Foster?s Australia Limited v Steven Cromey

[2012] ATMO 76

TRADE MARKS ACT 1995

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

Re:Opposition by Foster’s Australia Limited to registration of trade mark applications 1329882(35) MY KIND OF CROWN and 1329883(35) - MY KIND OF CROWN THIS LAGER IS - filed in the name of Steven Cromey.

Delegate:	Iain Thompson
Representation:	Opponent: Tim Allen, solicitor of Corrs Chambers Westgarth Applicant: Not represented, did not appear, no written submissions
Decision:	2012 ATMO 76 Section 52 proceedings, s59 - letter sent to applicant by opponent informing him of s59 ground – no response – in all of the surrounding circumstances s59 ground established, registration refused.

Background

1. In this matter Mr Steven Cromey (‘the Applicant’) of Miranda, NSW, has applied under the Trade Marks Act 1995 (‘the Act’) to register two trade marks details of which, as filed, appear below:

   Application No:           1329882
   Priority Date:               5 November 2009
   Goods/Services:          Class 32: Beer
     Class 35: Advertising

   Trade Mark:                My Kind of Crown

   Application No:           1329883
   Priority Date:               5 November 2009
   Goods/Services:          Class 32: Beer
     Class 35: Advertising

   Trade Mark:                My Kind of Crown This Lager is

2. For the sake of simplicity, I will refer to the above collectively as ‘the Trade Marks’ or ‘the Applications’ as is appropriate and by number and trade mark where it is necessary to distinguish between them.

3. The Applications were duly examined in compliance with section 31 of the Act and registrations belonging to Foster’s Australia Limited containing or consisting of the word CROWN (registered for ‘beer’) were cited as bars to the registration of the Opposed Applications in terms of section 44 of the Act.

4. The Applicant amended the specifications by the deletion of the Class 32 claim for ‘beer’; subsequently the Trade Marks were accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 11 November 2010.

5. On 11 February 2011, Foster’s Australia Limited (‘the Opponent’) filed Notice of Opposition (‘the Notice’). The Notice is couched in broad terms and includes the grounds under sections 59 and 60 which the Opponent subsequently argued at a hearing of the matters.

6. The hearing was before me as a delegate of the Registrar of Trade Marks in Melbourne on 20 July 2012.  The Opponent was represented by Mr Tim Allen, solicitor, of Corrs Chambers Westgarth.  The Applicant, while afforded the opportunity, did not elect to appear at the hearing or to make written submissions.

   Onus

7. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.  See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

   The Evidence

8. The Opponent has served and filed the following statutory declarations as its evidence in support of the opposition:

   ·Statutory Declaration of Timothy Richard Allen dated 10 October 2011 (with Annexure TRA-1); and,

   ·Statutory Declaration of Mathew Jordan O’Keefe date 13 December 2011 (with Annexures MJO-1 to MJO-23).

9. The Applicant has not served and filed evidence in answer.

10. The statutory declaration of Mr Allen states that on 8 August 2011 the Opponent wrote a letter (‘the section 59 letter’) to the Applicant in the following terms:

    As you are aware, we act for [the Opponent].

    We are writing to you in relation to one of the grounds of opposition on which [the Opponent] relies in these two matters. Given the legal significance of this letter to both opposition proceedings, we have marked the accompanying envelope with the notice “contains important legal correspondence”.

    Under s59 of the Trade Marks Act (“TMA”), the registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a)          to use, or authorise the use of, the trade mark in Australia; or

    (b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

    [The Opponent] is of the view that the s59 ground of opposition applies in relation to both of your applications for the following reasons.

    (1)     You filed your applications specifying beer in class 32 and advertising in class 35.

    [The Opponent]’s trade mark registrations concerning the well known Crown Lager beer brand were raised by the Trade Marks Office as objections to your applications on examination. In response to the objections, you deleted class 32 from the applications.

