Francoise Cozzolino v Agatha Diffusion S.r.L

[1998] ATMO 33

TRADE MARKS ACT 1955

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

RE:Opposition by AGATHA DIFFUSION S.r.L. to the registration of trade mark application 637012 in the name of FRANCOISE COZZOLINO.

Background

As provided for in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition. Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

On 8 August 1994, FRANCOISE COZZOLINO lodged an application to register a trade mark in respect of “jewellery, horological instruments and precious metals” in Class 14. The trade mark was for the words AGATHA.Paris, as shown, with the words separated by a full stop and partly in upper case lettering.

The trade mark was accepted with the endorsement “Registration gives no right to the exclusive use of the word PARIS” and was advertised in the Official Journal of 4 January 1996, having been accepted under the now repealed Act.

A Notice of Opposition to acceptance was lodged on 3 April 1996, by Agatha Diffusion S.r.L., a French company with over 150 retail outlets world wide using the trade mark AGATHA PARIS. The grounds upon which the opposition was based involved sixteen separate paragraphs. Taking into consideration the actual submissions made by the attorney for the opponent, the main thrust of the opposition may be summarised under three headings as:
(1) Section 40 - that the applicant is not the proprietor of the trade mark,
(2) Section 28 - that because of a prior reputation of the opponent’s trade mark in Australia, use by the applicant would be likely to deceive or cause confusion. Additionally, the applicant made the application in the knowledge that the trade mark is the property of the opponent, the use of which by the applicant would not be entitled to protection in a Court of Justice, and
(3) Sub-section 6(1) and section 45 - that the applicant has not used the trade mark, nor has any intention to do so.

Although the claim concerning a lack of intention to use the mark was not specifically listed in the sixteen paragraphs in the Notice of Opposition, it can arguably be considered under three of the claims which wee expressed in general rather than specific terms.

The Evidence

The evidence in support was served by 3 August 1997 and consisted of the following documents:
(1) a Statutory Declaration dated 4 June 1997 from Ms. Gail Hill, an attorney for the opponent, to which was appended annexure “GH1” (the first Hill declaration);
(2) 32 Statutory Declarations with common wording and signed in Paris from various store owners and persons in the jewellery trade attesting to a knowledge that Australian tourists have purchased items from the AGATHA.Paris range of the opponent while touring France;
(3) a Statutory Declaration dated 29 July 1997 from Ms. Janet Williamson, a legal practitioner for the opponent, to which was appended annexures “JW1” to “JW4” (the first Williamson declaration); and
(4) a Statutory Declaration dated 16 July 1997 from Mr. Michel Quiniou, the General Manager of Agatha Diffusion in Paris, to which was appended annexures “MQ1” to “MQ15” (the Quiniou declaration).

The annexure “GH1” to the first Hill declaration consisted of graphs indicating the number of visitors from Australia to the United Kingdom for the years 1980, 1985 and 1990 to 1994 inclusive. The graphs also showed the average length of stay and money spent during the stay. The information indicated that numbers of Australians touring the United Kingdom had increased from around 385 000 in 1980 to an average of around 532 000 in the years 1990-94.

Annexures “JW1” to “JW4” of the Williamson declaration contain information on the export of the French editions of Elle, Marie-Claire and Marie Claire Maison magazines to Australia, the launching of the Australian edition of Marie-Claire and the future intention of the opponent of selling jewellery on flights of Air France using the AGATHA.Paris mark.

The Quiniou declaration has fifteen annexures. It also lists figures, in both French francs and Australian dollars, of the opponent for international sales and advertising covering the years 1990 to 1995 inclusive. The first annexure is a copy of the Notice of opposition. The second is a set of brochures detailing the goods sold by the opponent, some of which have been sold using the AGATHA PARIS trade mark since 1974 according to the Quiniou declaration. Annexure “MQ3” lists the shops of the opponent worldwide, the largest proportion being in France but stores are also found in Noumea, Germany, Austria, Russia, Belgium, Luxembourg, Holland, Italy, Switzerland, Great Britain, Spain, Canada, United States of America, Hong Kong, South Korea and Japan. The following annexure, “MQ4”, lists the more than 50 trade mark applications and registrations of the opponent, for the mark AGATHA, in 26 jurisdictions worldwide. The fifth annexure is a set of advertisements for the opponent’s goods in various international fashion magazines. Annexures “MQ6” and “MQ7” are the French language original statements of Mr. Quiniou for which English translations have been provided in the annexures to the first Williamson declaration. The eighth to thirteenth annexures inclusive provide examples of the mark in use. In the large majority of cases, both of the words AGATHA and PARIS are shown in upper case lettering with the word AGATHA in larger font and immediately above the word PARIS. The final two annexures supply information concerning the flights of Air France and All Nippon Airways, and their proposed future practice of offering for sale on international flights both in and out of Australia, goods of the opponent using the AGATHA PARIS trade mark.

