Erde SAS v Erde Trailers Pty. Ltd, Anthony Brown and Godfrey Hill

[2013] ATMO 89

TRADE MARKS ACT 1995

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

Re:Opposition by Erde SAS to registration of trade mark application 1437417 (12) – ERDE with triangle devices - filed in the names of Erde Trailers Pty. Ltd, Anthony Brown and Godfrey Hill.

Delegate:	Bianca Irgang
Representation:	Opponent: Mr Rohan Wallace of Rohan Wallace Patent and Trade Mark Services Applicant: Not present at the hearing
Decision:	2013 ATMO 89 s.52 opposition – s 58 ground of opposition established for all goods – registration refused.

Background

1. Erde Trailers Pty. Ltd, Anthony Brown and Godfrey Hill (collectively ‘the applicant’) filed application number 1437417 on 26 July 2011 in class 12 of the International Classification of Goods and Services. Relevant details of the application are set out below.

Trade mark:  

Trade mark application:      1437417

Filing Date:  26 July 2011

Specification:  Class 12: Camping trailers; canopies for trailers; drawbars for trailers; load carrying trailers; non-electric couplings for towing trailers; supports for trailers and caravans (legs and dolly wheels); suspension apparatus for trailers; tarpaulins adapted (shaped) for use with vehicular trailers; tipping apparatus for trailers; tow bars for trailers; trailers (vehicles); trailers for motor land vehicles; transport trailers; vehicle trailers

1. The application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 17 November 2011. Erde SAS (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 20 January 2012. Thereafter the opponent and the applicant served and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Canberra on 9 August 2013 as a delegate of the Registrar of Trade Marks. Mr Rohan Wallace of Rohan Wallace Patent and Trade Mark Services appeared for the opponent. The applicant was not present at the hearing but did provide written submissions for consideration.

Grounds of Opposition

1. The Notice nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

2. At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on the grounds under sections 42, 58, 59, 60, 62 and 62A of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that those grounds have not been established.

3. Therefore, the grounds remaining for my consideration are those under sections 42, 58, 59, 60, 62 and 62A of the Act. Should the opponent establish one ground of opposition in relation to all of the goods specified in the application, there is no requirement for me to consider the other grounds of opposition.

Evidence

1. The evidence consists of the following statutory declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Richard Cropley[3]	Managing Director of Rhino Rack Australia Pty Ltd	12 March 2012	-
Brendan Bernard[4]	Managing Director of Wilstow Ltd	19 March 2012	-
Stephen Long[5]	Managing Director of High Profile Enterprises Pty Ltd	24 May 2012	SL1 to SL28
Luc Chassagne[6]	Managing Director of Erde Societe par Actions simplifiee (Erde SAS)	23 May 2012	LC1 to LC28
Evidence in Answer
Godfrey Norton Hill and Anthony Michael Brown[7]	Directors of Erde Trailers Pty. Ltd.	18 July 2012	ET12
Godfrey Norton Hill and Anthony Michael Brown[8]	Directors of Erde Trailers Pty. Ltd.	18 July 2012	ET6, ET13, ET14
Godfrey Norton Hill and Anthony Michael Brown[9]	Directors of Erde Trailers Pty. Ltd.	18 July 2012	ET01, ET03, ET05, ET07 to ET11
Evidence in Reply
Luc Chassagne [10]	Managing Director of Erde Societe par Actions simplifiee (Erde SAS)	16 December 2012	LC30 to LC33

[3] For ease of reference throughout the decision this declaration will be referred to as ‘Cropley declaration’.

[4] This declaration will be referred to as ‘Bernard declaration’.

[5] This declaration will be referred to as ‘Long declaration’.

[6] This declaration will be referred to as ‘Chassagne 1 declaration’

[7] This declaration will be referred to as ‘Hill Brown 1 declaration’

[8] This declaration will be referred to as ‘Hill Brown 2 declaration’

[9] This declaration will be referred to as ‘Hill Brown 3 declaration’

[10] This declaration will be referred to as ‘Chassagne 2 declaration’

1. In addition to the above evidence, a section 202 Notice requiring production of documents had been issued at the request of the opponent and documents pertaining to that Notice were produced by the applicant on 18 May 2012. 