    (2) [The Opponent] cannot imagine a situation in which you would use “My Kind of Crown This Lager is” as a trade mark in relation to advertising services for the purposes of the TMA. Even if you had in mind pitching some advertising campaign to [the Opponent] involving the line “My Kind of Crown This Lager is”, this would not involve your using “My Kind of Crown This Lager is” as a trade mark in the relevant sense. It seems inconceivable that you would actually provide an advertising service to others under “My Kind of Crown This Lager is” or “My Kind of Crown”.

    (3)     [The Opponent] has tried contacting you on several occasions to ascertain your intentions regarding “My Kind of Crown This Lager is” and “My Kind of Crown”. In particular, we are instructed that [the Opponent] tried to make contact with you by:

    writing to you at PO Box 476, Miranda, NSW, 2228, the address for service for both applications and the address for you appearing on your letter dated 23 August 2010 responding to the Examiner of your applications; and

    calling and texting your mobile phone number as recorded on the trade mark application forms you filed.

    (4)     We are instructed that you have not responded.

    As you will have seen from its Notices of Opposition, [the Opponent] is also relying upon grounds of opposition other than that afforded by s59. In particular, based on its longstanding reputation in Crown Lager, [the Opponent] expects that there would be widespread confusion if you were to offer advertising services under “My Kind of Crown This Lager is” or “My Kind of Crown”.

    At the Hearing of these opposition proceedings, [the Opponent] will be seeking an order for costs against you. It is open to you at this stage to avoid such an order by promptly withdrawing your applications.

11. Mr O’Keefe is the Intellectual Property Manager of Foster’s Group Limited of which the Opponent is a subsidiary.  Mr O’Keefe states:

    The origins of [the Opponent]’s CROWN LAGER beer date back to 1919 when CROWN LAGER was first commissioned as a beer to honour visiting dignitaries and royalty. CUB launched its CROWN LAGER beer to the Australian public generally in 1954 to celebrate the coronation of Queen Elizabeth II and her inaugural visit to Australia in 1954 with Prince Philip.

    CROWN LAGER is without a doubt one of Australia’s most iconic brands. It is the country’s original premium beer and continues to outsell any other domestic premium beer on the market. Simply, it has been Australia’s highest selling domestic premium beer since its original release to the public.

    CROWN LAGER is renowned for its creamy fruitiness and rich, malty mid palate. It is brewed purely to deliver premium enjoyment and is crafted from the choicest Australian malt and the season’s best “Pride of Ringwood” hops. CROWN LAGER’s tagline for most of its life has been simply “Australia’s Finest”, a tagline that remains the essence of the brand.

12. Mr O’Keefe provides confidential details of sales of the Opponent’s beer carrying the trade mark CROWN LAGER (‘the CROWN LAGER Goods’) by both volume and price and states that this beer is the twelfth best selling beer in Australia.  Mr O’Keefe further states that advertisements of the CROWN LAGER Goods have appeared in the following publications:

    Australian Magazine  Good Weekend

    Adelaide Advertiser  Business Review Weekly

    Australian Golf Digest  Bulletin

    Gourmet Traveller  Modern Fishing

    New Idea  Time

    Vogue Entertaining  Who Weekly

    Wheels  Sydney Good Food Guide

    Melbourne Good Food Guide  Interiors

    Australian Financial Review Magazine Inside Sport

    Review  Golf Australia

    WA Restaurant Guide  Australian Liquor Retailer

    National Liquor News  Australian Way

    BMW  Panorama

    Western Liquor Guide  Playbill

    Qantas Club     Travelling Life

    The Monthly  

13. The Opponent also provides some details of television and movie theatre advertising of CROWN LAGER Goods.

    Other

14. I will add that in my experience and knowledge of the world, the expressions ‘My Kind of Crown’ and ‘My Kind of Crown this lager is’ have a resonance with the title of the well known song My Kind of Town (Chicago Is) from the 1964 movie Robin and the 7 Hoods.[1] 

