evidence

1. The applicant's evidence in answer to the notice of opposition comprises a statutory declaration by Andrew Wickes, the applicant's Brand Manager for Eyewear, and Exhibits AW-1 to AW-3. The declaration is dated 5 December 2001. Mr Wickes explains in his declaration that, at the time of the original creation, development and marketing of what is now the applicant's trade mark, he was a Senior Product Manager at the company JTA Australia, which first adopted and used the trade mark. The applicant subsequently bought JTA Australia. Exhibit AW-2 to Mr Wickes' declaration is a copy of the declaration originally made in support of the applicant's case to the examiner for acceptance of its trade mark. Peter J Badger, Finance Manager of the applicant, made the declaration on 7 October 1999. Mr Wickes refers throughout his declaration to Mr Badger's declaration, expanding upon and confirming from his own knowledge the information given earlier.

Grounds of opposition

1. The remaining two grounds of opposition not abandoned in the opponent's letter of 5 September 2000, and argued by Dr Levy at the hearing, both relate to section 44 of the Act.

Section 44 - substantially identical or deceptively similar trade marks

1. Subsection 44(1) provides in relation to an application in respect of goods:

   44(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a) the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:        For deceptively similar see section 10.

   Note 2:        For similar goods see subsection 14(1).

   Note 3:        For priority date see section 12.

1. The definition of "deceptively similar" in section 10 is that "a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion". Subsection 14(1) provides that goods are similar to other goods if they are the same as, or of the same description as, those other goods. Section 12 states that the priority date for the registration of a trade mark is either its date of registration or, if the trade mark is not yet registered, the day that would be its date of registration, if it were registered.

1. The applicant's trade mark was accepted for registration under subsection 44(4), which provides the following exception to subsection 44(1):

   44(4) If the Registrar in either case [subsections (1) or (2)] 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.

Submissions

1. Dr Levy began his submissions in relation to section 44 by accepting that the onus was on the opponent to satisfy the Registrar of the validity of that ground of opposition. He submitted that the correct approach in the present case would be for the onus to be on the opponent to establish the ground of opposition under subsection 44(1). However, if that ground was established, the onus should then transfer to the applicant to satisfy the Registrar, by "sufficiently cogent evidence", that the circumstances set out in subsection 44(4) exist.

1. Dr Levy went on to argue that the applicant and opponent's goods were the same goods and that, while the trade marks in question were not substantially identical, they were, according to the familiar tests, deceptively similar. (Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 415 and Re Application by the Pianotist Co Ltd (1906) 23 RPC 775 at 777.) The applicant did not dispute these findings, either in its evidence, or in Mr Kane's written submissions.

1. Dr Levy then turned his attention to what he described as the "nub of the matter". This, he said, was whether the applicant had discharged the onus upon it of establishing use of its trade mark before the priority date of the opponent's trade mark, 17 February 1997, continuously until at least the priority date, 11 August 1999, of its own application. That is, whether the applicant's evidence of use of its trade mark prior to the date of acceptance of the opponent's trade mark properly supported its case for acceptance under subsection 44(4). Dr Levy made a considerable number of criticisms of the evidence, focusing especially upon the various exhibits accompanying the declarations. He began with what he described as the failure of the evidence in answer to establish JTA Australia's proper credentials as the applicant's predecessor in title to the trade mark in question. In support of this argument he pointed to a document attached to the written submissions he had provided to me, which he said clearly refuted the applicant's claims. Dr Levy contended I should be able to accept and consider this information outside the proper protocol for exchanging of evidence, as it was simply a "public document", otherwise available to me. I warned him at the time that I could not give a document submitted under such circumstances, allowing the applicant no opportunity for response, evidentiary weight.

1. Dr Levy continued:

   It is clear that Badger and Wickes were each in a position to provide cogent evidence, of high probative value by way of documents such as customer order forms, delivery notes and invoices, evidencing sales of sunglasses under or by reference to the opposed trade mark as well as a full narrative explaining the process of adoption of the opposed trade mark. Manifestly, this has not been done. The evidence is strong on assertion but short on documentary proof. A consequence is that it has been impossible for Demo Holdings to independently verify the evidence. It is submitted that, consequently Hagemeyer has failed to discharge the onus placed upon it, despite being allowed 15 months in which to prepare its evidence in answer.

1. In response, Mr Kane's written submissions for the applicant argued that it had provided "two declared statements confirming JTA Australia Pty Ltd as the predecessor in title of the trade mark WEBB and Design the subject of application 803376." He submitted that the applicant's evidence in answer was sufficient to respond to the opponent's allegations that there were no circumstances justifying the original acceptance of the trade mark, and confirm that the delegate of the Registrar was correct is her original assessment of the applicant's case for prior use. Further, Mr Kane noted:

   The Opponent has filed no evidence to contest any of the facts declared in support of the applicant's trade mark application and in answer to the opposition. Without such evidence there is nothing before the Registrar to contest the declared facts showing prior continuous user established under Section 44(4). The scope of the Opponent's fifth ground of opposition was limited to demonstrating the question of fact that there was no prior continuous use or other circumstances justifying registration under Subsection 44(4). It has failed to do this.