Opponent’s Evidence

1. The Chassagne 1 declaration states that the opponent was established in 1946 in France and manufactures trailers, and parts and accessories for trailers. The trailers are manufactured in parts which are flat packed and then shipped to the destination country for assembly and sale in the local market. These trailers are asserted to be sold under the trade marks ERDÉ CLASSIC, ERDÉ PRO and DAXARA which are applied to the trailers as stickers and embossing. However, it is also clear that the opponent uses the trade mark ERDÉ solus or as a ‘house’ mark (Exhibits LC5, LC6, LC17 and LC20 to LC25). According to the Long declaration the ERDÉ trade mark is also applied to the packaging in which the flat packed parts are sent to their destination (exhibits SL1 to SL10). The following examples of the opponent’s ERDÉ trade mark are taken from the evidence:

(Exhibit SL5) (Exhibit SL6)

10.  The Chassagne 1 declaration asserts that since 1946 the opponent has manufactured more than 1.5 million trailers and that the ERDÉ rand is known in 27 countries in Europe, North and South America and Australia. The Chassagne 1 declaration states that in the late 1990s the opponent’s UK distributor, Wilstow Ltd, engaged in discussions with Richard Copley of the Australian company Rhino Rack about the potential to sell the opponent’s ERDE branded trailers in Australia.

11.  In early 2006, Mr Chassagne states that he was contacted by Mr Godfrey Hill about importing the opponent’s ERDE branded trailers into Australia. The opponent and Mr Hill entered into discussions at which point Expro Marketing placed an order with the opponent for ERDÉ branded trailers. Mr Chassagne states his belief that Expro Marketing was the business trading name of Mr Hill. In March 2006 the opponent entered into a distribution agreement with Expo Marketing. Exhibit LC1 is a copy of the distribution agreement.

12.  The distribution agreement contains a limited license for Expro Marketing to use any of the opponent’s various ERDÉ trade marks while expressly indicating that Expro Marketing had no rights in the trade marks (exhibit LC1, clause 7.4). Mr Chassagne states that in 2008 the opponent became aware of Erde Trailers Pty Ltd when the opponent was to ship 100 trailers to Expro Marketing. Mr Hill requested that the opponent invoice 75 of the trailers to Erde Trailers Pty Ltd and 25 to Expro Marketing.

13.  Both Mr Hill and Mr Anthony Brown are directors of Erde Trailers Pty Ltd. As such, Mr Chassagne states that Erde Trailers Pty Ltd was treated as a sub-distributor and sub-licensee by the opponent. The ERDÉ trade mark which was often accompanied by a French flag was used on the trailers, packaging, websites and promotional materials throughout the marketplace. In 2010 the relationship between the opponent and applicant broke down. The opponent eventually entered into a new distribution agreement with Mr Steven Long and his company High Profile Enterprises Pty Ltd. 

14.  The amount of revenue generated by the sale of ERDÉ branded trailers and parts sold to all of the opponent’s Australian distributors since 2006 has been relatively moderate but was clearly ongoing until at least 2011.

Applicant’s Evidence

15.  The applicant states that Expro Marketing did enter into a distribution agreement with the opponent and that the agreement did preclude Expro Marketing from the use of the ERDÉ trade marks without authorization from the opponent. The applicant states they were not a party to that distribution agreement. The applicant also states that Expro Marketing transitioned to Erde Trailers Pty Ltd and that “this was a normal Australian business practice, to transition from a partnership to a limited company as advised by our accountants” (paragraph 12 of the Hill Brown 3 declaration). The applicant goes on to explain that the opponent was informed in telephone conversations, emails and personally at a meeting at the Rosehill Caravan and Campaing show of this transition.

16.  The applicant states that Erde Trailers Pty Ltd has spent a lot of time and effort promoting the ERDÉ branded trailers in Australia over the course of the last seven years. In particular, the applicant states that the exhibit LC-28 accompanying the Chassange 1 declaration is a copy of artwork produced entirely by Mr Brown for use by Erde Australia Pty Ltd. The applicant also states that the vast majority of leaflets and brochures used in the Australian market were produced locally by Erde Trailers Pty Ltd as the versions that were provided by the opponent had “many mistakes and much of the information contained either did not apply to Australia or had errors in the specifications which applied only to Europe” (Paragraph 33 of the Hill Brown 3 declaration).

17.  The Hill Brown 3 declaration also states that the applicant paid for all trade shows and radio advertising that took place in Australia as the opponent did not contribute. Exhibits ET07 to ET10 contain copies of various invoices addressed to the applicant for radio advertisements and trade shows. Further, the applicant states that the opponent’s ERDÉ branded trailers could not initially be sold in Australia due to compliance issues. According to the Hill Brown 3 declaration, all the expensive, lengthy and difficult requirements to make the trailers legally roadworthy in Australia were done by Expro Marketing, Erde Trailers Australia and Erde Trailers Pty Ltd and that the opponent played no part in this.