    [1] 1. Wikipedia: “My Kind of Town” or “My Kind of Town (Chicago Is)” is a popular song composed by Jimmy Van Heusen, with lyrics by Sammy Cahn.[1] It was originally part of the musical score for Robin and the 7 Hoods, a 1964 musical film starring several members of the Rat Pack.[2] It was nominated for the 1964 Academy Award for Best Original Song but lost to “Chim Chim Cher-ee” from Mary Poppins. Although the song predated the Grammy Award Best Original Song for a Motion Picture category, the entire score was nominated for the 1964 Grammy Award in the category Best Original Score Written for A Motion Picture, but it lost to the eponymously titled Mary Poppins score.

    Section 59

15. Section 59 of the Act provides:

    Applicant not intending to use trade mark

    59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a) to use, or authorise the use of, the trade mark in Australia; or
    (b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

    Note:  For applicant see section 6.

    The date of the intention

    The intention to use a trade mark referred to within section 59 must exist at the priority date of the opposed application. Keane CJ, Stone and Jagot JJ in Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437 said at [67] and [68] that “The time at which this intention must exist is the date of application.”

    The Nature of the Onus

16. Likewise, there has been considerable discussion whether, in section 59 opposition proceedings, an opponent bears a special onus. However, relevant to the matter before me, Dodds-Streeton J said in Suyen Corporation v Americana International Ltd [2010] FCA 638; (2010) 187 FCR 169; (2010) 87 IPR 262; [2010] AIPC 92-389 at [190]:

    Irrespective of the standard of an opponent’s onus, where it makes a prima facie case for lack of intention in proceedings under s 59, the evidentiary onus may shift to an applicant who, although on notice that its intention is challenged, fails to respond to the opponent’s evidence.

17. See also Television Food Network, GP v Food Channel Network Pty Ltd (No 2) [2009] FCA 271; (2009) 80 IPR 314; [2009] AIPC 92-339 at [34] where Collier J said:

    The principle that the evidentiary onus in relation to ownership shifts in the circumstances submitted by the applicant has previously been promulgated in the context of opposition to a trade mark on the basis of s 59 (Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100; (2008) 75 IPR 478 at [163])

    Intention to use is inherent in the filing of an application

18. In Aston v Harlee Manufacturing Co [1960] HCA 47; (1963) 103 CLR 391 Fullagar J stated at 401 that:

    I do not regard his Honour [Dixon J in Shell Co][2] as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use.

    [2] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407

19. After reviewing the authorities, Dodds-Streeton J further stated in Suyen at [197]:

    The presumption was first recognised under legislation which cast on the applicant the burden of establishing entitlement to registrability. Although the applicant no longer bears that burden, nothing in the language of s 27 or any other relevant provision of the present Act suggests a legislative intention to depart from the long-established presumption of intention to use recognised under previous legislation. To the contrary, as possession of the requisite intention is a pre-condition of entitlement to apply, it may readily be presumed from the fact of application.

    The  Intention

20. In Ritz Hotel Ltd v Charles of Ritz Ltd and Another (1988) 15 NSWLR 158 (‘Ritz’) at 203 E-F, McClelland J stated that:

    “[I]n my opinion the correct view is that an unused mark is not “proposed to be used” by an applicant for registration unless that applicant has, at the time of the application, a real and definite intention to use the mark publicly in Australia as a trade mark, although not necessarily immediately or within any limited time”.

21. In Re John Batt & Co’s Registered Trade Marks [1898] 2 Ch. 432 at 439-440 (‘Batt’) the applicant had registered a large number of trade marks, had offered many of them for sale, had never traded in the relevant goods and declined to submit to cross-examination. Lord Lindley MR for the English Court of Appeal stated (at 439-440):

    Can a man properly register a trade-mark for goods in which he does not deal or intend to deal? – meaning by intending to deal having at the time of registration some definite and present intention to deal in certain goods...and not a mere general intention of extending his business at some future time to anything which he may think desirable.

