Fortuity Pty Limited v Ereneos (Renos) Savvides

[2000] ATMO 89

TRADE MARKS ACT 1995

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

Re:Opposition by Fortuity Pty Limited to registration of trade mark application 758184(5, 16) - TRIM FOR LIFE- filed in the name of Ereneos (Renos) Savvides.

Background

This matter arises out of the filing, on 25 March 1998, of an application to register the trade mark TRIM FOR LIFE by Ereneos (Renos) Savvides ('the applicant').  The application seeks registration in respect of the goods:

Class: 5  

Food supplements; vitamin and/or mineral supplements including vitamin and/or mineral tablets; dietetic substances

Class: 16 

Printed materials; books; booklets; journals; newsletters

After examination, the application was accepted on 22 September 1998 and advertised in the Australian Official Journal of Trade Marks on 8 November 1998.

On 8 April 1999, after seeking and receiving an extension of time in which to do so, Fortuity Pty Limited ('Fortuity') filed notice of opposition to the registration.  The grounds of the opposition will emerge sufficiently from my reasons, below.

On 7 July 1999, after seeking and receiving extensions of time in which to do so, Fortuity served its evidence in support of its opposition.   And, on 13 December 1999, the applicant served his evidence in answer.

The issue came before me for a hearing on 24 July 2000 in Sydney.  The applicant represented himself and Andros Chrysiliou (of Chrysiliou Moore Martin) represented Fortuity.  Before giving my reasons, I will discuss the evidence.

The evidence

The evidence in support of the opposition comprises a statutory declaration by Kerry Moore Chrysiliou and one exhibit thereto.  The declaration consists, in the main, of reiterations of the West Australian Supreme Court's findings in Fortuity Pty Ltd v Skybase Nominees Pty Ltd as trustee for The Barcza Family Trust and Another: Fortuity Pty Ltd v Barcza (1995) 32 IPR 517. That case is one in copyright and confidential information and involves a Mrs Barcza who left the employ of Weight Watchers (of whom Fortuity is Australian franchisee) and started her own business under the business name TRIM FOR LIFE. After sending out announcements to prospective customers on 29 April 1992 that she was starting the business under the name TRIM FOR LIFE, she ran the first class of her program on 1 May 1992. On 30 January 1995, Skybase Nominees Pty Ltd purchased the goodwill of the Trim For Life business from Mrs Barcza. The declaration states that on 25 November 1996 Skybase Nominees Pty Ltd 'transferred' the TRIM FOR LIFE business to Fortuity. The transfer included the "name TRIM FOR LIFE", the assets and the goodwill of the business.

The declaration continues by stating that Dr Garry Egger assists Fortuity in its business activities and has published a book under the title TRIM FOR LIFE.  A copy of the front cover of this book is exhibited to the declaration.

The evidence in answer is a statutory declaration by the applicant.  He attests to the use of the words TRIM FOR LIFE since 1990 and the registration of the words TRIM FOR LIFE as a trade mark since 13 January 1992.  The applicant's declaration also contains some submissions concerning the evidence in support of the opposition.

Argument

The argument before me at the hearing can be summarised in the following way.  Fortuity argues that the use of the words TRIM FOR LIFE in respect of printed materials etc, referred to in Barcza's case, above, deprives the applicant of his claim to authorship and first use of the trade mark.  Fortuity also argues that the registration on which the applicant relies in his evidence is irrelevant since it is not in respect of the 'same kind of thing' as the goods nominated in this application.

Further, Fortuity argues, the trade mark TRIM FOR LIFE is not adapted to distinguish the applicant 's goods from those of other traders.

I will not dwell on the applicant's submissions, as they did not directly address the issues. In any event, I am deciding this issue in his favour as, in terms of section 55 of the Trade Marks Act 1995 ('the Act') the opponent has not established its grounds of opposition.

Reasons

Section 58 of the Act provides:

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.

In Hicks's Trade Mark, (1897) 22 VLR 636 (at 640) Holroyd J stated:

In order to substantiate his application to be placed on the Register for this word, he must have claimed to be the proprietor, and the word "proprietor" must be taken to mean the person entitled to the exclusive use of that name.  If there is anyone else who would be interfered with by the registration ... in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the Register for that trade mark.

The expression "the same word" has come to mean 'a substantially identical trade mark' as explained by Gummow J in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 at 513. The words, "the same kind of thing", were held in the same case to include cruises originating from both Australian and overseas ports.

I find the propositions put by Fortuity very difficult to understand.  One the one hand, they point to the applicant's provision of services which have involved the provision of dietary advice and associated printed matter under the trade mark TRIM FOR LIFE since 1990 and say 'this is not the same kind of thing' as the goods for which application is made.  On the other hand, Fortuity points to Mrs Barcza's identical provision of dietary advice and associated printed matter since 1992 and they say that 'this is the same kind of thing' as the goods for which application is made. 

Again, on the one hand, Fortuity says that the applicant has not shown that his printed matter, etc was retailed as goods independent from his services.  On the other hand, the decision in Barcza's case, above, makes it plain that the defendant did not sell her printed matter, etc in this way (the materials were provided as part of her service) and Fortuity have not presented any evidence to the contrary.

In short, if I found that the applicant's provision of printed matter as part of his dietary advice services was a use of the trade mark in the course of trade, he would succeed under this head of opposition.  Conversely, if I found that his provision of printed matter as part of his dietary advice service was not a use of his trade mark in the course of trade, he should also succeed as neither would the use of the words by Mrs Barcza in an identical situation be use of the words as a trade mark for printed matter in the course of trade.  His claim to ownership of the trade mark would not have been disturbed on this basis.