Discussion

1. I accept Dr Levy's contentions, in terms of subsection 44(1), in relation to the applicant's trade mark. The opponent's registration number 727858 clearly has the earlier priority date. Application of the tests for deceptive similarity set out in the cases cited by Dr Levy, and also Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641 at page 658, supports his argument that the trade marks WEB and

are deceptively similar. I believe that the impression an "ordinary person" would likely carry away from coming into contact with WEB "sight and sun-glasses" could lead to their becoming deceived or confused by use of the applicant's trade mark on goods of the same description, which the goods in question indisputably are.

1. I turn now to the exception to subsection 44(1) provided by subsection 44(4). It will be remembered that the applicant's trade mark was originally accepted for registration by an examiner in accordance with this provision, after evidence in support of its case had been filed. That original documentation (the Badger declaration) was entered into evidence a second time in response to the notice of opposition, as an attachment to a new declaration by Mr Wickes. The declarations present an arguably thin case for continuous prior use of the applicant's trade mark. They are patchily supported by various examples of invoices, artwork for brochures, etc. I certainly take Dr Levy's point that they form an odd collection of materials, given that both declarants should have been in a position to provide far more persuasive documentation.

1. However, in considering any of the applicant's evidence, it is important to remember the context in which it was provided. It was entered as evidence in answer to a notice of opposition that had originally ranged over fifteen grounds, many of which must have appeared clearly untenable to both parties from the beginning. This practice, although undesirable for the smooth running of the opposition process, is one not unusually adopted by opponents. What then occurred was much less routine. Despite obtaining an extension of time within which to provide evidence in support of its notice, the opponent ultimately chose simply to withdraw from thirteen of the fifteen grounds listed in the notice, leaving the remaining two to stand entirely unsupported in the face of the applicant's response. The applicant was then in a position where it effectively had to guess what might be the full extent of opponent's grievances, under section 44, in formulating its evidence in answer. Section 44 had previously been raised in examination, and the applicant had prepared evidence in relation to that ground with which it had already obtained one successful outcome before the Trade Marks Office. Under these circumstances, the applicant's decision to resubmit the earlier evidence, with a new declaration merely updating and confirming the information already provided, seems entirely reasonable.

1. The opponent then had the opportunity to reply to the applicant's evidence, with a declaration of its own, outlining the kind of issues raised by Dr Levy during the hearing. Again, after obtaining extensions of time for the purpose, it chose to leave the applicant's evidence unchallenged by any evidence in reply. Against a background where the opponent had neither made its own case, nor challenged the applicant's, the applicant chose not to attend the hearing on the opposition. This left the opponent in an apparent position of ambush in relation to the matters raised there by Dr Levy.

1. In opposition, the overriding onus is upon the opponent to make its case. Lahore, Patents, Trade Marks and Related Rights (2001), says at paragraph 66,320:

   Under the 1955 Act it was well established that in opposition proceedings the onus of proof lay with the applicant. The opponent needed only to establish that there were matters for the applicant to answer. (Re Appn by Karachi Aerosol Co Ltd(1985) 6 IPR 33 at 34; Camelot Design Industries Group Pty Ltd v Bernard Leser Publications Pty Ltd(1987) 9 IPR 596 at 598.) A “reversed” onus of proof operates under the 1995 Act. The applicant is entitled to acceptance unless grounds for opposition are established — “[t]he onus is on the opponent to convince the registrar of the validity of the grounds of opposition that they have cited." (Trade Marks Office Draft Manual of Practice and Procedure, Part 46.)

1. I by no means accept the opponent's apparent premise that this particular case virtually speaks for itself on all counts, thereby negating the opponent's responsibilities to discharge its burden and follow the proper evidence procedures with due diligence. The situation I am required to decide here is far from satisfactory, with critical shortfalls on both sides.

1. Despite these observations, I am also mindful that in order to properly decide this matter under section 55, it is necessary for me to be satisfied that the requirements set out in subsection 44(4) have been met. Once satisfied, the Registrar may not reject (or refuse) the application because of the existence of a prior trade mark. I have examined the applicant's evidence. For the reasons given above, I do not give weight to the majority of the criticisms belatedly levelled at it by the opponent. However, I cannot overlook the fact that ambiguities in the original Badger declaration as to the exact goods upon which the trade mark has been used, were crystallised by Mr Wickes, who clearly describes those goods as "sunglasses". This circumstance is supported by other documents annexed to their declarations. Importantly, sunglasses represent a subset of the applicant's specification of goods, which also covers "spectacles".

Decision

1. Section 55 of the Act provides:

   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.

1. I find that the ground of opposition under subsection 44(1) has been established. However, I further find that the exception allowed for by subsection 44(4) applies to the applicant's trade mark, in relation only to the "sunglasses" which are included in the applicant's present statement of goods. Therefore, my decision in relation to the applicant's trade mark as it stands must be to refuse registration. However, provided that the applicant, within fourteen days of the date of this decision, consents to restrict its specification of goods to "sunglasses", the trade mark may then proceed to registration 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 the appeal has been decided or discontinued.

Costs

1. Both parties have sought a favourable award of costs. It is usual for costs to follow the event and, depending upon the applicant's response to the restriction of goods I have imposed, the opponent has been either wholly or at least significantly successful. However, in view of the particular circumstances surrounding the opponent's success, I decline to award costs against the applicant. It is appropriate for each side to bear its own costs relating to this opposition.

Claudia Murray

Hearing Officer

Trade Marks Hearings

16 June 2003