No evidence in answer was served by the trade mark applicant, nor was any extension of time in which to serve evidence sought.

On 20 November 1997 the opponent requested to be heard in the matter. The matter was duly set down and came before me on 17 March 1998. The opponent was represented by Mr. Wayne Willis of the Sydney firm of F. B. Rice & Co., whilst the applicant was not represented.

Submissions

At the outset of the hearing, Mr. Willis sought leave to adduce further evidence. This further evidence consisted of two Statutory Declarations from Ms. Janet Williamson (the second Williamson declaration) and Ms. Gail Hill (the second Hill declaration) both dated 16 March 1998. I will deal with the matter of this development in the course of the discussion. Detailed written submissions were also supplied.

Mr. Willis argued two main issues for this opposition at the hearing. These are, that the applicant is not the proprietor of the mark (s.40 of the Act) and that the applicant has no intention to use the mark in terms of s.45, linked with s-s.6(1). Some other issues were raised expanding on other grounds in the Notice of Opposition and these are dealt with in the discussion below, but the two issues above covered the major thrust of the verbal submissions made at the hearing.

The initial argumentation contained in the written submissions dealt with the substantial identity of the present mark with the opponent’s mark as shown on the annexures to the Quiniou declaration. Thereafter, the written submissions indicated the nexus of the goods involved. The applicant’s goods are “jewellery, horological instruments, precious metals” in class 14 while the opponent markets costume jewellery including items such as rings, ear-rings, bracelets, chains, cufflinks, brooches, chokers, and necklaces as well as bags, hair accessories, scarves, sunglasses, watches, key rings, pendants and tie pins as described in the Quiniou declaration.

On the issue of proprietorship, Mr. Willis argued that the Australian applicant has lodged an application to register a trade mark which is the property of an overseas firm. He said that, the present position at law is that ownership of a trade mark is found either in first use of the mark or by the lodgement of the application, whichever comes earlier, as described in First Tiffany v. Tiffany 13 IPR 589 at 591. Notwithstanding this established requirement, he submitted, recognition should be given to the practice of misappropriation of the trade mark of an overseas owner, even where that owner has not yet used the mark in Australia. Mr. Willis stated that he was not arguing that The Seven Up Company v. O. T. Limited & Anor (1947) 75 CLR 203 was wrongly decided, but that it was bad law in the light of changes in the market-place both locally and overseas in the intervening 50 years. He added that modern marketing, including electronic commerce, has set up a very different scene in recent times in regard to the potential for the misappropriation of trade marks. He commented that the commercial conditions which prevailed in 1947 were not even a close approximation to the way in which international trade is carried on in Australia today. It is possible that a mark may become well known in another market in an extremely short time due to modern communication media, he said. It is Mr. Willis’ submission that there are people in Australia who knowingly lodge an application for a trade mark which is owned by an overseas firm, not with any intention to use the mark but in the hope that this will lead to a future commercial advantage. In this, he said, the legitimate commercial activities of the overseas owner are severely curtailed, by an applicant who has no intention of using the mark, because non-use action cannot be taken by the overseas owner until five years after the application has been lodged. Mr. Willis argued that he had followed this line of reasoning because it was connected to a wider policy issue for the Trade Marks Office - that of identifying cases of misappropriation of a trade mark, where an application for the identical trade mark used by a firm in an overseas market, was lodged in Australia by another party. He stressed that this opposition matter was not merely a case of substantially identical or deceptively similar marks but absolutely identical marks. In circumstances where the overseas owner can clearly demonstrate substantial use in another jurisdiction, he added, it is a clear case of direct misappropriation of their mark by the applicant for registration in Australia.

Commenting on the Seven Up decision (supra), Mr. Willis said that the authority of that decision was clearly being eroded by later decisions in the Federal Court. In such a Federal Court judgement Davies J. stated in Anheuser-Busch Inc. v. Castlebrae Pty Ltd. andOthers 23 IPR 54 at 54:

In assessing the level of use required of an overseas trade mark in Australia, past authorities may now have less weight in the light of factors such as increase in travel and an increasingly international media.

In his written submissions, Mr. Willis indicated the position of these recent Federal Court cases was consistent with the words of Fullager J. in the High Court decision Aston v. Harlee Manufacturing Co. (1960) 103 CLR 391 at 400 where he said:

.... the Courts frown on these borrowings of trade marks from abroad ....

