Fairland Electric (China) Limited v Adrian Eric Morton
[2006] ATMO 61
•18 July 2006
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Fairland Electric (China) Limited to registration of trade mark application 1018634(11) - FAIRLAND - filed in the name of Adrian Eric Morton.
Delegate: Jock McDonagh Representation: Opponent: Martin Pannall of Madderns, Attorneys
Applicant: Adrian Morton in personDecision: Section 52 opposition – ground under section 58 established – registration refused. Costs awarded against the applicant. Background
The applicant, Adrian Eric Morton, applied to register the following trade mark:
Application Number: 1018634 Priority date: 02/09/2004
Goods: Class 11: Air conditioners
Trade Mark: fairland
Advertised: 13/01/2005
The opponent, Fairland Electric (China) Limited, filed notice of opposition to the trade mark's registration on 6 April 2005. That notice listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act").
Evidence in support, evidence in answer and evidence in reply were duly served and filed according the Act and regulations thereto.
The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Canberra on 23 May 2006. Mr Martin Pannall of Madderns, Attorneys, represented the opponent. The applicant, Mr Adrian Morton represented himself at the hearing.
Evidence
The evidence relating to the opposition consists of the following declarations:
Declarant Date declared Exhibits Known As Evidence in Support Brian Peter Lincez 30.09.05 BPL-1 to BPL-9 Lincez Robert David Reynolds 23.09.05 RDR-1 Reynolds Martin Pannall 5.10.05 MP-1 to MP-5 Pannall Chen Bo 11.10.05 CB-1 to CB-11 First Bo Cheng Li 11.10.05 CC-1 to CC-22 First Li Evidence in Answer Adrian Eric Morton 17.11.05 AM-1 to AM-60 Morton Evidence in Reply Chen Bo 15.02.06 CB2-1 Second Bo Cheng Li 15.02.06 SHD-1 to SHD-4 Second Li
The Lincez declaration is made by the managing director of Starwhist Pty Ltd, which imports, retails and installs air conditioners in Australia. In April 2004, Starwhist received 95 air conditioners from the opponent, which were branded fairland. The Lincez declaration exhibits various invoices, photographs of goods received (showing the trade mark fairland) and other documents relating to Starwhist’s business.
The Reynolds declaration is made by the Managing Director of Thermofilm Australia Pty Ltd. Mr Reynolds attended an air conditioning trade show in China in March 2003 and met representatives of the opponent. He subsequently sent an E-mail to the opponent requesting a product brochure, which was duly sent. Mr Reynolds no longer has the brochure; however, he exhibits a copy of the E-mail in response to his.
The Pannall declaration is made by the trade mark attorney acting for the opponent in Australia. He exhibits copies of correspondence relating to the opponent’s claim of ownership of the trade mark.
The first Bo declaration is made by the President of the opponent. He provides details of his company, its dealings with Australian retailers, and exhibits a number of invoices relating to air conditioners exported to Australian retailers.
The first Cheng declaration is made by an employee of the opponent. She is he opponent’s export representative and attends to correspondence from the company’s international customers and prospective customers. She details the dealings she had, on behalf of the opponent, with the applicant. She exhibits copies of correspondence between the applicant and opponent.
The Morton declaration is made by the applicant. It provides a background to the applicant’s experience in the air conditioning business, his dealings with the opponent, and the rationale behind his adoption of the trade mark.
The Morton declaration is also a mixture of submissions and an attempt to discredit the opponent’s position. Much is irrelevant to these proceedings, misapprehends Australian law of trade mark ownership, or misunderstands the differences between trade marks and business names. It also conducts a fascinating forensic examination of the opponent’s stationery and invoices.
The second Bo and Li essentially explain the differences in spelling of their names as rendered into English and the use of Anglicized names when dealing with Anglophones.
Narrative
The following paragraphs outline what I consider to be the facts as supported by the evidence filed in these proceedings. The majority of the evidence is not in serious dispute by the parties. I have, however, and despite the applicant’s attempts to impeach their veracity, accepted the invoices provided by the opponent at face value.
In 1999, the applicant attended a trade fair in China. He conceived a business plan that involved importing unbranded air conditioners from China and distributing them through a large network of small to medium sized air conditioning contractors throughout Australia.
In July 2006, Mr Morton lodged an application to register the trade mark darian in class 11 for air conditioning and heating equipment. The trade mark is now registered with the registered number 1009819. ‘Darian’ is derived from the name ‘Adrian’.
In August 2004, the applicant made contact with the opponent by E-mail, requesting information and a pricelist for its air conditioning units. Information was duly exchanged and the applicant placed an order for a “no brand” sample air conditioner on 31 August 2004. The unit was subsequently delivered and paid for.
During negotiations, Mr Morton realized that if he ordered air conditioners with his darian brand it required a minimum purchase of two 40-foot containers (an outlay of about $80,000), whereas if he ordered fairland branded goods the minimum order was one 20-foot container ($20,000).
Mr Morton then inspected the various Australian business name registers and the Trade Marks Office database and discovered that the name ‘Fairland’ was not registered. He then made the application the subject of these proceedings.
The opponent is a Chinese air conditioner manufacturer, retailer and exporter of air conditioners and related products, selling its goods to countries around the world under the trade mark fairland.
In April 2004, the opponent sold air conditioners to Starwhist Pty Ltd, a Brisbane company that imports, retails and installs air conditioners in Australia.
Ground of Opposition: s58 - Applicant not owner of trade mark
This section of the legislation reads:
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.
It is now well established law that, in order to succeed under this ground of opposition the opponent must establish three factors. These are:
(i) that the respective trade marks of applicant and opponent be either identical or substantially identical (Carnival Cruise Lines Inc. v Sitmar Cruises Limited 31 IPR 375, (1994) AIPC ¶91-049, (1994) 120 ALR 495);
(ii) that the respective goods of both parties be the 'same kind of thing' (Re Hicks' Trade Mark (1897) 22 VLR 636; 3 ALR 75); and
(iii) that the opponent has the earlier claim to ownership based on use prior to both the application to register and actual use of the mark by the applicant (Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413 and Re: Hicks's Trade Mark, supra, at 639).
The respective marks are obviously the same, as are the goods. The real issue here is whether or not the opponent has used its trade mark in Australia before the applicant.
I note that in Re Registered Trade Mark Yanx (1951) 82 CLR 199, it was held that goods that had been ordered and dispatched but had not yet arrived in Australia was sufficient use to accord ownership. Additionally, a very small amount of use of a foreign mark in Australia is enough to establish use: Seven Up Co v OT Ltd (1947) 75 LR 203, at 211. Further, the requisite use of the mark need not be sufficient to establish a local reputation: Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414, at 432.
I am satisfied that the opponent has demonstrated that it has the first trade mark use of fairland in the course of trade in Australia. It has done so by virtue of the evidence of sales of fairland branded air conditioning units to an Australian company in April 2004. Therefore this ground is established.
Conclusion and Decision
The opponent has established a ground of opposition on which it relied so that the opposition as a whole has been successful. Pursuant to section 55, I refuse to register application 1018634.
Costs
The opponent has sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.
Jock McDonagh
Hearing Officer
Trade Marks Hearings
18 July 2006
Key Legal Topics
Areas of Law
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Intellectual Property
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Commercial Law
Legal Concepts
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Costs
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