22. The fact that a trade mark has not been used is not, of itself, evidence that there was a lack of intention to use the trade mark at the relevant date.  In Ritz McClelland J stated at page 209 that:

    [T]here is no evidence from which I would be prepared to conclude that the first defendant did not as at the date of the respective applications ... propose to use those marks. The fact that the mark CHARLES OF THE RITZ was never used in Australia in relation to any of the goods in respect of which [one mark] is registered ... does not to my mind establish the absence of any proposed use of that mark at the relevant date. In the case of [the other mark] there was some actual use by the first defendant in Australia in relation to at least some of the goods in respect of which it is registered...

23. Conversely, evidence of bona fide or genuine use after the date of filing the application may establish the applicant’s intentions at that date: Burchett J in Conde Naste Publications Pty Ltd v Taylor (1998) 41 IPR 505 at page 50.

24. Cases in which opposition has succeeded under section 59 include Phillip Morris Products SA v Sean Ngu [2002] ATMO 96[3] (‘Ngu’) in which the applicant was put on notice by the opponent by letter that its intention to use the trade mark LONGFIELD (a trade mark which ‘bridged’ the well-known cigarette brands LONGBEACH and WINFIELD) was challenged under section 59. The applicant, Mr Ngu, did not respond to the letter and the Hearing Officer, Mr McDonagh, found the letter was, in the circumstances, enough to transfer the onus onto the applicant and that the lack of any affirmative evidence in response from the applicant was sufficient to find the ground established.

    [3] Cited with apparent approval in Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100; (2008) 75 IPR 478 by Jacobsen J at 162.

    Section 59 Reasoning

25. It is not necessary to decide here whether the fact that the Applicant applied to register the Trade Marks for, inter alia, ‘beer’ in respect of which the Opponent’s CROWN trade mark is very well-known, is sufficient in itself to establish the ground under section 59.

26. The above circumstance was apparently enough for the Opponent to doubt the Applicant’s intentions and send him the section 59 letter. The section 59 letter, while putting the Applicant on notice that section 59 would be a ground pursued at a hearing of the matters, does not expressly warn the Applicant that lack of a response or of evidence which addresses his intentions to use the trade mark might weigh against him except in the final paragraph of the letter in relation to the costs issue.

27. On the other hand, the circumstances of these matters are unusual.  There was (at the relevant date) the inclusion of both ‘beer’ and ‘advertising services’ on the Applications; there was reference to the Opponent’s CROWN trade mark within the Trade Marks; and, there is also the apparent reference in the Trade Marks to Mr Frank Sinatra’s song My Kind of Town (Chicago Is).  These factors suggest that the Applicant intended at the priority date not to use the Trade Marks himself but to offer them to the Opponent as a ‘good idea’ for some form of advertising or promotional programme.  This would place the Applicant in likewise position to the applicant in Batt, above.

28. These issues combined with the Opponent’s section 59 letter are sufficient, in my consideration, to establish a prima facie case of lack of intention and transfer the onus onto the Applicant as regards the ground under section 59. There is a strong parallel here with the ‘bridging over’ of trade marks and the subsequent section 59 letter in Ngu.

29. The Applicant has not evinced evidence in response to the section 59 letter and has not discharged the onus which is now on him to evidence his intention at the priority date to use the Trade Marks.

30. The Opponent has established its ground under section 59 of the Act.

31. The ground under section 59 having been established, there is no need for me to consider the ground under section 60.

    Decision

32. Subsection 55(1) provides:

    55Decision

    (1)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.

33. I refuse to register trade mark applications 1329882 My Kind of Crown and 1329883 My Kind of Crown This Lager is.

    Costs

34. As is usual in such proceedings, costs may follow the event and, having been successful, the Opponent is entitled to its costs which I award at the Official Scale against the Applicant.

    Iain Thompson
    Hearing Officer
    Trade Marks Hearings
    7 September 2012