Mr. Willis submitted that this view finds further support in the words of Oliver LJ in a decision from the English Court of Appeal, Anheuser-Busch v. Budjovicky Budvar 4 IPR 260 where at pp 276 and 277 he states:

The plaintiffs can thus legitimately claim that before the defendants’ entry into the market here, they had a reputation as the brewers of a beer “Budweiser” with a substantial section of the public. The question is whether this reputation associated with a beer which, for practical purposes, nobody could buy here, constituted a goodwill in any relevant sense.

... but the question, to which no very clear answer emerges from the authorities, is what form of activity on the part of the plaintiff is required before it can be said that he has a “business” here to which goodwill can attach?

Mr Willis further submitted that in a full Federal Court decision, Conagra Inc. v. McCain Foods (Aust) 23 IPR 193, Lockhart J. had considered the issue of overseas use of a trade mark where no use had been made in Australia, with the following comments at 234:

The requirement in some of the cases that a very slight form of business activity is sufficient is really a somewhat artificial concept. The real question is whether the owner of the goods has established a sufficient reputation with respect to his goods within the particular country in order to acquire a sufficient level of consumer knowledge of the product and attraction for it to provide custom which, if lost, would likely result in damage to him. This is essentially a question of fact.

... reputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ...

In his written submissions, Mr. Willis commented that the offer of goods by mail order in the U.S.A. which would be utilised by purchasers in other countries, does constitute the offer of goods for sale to the consumer in Australia and therefore use of the trade mark in Australia by the opponent.

The reputation of the opponent, Mr. Willis submitted, has extended into Australia as a result of the following circumstances. Firstly, the long list of countries in which the opponent had retail stores (as outlined in the Evidence above) were popular tourist destinations for Australians. Secondly, the international sales figures for the opponent in 1995 amounted to almost $A97 million and, thirdly, the considerable amount of advertising in international fashion magazines by the opponent, some of which circulated in Australia. He claimed that this international reputation has led Australian consumers to a familiarity with the mark AGATHA PARIS by a variety of means which has established, for the opponent, a considerable reputation in Australia.

Although claiming use of the trade mark in Australia, as described in the above paragraphs, Mr. Willis commented that consideration of the evidence showed that, prior to the lodgement date of the present application, the opponent could not show use of the trade mark in the “classic sense”. Mr. Willis encouraged me to find in favour of the opponent, and if the decision was wrong, allow the Federal Court to reverse the decision at the appropriate time, rather than follow the outmoded jurisprudential assessment as per the Seven Up case (supra).

The second leg of Mr. Willis’ argument was that a serious question had been raised involving the lack of intent to use the mark. He submitted that this question, combined with information that the applicant appears to have misappropriated the mark from overseas, would allow the Registrar to use his discretion in refusing registration of the application.

Mr. Willis said he believed that sufficient evidence existed that the applicant had lost interest in the application, as was further evidenced by the applicant’s lack of representation at the hearing. He added that the opponent had conducted enquiries which resulted in the expungement of the Business Name “AGATHA PARIS” from the New South Wales Business Names Register, on the basis of a lack of evidence of use. Mr. Willis commented that a commercial investigation of the applicant had failed to locate any relevant information for the running of a commercial enterprise, and so, circumstantial evidence existed to support a lack of a proper commercial basis and a lack of intention to use the mark on the part of the applicant.

In his written submissions, Mr. Willis addressed the provisions of s-s.6(1) and s.45 in greater detail. He commented that if the applicant did not intend to use the mark herself that an application would need to be made under s.45, either to assign the mark or for use of the mark by a registered user, but as of four days prior to the hearing no such application had been lodged. As the applicant could not be contacted, Mr. Willis contended that there was no intention to use the mark. He pointed to support for his contention, that the application could be successfully opposed on the ground of a lack of intention to use the mark, in the decision of Principal Assistant Registrar Farquhar in Michael Sharwood & Partners Pty Ltd & Ors. v. Fuddruckers Inc. (1989) AIPC 90-596. In that decision, he said, evidence was provided by the opponent that the four applicant companies were trustee and investment companies and the business addresses were residential and therefore not feasibly places from which the services nominated could be provided. In that instance, Mr. Willis submitted, the opponent then claimed that the doubt thus created, as to the applicant’s intention to use the mark, caused the onus of proof to shift to the applicant to rebut the claim. This was upheld by the Principal Assistant Registrar and the opposition was successful.