In the end, I make neither finding and merely observe that Fortuity has not established its opposition based on the Barcza case.

There is an additional difficulty.  The Barcza case, above, did not fully address the origins of the name TRIM FOR LIFE.  The Court merely noted that Mrs Barcza had stated that her husband suggested the name.  The Court also noted (at 533) that "at least four instances of questionable conduct on the part of Mrs Barcza were drawn to the court's attention" and, (at 534) "those four instances reflect adversely on Mrs Barcza's credibility".  I note that the applicant applied to register the trade mark TRIM FOR LIFE (570483) in respect of "Weight loss programme, based on medically approved concept, incorporated or combined by a therapy" on 13 January 1992.  On 7 April 1992, Mrs Barcza registered the company name TRIM FOR LIFE and subsequently found herself to be the defendant in an action for breach of copyright which was found by the Court to be 'flagrant'.  The timing of these events, and their context, along with the court's findings as to the breach of copyright, and Mrs Barcza's conduct, suggest that great caution should be exercised in placing any reliance on the Barcza's claims to authorship of the words.  In any event, the evidence in the matter before me tends to show that the applicant had the authorship of those words before the Barczas in respect of the services.

Fortuity also argued that the applicant's claim to proprietorship of the trade mark was displaced by the title of the book TRIM FOR LIFE.  As far as I can see, the title is not being used as a trade mark.  A trade mark belonging to Allen & Unwin appears on the cover of the book exhibited to the applicant's evidence.  I am not aware of any precedent where the title of a book has been accepted to be trade mark usage in terms of ownership or proprietorship, neither was any precedent for such an unusual approach suggested to me at the hearing by Mr Chrysiliou.  However, Mr Chrysiliou did argue that the authorship of the book title should displace the applicant's claims to authorship of the trade mark.  I am not clear why this should be so.  It seems to me that if I used the trade mark GREAT EXPECTATIONS on perfumery, and I was the first to do so for perfumery, then I should be the author of the trade mark in respect of those goods, irrespective of some book that might carry those words as its title.

Fortuity has not established its grounds of opposition based on the title of Dr Egger's book.

As Fortuity has not, in terms of section 55, established its grounds of opposition under section 58 of the Act, I dismiss the opposition on this basis.

Section 41

Section 41 of the Act provides:

Trade mark not distinguishing applicant's goods or services

41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1:  For applicant and predecessor in title see section 6.

Note 2:  If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

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

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

(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).

(6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1:  Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)  the time of production of goods or of the rendering of services.

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).

The assessment of whether a trade mark is inherently adapted to distinguish the applicant's goods from those of other traders takes the form of the process described by Branson J in Blount Inc v Registrar Of Trade Marks (1998) 40 IPR 498, at 504-505.

Fortuity did not present any evidence to support its contention that the trade mark TRIM FOR LIFE is not capable of distinguishing the services of the applicant other than to point to both the use of the words by Mrs Barcza and the title of the book by Dr Egger.  Other than that, they relied on the English meaning of the words.

I have already stated my unease about placing reliance on the adoption of the words by the Barczas.  It followed immediately on the application for registration of an identical trade mark by the applicant, while it was being used by the applicant for similar services, and was in the context of Mrs Barcza's proven breaches of Weight Watcher's copyright and her fiduciary duties to Weight Watchers.  There were also adverse comments by the Court as to her credibility.  While I do not conclude that the adoption of the words by the Barcza's was tainted, I would be hesitant to conclude that this could constitute evidence that the words were common to the trade.

Similarly, Dr Egger's adoption of the words as the title of his book appears to have been connected with his work as an assistant to Fortuity in its business activities.  Fortuity bought the business name TRIM FOR LIFE from Skybase Nominees Pty Ltd who had bought it from Mrs Barcza.  As I have previously stated, the title of this work does not appear to be a trade mark: it is simply the title of a book. 

Apart from those two instances, which appear to be related, Fortuity has otherwise relied on the ordinary English meaning of the expression to support their contention under section 41.

In Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, at 515, Kitto J remarked that the more apt a word is to describe the goods, the less inherently apt it is to distinguish them as the goods of a particular manufacturer. He went on to approve of Lord Parker's exposition on the subject in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624, at 635. Kitto J said that the question was to be tested by reference to :

… the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives … will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

I do not see any problem with the trade mark in terms of subsection 41(3) of the Act. It is certainly strongly suggestive, but, to my mind, there is an indefiniteness of meaning when an analysis of the trade mark is attempted. Such indefiniteness, and the lack of any real evidence from Fortuity, leave me satisfied that other traders have no real need to use the words in the normal course of trade. I am very conscious of the reasoning adopted by the Registrar's delegate in Ciba-Geigy Australia Ltd v Eli Lilly and Co (1983) 2 IPR 353: the desirability of some trade marks arises after they have been coined on the realisation, by others, that the trade mark is very effective. One must exercise caution not to reason one's way back from this perception to the conclusion that, because of this effectiveness, other traders have a need to use the words in the normal course of trade.

The opposition in terms of section 41 has not been established by Fortuity and I dismiss the opposition in terms of this section.

Decision

Fortuity has not been successful in making out its opposition under either of the grounds under which it was argued.  I therefore dismiss the opposition in its entirety.  I direct that the application may proceed to registration after 30 days from the date of this decision, on payment of the appropriate fees. 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

The applicant (having been successful) is entitled to claim his costs, if he so wishes, at the official scale and I award these costs against Fortuity.

Ian Thompson
Hearing Officer

16 August 2000