18.  All of the Hill Brown declarations outline a number of dealings between the parties that eventually soured the relationship and ended with the termination of the distribution agreement. It appears that there are a number of commercial and contractual disagreements between the parties which are not relevant to these proceedings.

Discussion

Section 58 – Applicant not the owner of the trade mark

19. Section 58 of the Trade Marks Act provides:

1. Applicant not owner of trade mark

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

20. In order to make out a ground of opposition under section 58, the opponent must establish that:

·   the respective trade marks of the applicant and opponent are either identical or substantially identical [11],

[11] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 120 ALR 495; 31 IPR 375

·   the respective goods on which the trade marks have been or are to be used  are the ‘same kind of thing’ ^[12]

[12] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75

·   the opponent has the earlier claim to ownership based on authorship[13] and use of its trade mark prior to both the filing of the application and any actual use of the opposed trade mark by the applicant[14].

[13] Authorship in that sense involves the origination or first adoption of the word as and for a trade mark Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391 at 399

[14] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413

21.  It must first be determined if the opponent has used an identical or substantially identical mark to the applicant’s trade mark ERDE. The test for substantial identity is that the trade marks are:

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.”[15]

[15] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 per Windeyer J at 414

22.  The two trade marks to be compared are as follows:

Applicant’s trade mark Opponent’s trade mark

23.  A comparison of the opponent’s trade mark and the applicant’s trade mark creates a total impression of similarity[16]. The fonts used to depict the word ERDÉ is very similar as is the triangle device at the beginning of each trade mark. I find the two trade marks are substantially identical. It is also clear that both the applicant and the opponent apply the ERDÉ trade mark to trailers and parts for or for use with those trailers.

[16] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495

24.  It must now be determined whether the opponent was the first user of the trade mark in Australia. The Chassagne 1 declaration states that opponent’s UK distributor, Wilstow Ltd, offered for sale an ERDÉ branded trailer to Rhino Rack Pty Ltd and shipped a sample trailer to Australian for it to trial in the Australian market. This occurred in about 2000 and is corrobotated by the Cropley declaration and the Bernard declaration. Mr Cropley states that in about 2000 he was approached by Wilstow Ltd from the United Kingdom enquiring whether Rhino Rack Pty Ltd would be interested in importing ERDÉ branded trailers from Europe. Mr Cropley states that his company did a marketing survey of the trailer market and decided that the ERDÉ product was not viable for them at the time. Mr Bernard of Wilstow Ltd agrees with this statement of events in his declaration.

25.  The opponent has thus established that it has used an identical trade mark and that it has made a genuine offer to sell goods bearing that trade mark in Australia prior to the filing dates of the applicant’s trade mark[17]. Further to this, it is also clear from the evidence that subsequent to the opponent entering into a distribution agreement with Expro Marketing in 2006 that a number of ERDÉ branded trailers were imported and sold by that business in the Australian market under the ERDÉ brand. The opponent has asserted that the use of the ERDE trade mark was to designate the origin of the goods as being from Erde SAS, the opponent. I agree that this was the opponent’s intention when it entered into the distribution agreement with the applicant.

[17] Moorgate Tobacco Co. Limited v Philip Morris Limited and Another, [1983-1984] 156 CLR 414. See also Angela Christou v Tonch Pty Ltd [2008] ATMO 24 at 24

26.  The applicant’s evidence itself demonstrates a number of instances where the ERDÉ branded trailers were advertised and marketed in conjunction with a French flag or the words “Made in France - assembled here”. These are located in exhibit ET03 accompanying the Hill Brown 3 declaration. I believe that this only serves to emphasise that the ERDÉ trailers were manufactured in France by the opponent and that the applicant was an official distributor for the opponent’s goods in Australia. Any use in Australia, therefore, was on behalf of the opponent, rather than being use on behalf of the applicant itself.

27. In conclusion, I find that the opponent first used an identical trade mark in Australia before the filing date of the application or, arguably, any use by the applicant of its trade mark, in relation to goods that are the same kind of thing. It follows that the opponent, and not the applicant, is the trade mark owner, and the section 58 ground of opposition is established with respect to all the goods specified in trade mark application 1437417. I therefore do not need to consider the other grounds which were argued at the hearing.

Decision

28. Section 55 of the Act relevantly provides:

Decision

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.

29. I find that the opponent has met the onus upon it, in terms of the grounds of opposition under section 58 argued at the hearing. I refuse to register trade mark application 1437417.

Costs

30. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the trade mark applicant Erde Trailers Pty. Ltd, Anthony Brown and Godfrey Hill.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
29 October 2013