Mr. Willis referred to the decision of Senior Examiner L. Sullivan in Triple Three Leisure Ltd v. Turkovic 27 IPR 430 where it was also decided that opposition to registration succeeded on the ground of the lack of intention, on the part of the trade mark applicant, to use the mark. Mr. Willis invited me to make the same decision in the present instance, where he said, no evidence had been submitted by the applicant, there was no evidence of use or intended use found in an investigation by the opponent, the applicant’s business name has been cancelled and the applicant had only provided the Office with a post box address for its service.

In summarising his written submissions, Mr. Willis indicated that the onus is upon the applicant to affirm that her trade mark is not calculated to deceive as referred to in the judgements for both Dunn’s Trade Mark (1880) 7 RPC 311 and The United Kingdom Tobacco’s Application (1912) 29 RPC 489 where at 496 Parker J. stated:

Where a person applies for the registration of a new mark it is for him to show that the mark is free from all danger of leading, either on the part of the public or on the part of the trade, to deception or confusion; and it is also clear, I think, on the authorities that unless the Comptroller is satisfied that there can be no deception or confusion arising out of the new mark so proposed to be registered he ought not to allow the application for registration to proceed.

On a separate issue of the opposition, that of the ability of the trade mark to be distinctive of the applicant, Mr. Willis referred to the words of Davies J. in Anheuser-Busch, supra (23 IPR 54). There it was held at 59:

Having regard to the volume of the sales of the products of Anheuser-Busch worldwide and to the extent to which Spuds MacKenzie had been developed and exploited both directly in association with beer and in its own right as an exploitable character, I am satisfied that Castlebrae’s marks were never capable of becoming distinctive of goods associated with Castlebrae.

Mr. Willis concluded his submissions for the opponent with the comment that in the field of fashion items such as clothing, perfumery, cosmetics and jewellery, it often occurred that international reputations in trade marks were obtained quickly and comprehensively. On this basis, the Registrar should give consideration to the real effects of allowing a third party to misappropriate an overseas proprietor’s trade mark rather than rely on law established for a different time.

Discussion

(a) Further Evidence

As mentioned above, Mr. Willis sought leave to adduce further evidence consisting of the second Williamson declaration and the second Hill declaration. Technically, the application was not properly made because no fee was provided. I will comment later on this point. A consideration of the admissibility of further evidence at a similar stage in proceedings was considered by Dillon J. in Oxon Italia SpA’s Application [1981] FSR 408 at 409. That decision looked to precedent in the judgments of Lord Denning in Ladd v. Marshall [1954] 1 WLR 1489 and Cross J. in Thornhill & Co. Ltd’s Application [1963] RPC 13 at 17.

Three broad principles for consideration have been outlined in these decided cases, with the relative weight for each consideration being determined by the type of action being decided and the particular circumstances of the case. These principles lead me to ask the following questions of the material submitted as further evidence by Mr. Willis.

(1) Could the two declarations have been obtained at an earlier stage by the exercise of reasonable diligence?
(2) Would the evidence, if admitted, probably have an important influence on the result for this opposition matter?
(3) Is the material submitted apparently credible?

On the first of these considerations, the material annexed to the second Williamson declaration was all available to the opponent’s attorney from 26 September 1997 whilst the material annexed to the second Hill declaration was similarly available from 9 April 1996. The date of the hearing at which the material was presented being 17 March 1998. From this information, I do not consider that the opponent has shown reasonable diligence in lodging the evidence if it was a critical item to be considered. Mr. Willis submitted, at the hearing that the further evidence was not critical to his client’s position but was included to support his argumentation for a lack of intention, on the part of the applicant, to use the mark. However, the lack of timely lodging of the material by the opponent would not, if considered alone, be fatal to the application seeking leave to adduce further evidence made at the hearing.

Considering the second question posed above, I believe that the two declarations and annexures submitted as further evidence do not materially add to the evidence and submissions provided by the opponent on the question of loss of interest and apparent lack of intention to use the mark by the applicant. I do not believe the outcome of this decision would be affected by admitting the material as further evidence.

The issue of the apparent credibility of the further evidence presents no difficulty. The material, I believe, has been honestly submitted with a view to enhancing the opponent’s position.

Weighing up the three factors outlined above, it appears that, in this instance, the most critical consideration is the second factor - namely, whether the material would probably have an important influence on the result. I believe the answer to this question is in the negative. Another important consideration concerns the apparent lack of reasonable diligence to submit the material prior to the hearing. In relation to the technicality of the unpaid fee, this would not have been fatal to the application if the other questions had been answered in favour of the opponent. The fee would simply have then been requested.

From the above, in the circumstances, I do not intend to admit this material as further evidence.

