Fred Cavasinni v Full Throttle Custom Car Club Australia Inc

[2017] ATMO 55

TRADE MARKS ACT 1995

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

Re:Opposition by Fred Cavasinni to registration of trade mark application 1608950 (41) - FULL THROTTLE CUSTOM CAR CLUB AUSTRALIA (and Device) - in the name of Full Throttle Custom Car Club Australia Incorporated.

Delegate:	Heath Wilson
Representation:	Opponent: Vincent Costa of LCI Legal. Applicant: Written submissions from Jacqui Pryor of Mark My Words Trademark Services Pty Ltd.
Decision:	2017 ATMO 55 Opposition under section 52 of the Trade Marks Act 1995 – sections 42(b), 43, 44, 58, 58A, 59, 60 and 62A considered – provisions of subsection 44(3)(b) applied – trade mark to proceed to registration.

Background

1. On 28 February 2014 Anthony John Cutri applied to register a trade mark under the Trade Marks Act 1995 (‘the Act’). That trade mark was subsequently assigned to Full Throttle Custom Car Club Australia Incorporated (‘the Applicant’) and the assignment was recorded in that name on the Register of Trade Marks. This matter concerns an opposition under section 52 of the Act to the registration of the trade mark. The current details of the opposed trade mark application are:

   Trade Mark No: 1608950

(‘the Trade Mark’)

Filing Date: 28 February 2014

Specification of Services:

Class 41: Provision of social club services; Social club services (entertainment, sporting and cultural services); all of the aforesaid being social car club services

Endorsement: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

1. The Trade Mark was examined, and subsequently accepted under the provisions of section 44(4) of the Act. Advertisement of that acceptance appeared in the Australian Official Journal of Trade Marks on 11 June 2015.

2. On 11 August 2015, a Notice of Intention to Oppose the registration of the Trade Mark was filed by Fred Cavasinni (‘the Opponent’). This was followed by a Statement of Grounds and Particulars (‘SGP’) which specified sections 42(b), 43, 44 (on the basis trade mark no. 1607595 currently being opposed by the Applicant), 58, 58A, 59, 60, 62(b) and 62A of the Act.

3. The Applicant also owns an earlier pending trade mark application no. 1602954 for similar class 41 services to those of the Trade Mark. That trade mark is likewise subject to opposition proceedings by the Opponent and, since it is has a connection to this opposition, I will revisit the details of that trade mark application later.

4. For this opposition, the Applicant has filed a Notice of Intention to Defend and the evidence stages comprised of the following:

• Statutory Declaration of Fred Cavasinni (President of the Full Throttle Hot Rod & Custom Car Club) made 13 August 2015 with annexures FC-1 to FC-36 (‘Cavasinni’)

• Statutory Declaration of Jorge Gau (Public Officer for the Applicant) made 31 January 2016 with exhibits TM-01 to TM-13 (‘Gau’).

• Declaration of Jacqui Pryor (Director of Mark My Words Trademark Services Pty Ltd and a Registered Trade Marks Attorney for the Applicant) made 2 February 2016 with exhibit JP-01 (‘Pryor’).

1. One of the problems with both declarations Cavasinni and Gau is the lack of clarity and consistency around the key facts relevant to this opposition. For example, I have found that ascertaining the truth of the facts in this matter is not assisted by the decision in Gau to define ‘the Club’ as including both the unincorporated body existing prior to the Applicant’s incorporation and the Applicant itself.  A close analysis of the evidence reveals that they are not, in fact, the same body and that this is where most of the disagreements between the parties lie. The disagreement over the ownership of ‘the Club’ has migrated into a dispute over the origin of the various trade marks and logos created for use by ‘the Club’. One of these is the Trade Mark.

2. The Opponent originally requested that the oppositions to trade mark applications 1608950, 1607595 and 1602954 all be heard and decided concurrently. However, the Applicant strongly objected to a postponement of a decision in the opposition to the Trade Mark, citing the differences between the evidence in these matters and different grounds of opposition. In light of the Applicant’s objections, the Deputy Registrar of Trade Marks ultimately decided that each matter would be heard and decided separately.

3. As a delegate of the Registrar of Trade Marks I heard the opposition on 3 March 2017 in Canberra. Vincent Costa of LCI Legal made oral submissions via telephone on behalf of the Opponent after having provided a written summary of argument and the Applicant relied solely on its written submissions filed prior to the hearing. From the submissions provided, the Opponent is pursuing all of the grounds of opposition particularised in the SGP with the exception of section 62(b) of the Act.