There were sixteen separate grounds raised by the opponent in the notice of opposition. As many of these were developed under three separate arguments in the course of the submissions both at the hearing and in writing, I only intend to fully deal with the grounds which were major issues and briefly make mention of those for which little argument, if any, was made.

(b) Section 40

The first ground raised in the Notice of Opposition arguably concerns the crux of this opposition - proprietorship of the trade mark. The opponent has made the claim that it owns the trade mark. The relevant paragraph of the Act is s.40(1) which reads:

A person who claims to be the proprietor of a trade mark may make application to the Registrar for the registration of that trade mark in Part A or Part B of the Register.

The present position at law is that proprietorship of a trade mark for the purposes of s.40, is found either by first use of the mark in the Australian market in connection with the relevant goods or services, or authorship and the making of an application for registration, whichever is the earlier. These principles are well documented in Shell Co. (Aust.) Ltd v. Rohm and Haas Co. (1948) 78 CLR 601 at 627 and 628, and also Moorgate Tobacco Co. Ltd v. Philip MorrisLtd and Another 3 IPR 545 at 556. This position was reiterated by Principal Assistant Registrar Farquhar in First Tiffany Holdings Pty Ltd v. Tiffany and Company 13 IPR 589 at 591.

The present application was made on 8 August 1994. To mount a successful opposition under s.40, the opponent would need to demonstrate use of the mark in Australia prior to that date. Further, the opponent would need to demonstrate use on “the same kind of thing”, as per Holyroyd J. in Hick’s Trade Mark (1897) 22 VLR 636. For this consideration, it is obvious that the goods of interest for both the applicant and the opponent include some identical items. The opponent’s evidence of overseas sales clearly indicates trade in jewellery and watches, items which are contained within the specification of the present application.

The present application is for the trade mark AGATHA.Paris. The opponent has submitted evidence of use, in various jurisdictions, of the trade mark AGATHA PARIS, frequently with the word PARIS below the word AGATHA. By reference to the standard tests for substantially identical trade marks, as found in Shell Co. of Australia v. Esso Standard Oil (1963) 109 CLR 407 at 414, I am of the opinion that the trade marks of the applicant and the opponent are substantially identical. The remaining matter to be decided for this ground of opposition is whether the opponent has used the mark in Australia prior to 8 August 1994.

The submissions made by Mr. Willis in relation to the use of the trade mark by the opponent, were that the evidence did not show “classical trade mark use”. The evidence submitted, and the attorney’s submissions, however, included several items which need some consideration in relation to use of the mark in Australia.

Letters were submitted as part of the evidence in support from two airlines, Air France and All Nippon Airways. An Air France employee with the responsibility for “on board sales” stated on 18 June 1997 that the sales would commence on 1 July. A spokesperson for All Nippon Airways stated on 25 June 1997 that certain routes from Japan into Brisbane and Sydney were available for such sales. This material does not show that any actual use has taken place. The evidence shows preliminary arrangements only. Whether such plans would lead to a future trading channel is not clear. What is clear, however, is that even these plans post-date the present application which was lodged in 1994.

Submissions were made by Mr. Willis that the opponent has a mail order business operating from the United States of America. However, it is not clear that this business operates as a trade channel for consumers in Australia. No indication was given as to how an Australian consumer might know that the goods were actually available for purchase and, in addition, no evidence of any actual sales was submitted.

Some exhibits attached to the Quiniou declaration of advertisements in various international magazines and brochures showing the goods offered by the opponent under the AGATHA PARIS mark were also submitted to show use of the mark in the Australian market. To further support this contention, the Quiniou declaration details the volume of sales of the magazines Marie Claire and Elle in Australia. This material is not useful in establishing the opponent’s trade mark use in Australia prior to the present application being made on 8 August 1994 for the following reasons. Although Marie Claire is stated to have a circulation of 87,000 in Australia, the relevant date for this circulation is after the lodgement date of the present application because the Australian edition of Marie Claire was launched in August 1995. In line with the words of Williams J. quoted below in Seven Up Co. v. O. T. Ltd. (supra) any evidence to advance the opponent’s reputation should be shown to have occurred prior to the present date of application. (ref. 75 CLR 203 at 211)

Further, if at the date of the application for registration, the mark of the foreign trader, although it has not been used in Australia, has nevertheless become associated in the minds of the Australian public with his goods because it has been advertised in publications which have circulated extensively in Australia or in some other manner, the Registrar is entitled to refuse to register the mark for such goods because it is likely to deceive.

The evidence submitted showing the advertising in international magazines and brochures of the opponent’s goods, prior to 8 August 1994, are all in languages foreign to most Australians, being either French or Japanese with prices quoted in the appropriate currencies. This advertising material has clearly been produced for jurisdictions where these languages are well known. Even for that element of the general public in Australia who came into possession of the material, as the addresses of the opponent’s outlets are all overseas, and prices are not listed in Australian dollars, it is difficult to link the material with an offer for sale of the goods in Australia. This is a similar situation to the circumstances of Midas Limited v. Mister Figgins Pty. Ltd. (1987) AIPC 90-384 at 37,452 where Chief Assistant Registrar Farquhar found that advertisements used in connection with a U.K. fashion business could not be considered use of the mark in Australia. In addition, much of the advertising material post-dates the lodgement of the present application. I do not believe this material supports use of AGATHA PARIS as a trade mark in the Australian market by the opponent prior to the lodgement of the present application.

Mr. Willis submitted that, despite the present circumstances where the opponent could not show “classic trade mark usage” in Australia, there existed sufficient precedent, in decided cases, of a successful opposition in which either a small amount of use by the opponent or no use at all by the opponent, in the local market, had occurred. Three cases were cited by Mr. Willis. I believe, however, that these instances can be distinguished from the present circumstances. In Anheuser-Busch Inc. v. Castlebrae Pty Ltd., supra, Anheuser-Busch Inc. had a substantial reputation and an established trade in Australia using its BUDWEISER trade mark. The trade mark in dispute in that case, SPUDS MACKENZIE, would necessarily have been known to Australian residents in connection with Anheuser-Busch Inc. despite the fact that the actual use was in other jurisdictions. These factors were considered in deciding that case, despite no actual user in Australia. The reputation of the mark, in Australia, was considered to be substantial for the reasons outlined by Davies J. in that decision at page 60. The existence of a similar reputation of such a magnitude in Australia, I believe, is not a factor in the present case.

Two other decisions to which Mr. Willis referred where no use had been made of the trade mark in the local market, were Anheuser-Busch v. Budjovicky Budvar and Conagra Inc. v. McCain Foods (Aust), both supra. Both of these cases dealt directly with the question of an established physical presence or an established reputation in the local market of the overseas party, to support their overall argument of use of the trade mark in the local market. I do not believe similar circumstances in physical presence or reputation exist in the present opposition. (Some other considerations of the matter of the opponent’s reputation in Australia are dealt with in the discussion in relation to s.28. below.) I must also add that even if the circumstances were similar, the High Court ruling in The Seven Up Company v. O. T. Limited and Another (supra) is still relevant precedent for delegates of the Registrar administering the Trade Marks Act. In that ruling Williams J. affirmed that, in the absence of fraud, it is not unlawful for a person to become the registered proprietor of a trade mark in Australia which has been used by another trader in a foreign country, provided that that other trader has not used the mark in Australia. The recent court decisions of Anheuser-Busch Inc. v. Castlebrae Pty Ltd., and Conagra Inc. v. McCain Foods (Aust), both supra, which Mr. Willis claimed had to some extent undermined the authority of that High Court decision are both Federal Court decisions.

However, from the material before me, I believe that no use of the trade mark has been made by the opponent in the Australian market. As such, the opponent has not displaced the applicant’s claim for proprietorship of the mark in terms of s.40 of the Act. I therefore find in favour of the applicant in relation to this ground of opposition.

(c) Sections 6 and 45

A second major attack by the opponent on the acceptance of this mark for registration concerned the ground that the applicant has not used the trade mark and has no intention to do so, in terms of s-s.6(1) and s.45 of the Act.

Mr. Willis stated that an attempt to prove or disprove an intention was extremely difficult to do, because this concept involved understanding and explaining the thoughts of the applicant. In this regard, I must agree. To prove that an applicant has no intention to use a trade mark for which they have applied, especially where the opponent and the applicant have had no direct contact, is no easy task.

The evidence submitted to support the opponent’s conclusion consisted of material forming part of the Quiniou declaration which showed that the results of a commercial investigation had failed to locate the applicant, either by a physical address or by a publicly available telephone listing. The opponent’s written submissions further indicated that the applicant’s business name registration has been cancelled on the NSW Business Names Register on the grounds that no evidence was lodged supporting use. The opponent has also claimed that their search using a commercial investigator failed to find any business activity using the name AGATHA by the applicant.

In addition, Mr. Willis mentioned that the last part of the evidence in support had been returned when it was not collected from the applicant’s mailbox, and that this further supported the opponent’s claim that the applicant had no further interest in pursuing the application.

The material provided indicating the applicant’s lack of intention to use the mark is circumstantial evidence at best. It is hardly surprising that there is no business activity to be found in relation to use of the trade mark AGATHA PARIS by Ms. Cozzolino. The trade mark was accepted for registration on 4 January 1996 and opposed on 3 April 1996. If no business activity had been commenced prior to acceptance, it is to be expected that many persons in the applicant’s situation would not commence business activity during opposition proceedings. There could be many reasons for the applicant’s apparent lack of activity since the Notice of Opposition was lodged. None of the Official notices to the applicant, including the Hearing Notice, were returned to this Office. The only direct indication of intention from the applicant, the statement of use made at the time of application, affirms her intention to use the mark.

Decided cases on which the opponent relied with regard to the lack of intention to use a trade mark included Michael Sharwood & Partners Pty Ltd & Ors. v. Fuddruckers Inc. and TripleThree Leisure Ltd v. Turkovic, both supra. The circumstances in these two Office decisions are, however, quite different from the present situation. In the Michael Sharwood decision, Principal Assistant Registrar Farquhar decided that the four applicant companies, being trustee and investment companies, with business addresses which were residential, could not have an intention to trade in the services specified in the application, being in connection with restaurants and take away food establishments. In the present instance, the goods of interest include jewellery items which could be produced from almost any location. So, I believe, the apparent lack of a clearly defined business address is not fatal to this trade mark application in regard to showing a lack of intention to use the mark.

In relation to the second decision relied upon, TripleThree Leisure Ltd v. Turkovic, the Senior Examiner found that the opponent in that instance succeeded in its opposition, because the applicant had made approaches to the opponent to market its goods. Evidence was led by the opponent that the applicant was seeking an agency or distributorship arrangement with it. The applicant did not lead evidence to refute the claim and the Senior Examiner found in favour of the opponent. That decision is based on quite different considerations from the present opposition.

In the circumstances outlined, the material submitted in relation to the applicant’s intention to use the mark provides circumstantial evidence only that the applicant has lost interest in the application. As Mr. Willis commented in his submissions, it is extremely difficult to understand and prove the exact intentions of a person, particularly when the only contribution from the applicant is a statement made on the application form some years prior to this hearing. I therefore find in favour of the applicant on this ground of opposition. If I am wrong in this conclusion and the applicant has actually lost interest in the application, then the application will lapse and the opponent will have its opportunity to claim proprietorship of the mark.

On the opposition ground that the applicant has no intention to use the mark, then, I find that the allegation is not proved and the opposition fails.

(d) Section 28

Claims were made in the Notice of Opposition concerning the opponent’s reputation in the mark in Australia. It was claimed that such a reputation would result in deception and confusion in the minds of the general public if the applicant used the mark. The relevant part of the Act dealing with a prior reputation is found in s.28. This section reads:

Scandalous and improper marks

28. A mark:

(a) the use of which would be likely to deceive or cause confusion;
           (b) the use of which would be contrary to law;
           (c) which comprises or contains scandalous matter; or
           (d) which would otherwise be not entitled to protection in a court of justice;
           shall not be registered as a trade mark.

A great number of items submitted in the evidence dealt with the reputation of the opponent. The material submitted, I believe, clearly establishes a considerable reputation in use of the marks AGATHA and AGATHA PARIS for the opponent in France and would also appear to indicate a moderate reputation in several other jurisdictions including Japan, United States of America, United Kingdom, several continental European countries and New Caledonia. The impact of the overseas reputation in Australia is, however, somewhat less visible. The argumentation and evidence offered by the opponent includes the sale of French language magazines into Australia, information regarding the prevalence of Australian tourists in the United Kingdom and declarations from staff in the opponent’s stores in France on the regularity of contact with customers from Australia. Two other issues raised in this regard were the availability of the opponent’s goods via a mail order facility from the United States of America and the proposed sales on international flights into and out of Sydney and Brisbane. Some of these issues were discussed in the material covered under s.40 on the issue of proprietorship. In particular, the sale of French language magazines into Australia and the advertising of the opponent’s goods therein, the availability of the opponent’s goods via the mail order facility and proposed sales of the opponent’s goods on international flights into Australia were discussed. I do not intend to comment further on these aspects here.

The remaining issue raised in this regard gives figures on the number of tourists from Australia visiting the United Kingdom (the first Hill declaration) and the more than 30 declarations attesting to the number of Australian customers purchasing the opponent’s goods in Paris. This material does not clearly establish a substantial reputation for the opponent in the Australian market. None of the evidence has been obtained directly from persons in Australia attesting to this reputation. The evidentiary material submitted, in my opinion, falls well short of establishing the degree of reputation, as at the date of the present application, required to trigger s.28 on behalf of the opponent.

No firm evidence suggests that the mark AGATHA PARIS was, at the date of lodging the present trade mark, associated with the opponent in the minds of the Australian public. Clearly, some members of the public had heard of the trade mark in relation to the opponent through the imported magazines. The actual degree of reputation required on behalf of the opponent when considering s.28(a), however, envisages some substantial likelihood of deception or confusion by the relevant purchasers. Section 28 is more concerned with the issue of the public interest and to protect the general public from confusion. For this reason, it is not strictly required to show prior use of the mark by the opponent in Australia (as is required under s.40) but to show that the public will be confused if the applicant’s mark is registered.

From the material before me, I believe that the opponent did not enjoy such a reputation, in Australia, at the date of present application. For this reason the opposition in terms of s.28(a) fails. However, even if I had decided that the opponent had a sufficient reputation, s.28 requires another test before the opponent can succeed.

This further test involves the need for the opponent to show blameworthy conduct on the part of the applicant in terms of s.28(d) of the Act. Such a conjunction of s.28(a) and s.28(d) has been required to validate the opponent’s claim under s.28(a) under the 1955 Act since the decision of the High Court in New South Wales Dairy Corporation v. Murray-Goulburn Co-operative Company Limited (1990) 18 IPR 385. In that decision, majority judgment held that paragraph (d) of s.28 should be read in conjunction with paragraph (a) for actions involving expungement of a registered trade mark from the Register. A later Federal Court decision applied the same reading to an opposition matter. This decision, Canon Kabushiki Kaisha v. Brook and Another, reported at 36 IPR 88, includes these words of Tamberlin J. at 100:

In my view, the factual position in the New South Wales Dairy Corp case is distinguishable and not controlling in the present matter which relates to opposition proceedings. That case was concerned with expungement of a registered mark. There is an important and relevant distinction between applications for registration of a mark and expungement of a mark already on the register as indicated in the reasoning of the majority in that case. In my view, the reasons for judgment delivered by the members of the High Court leave the matter open as to whether there is a need to find blameworthy conduct in opposition proceedings based on s.28(a) as opposed to expungement proceedings.

...

Notwithstanding the diverse opinions expressed by members of the High Court in the New South Wales Dairy Corp case, I consider that I should follow the views expressed by the full Federal Court in that case, with the result that in the case presently before me the opponent to the application for registration is required to demonstrate “blameworthy conduct”.

Following this line of reasoning places the same onus on the present opponent, to show “blameworthy conduct” by the applicant. The only material submitted to me in this regard is a claim that the applicant has misappropriated the opponent’s mark. Mr. Willis, in his submissions, did not argue that the applicant was guilty of “blameworthy conduct” as such but alleged that the applicant was attempting to “pirate” the mark.

The present position at law in these circumstances is as expressed in The Seven Up Company v. O. T. Limited and Another, supra, where Williams J. commented at 211:

...in the absence of fraud it is not unlawful for a trader to become the registered proprietor under the Trade Mark Act of a mark which has been used, however extensively, by another trader as a mark for similar goods in a foreign country, provided the foreign mark has not been used at all in Australia at the date of the application for registration.

In the present circumstances, then, I find that the applicant has not been shown to be guilty of blameworthy conduct. Thus opposition in terms of s.28(a) also fails because the conjunctive requirement of s.28(d) has not been shown.

(e) Other Grounds

As I mentioned earlier, the Notice of Opposition listed sixteen separate paragraphs setting out the grounds of opposition relied upon. I have attempted to group the paragraphs into areas relevant to sections of the Act and I have discussed the major areas of argument on which the opponent relied in the above commentary. There are, however, some paragraphs in the Notice of Opposition not specifically discussed, which were not further developed by the attorney for the opponent. These have all been taken into account in assessing any possible successful outcome for the opponent. I do not consider, however, that further discussion of them would add anything of material value to this decision.

Decision

I dismiss this opposition on all grounds.

Under the issue of proprietorship (section 40) I do not believe that the opponent has shown any trade mark use of the mark AGATHA PARIS in relation to the Australian market prior to the present application. In terms of the opponent’s claim that the applicant has no intention to use the mark (sections 6 and 45), I have found that the allegation was not proved. In relation to the opponent’s reputation in its use of the mark displacing the applicant’s claim (section 28) I have found that the opponent has not established a sufficient reputation in the Australian market and, in addition, has not established any blameworthy conduct on the part of the applicant.

Subject to an appeal from this decision and on payment of the registration fee, the trade mark application may proceed to registration

Don Nancarrow
Senior Examiner
7 July 1998.