Onus

1. The Opponent bears the onus of establishing at least one of the grounds of opposition on the civil standard of the balance of probabilities.[1] The rights of the parties are to be determined as at the date of the application[2] which is generally, but not always, the filing date.[3] The relevant date in this opposition is 28 February 2014.

   [1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].

   [3] See sections 6, 12, and 72 of the Act.

2. If the Opponent establishes a ground of opposition on the balance of probabilities, there is no requirement for the Registrar to address the remaining grounds of opposition pursued. However, in the event of an appeal from this decision, those grounds (and others under the Act) are available to be pressed by the Opponent. It is convenient to begin with consideration of the section 58 ground since much of the Opponent’s arguments concerned the ownership of the Trade Mark and which party first used it in the course of trade.

Discussion

Section 58

1. Section 58 of the Act provides:

58Applicant not owner of trade mark

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

Note:For applicant see section 6.

1. The general scheme of the Act is that the first person to apply to register a trade mark will, in most cases, be entitled to claim to be the owner in relation to the services of the application and also goods/services constituting the ‘the same kind of thing’.[4]

   [4] Re Hicks' Trade Mark (1897) 22 VLR 636.

2. An exception to that statement is if the trade mark has been used before the relevant date. In that event (and in the absence of fraud) the owner of a trade mark in Australia is taken to be the first person to use it (‘first user’) in the course of trade in relation to those goods or services. The first user need not have invented or first thought of the trade mark[5], but rather it is the first party to use it as a trade mark in Australia.

   [5] Aston v Harlee Manufacturing Co (1960) 103 CLR 391, (399) (Fullagar J).

3. The application of section 58 requires that a ‘total impression of similarity (emerge) from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.’[6] In other words, the trade marks must be substantially identical. With those principles in mind, I will now consider the relevant evidence in this opposition.

   [6] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495, [62].

4. On 28 June 2013, the Opponent entered into a partnership with a Mr Cosoleto and Mr Stellino registered under the ABN 72389624879. The business name of the partnership at that time was ‘F Cavasinni & J Cosoleto & G Stellino’.[7] Their intent was to cancel their membership to the Idle Wild Hot Rod Club and form their own separate club with a broader focus.

   [7] Exhibit FC2.

5. At the time of the registration of the partnership, the name of the new club had not been finalised. On 30 June 2013, a mock up logo was created for a possible new name for the club being ‘Piston Head Hot Rod & Custom Car Club’.[8] However, this mock up logo is not the Trade Mark and features a very different device element. Other potential names were discussed at a meeting involving the Opponent and members of the Applicant. The Opponent declares that:

   It was ultimately decided that we would go with the name ‘Full Throttle’. Although Anthony Cutri, Jess Lustri and Jorge Gau were in attendance at the meeting discussing the club name they were still members of Idle Wild at this time.[9]

   [8] Exhibit FC3.

   [9] Cavasinni [8].

6. There is some disagreement over the facts surrounding the origin of the name of the club, and who voted on which name, but the majority of those members present voted on the name ‘Full Throttle and Hot Rod Custom Car Club’.

7. Exhibit FC7 to Cavasinni is the constitution of the ‘Full Throttle Hot Rod & Custom Car Club’[10] and it describes the new club as an incorporated association to ‘promote Street Rodding in all its facets’. The constitution was adopted on 9 July 2013 and the Opponent signed the document as vice-president of the club (he later became president). The constitution does not mention or display the Trade Mark which had not been created at that time.

   [10] ABN 72389624879.

8. At the meeting of the Australian Street Rod Federation NSW (‘ASRF’) in August 2013, the new club was officially announced. The minutes for the meeting provide:

   Tonight the Full Throttle Hotrod & Custom Club presented to the members, their request for Charter status with the ASRF. They have been in other Clubs, some have 33 years experience with hot-rodding. They would like to get the younger people involved with our sport, not spending money, but becoming a family oriented Club. The members tonight, voted that they should be accepted – with the usual 12 months probation. Congratulations Full Throttle HCC![11]

   [11] Exhibit FC10 to Cavasinni.

9. The business name for the club (held by the partnership) was registered with ASIC[12] on 12 August 2013.[13] Mr Gau alleges that the registration of this business name under the partnership rather than as an unincorporated association was done without the knowledge of the club members. This was an issue later sought to be rectified by club members. Exhibit FC9 to Cavasinni is a document dated 18 July 2013 and signed by the Opponent, Mr Stellino and Mr Cosoleto on 23 August 2013. The document provides:

   I We (All Parties) Nominated As Owners With The Registration of the Full Throttle Hotrod & Custom Car Club Registered in July 2013.

   Accept Full Reimbursement From Full Throttle Hotrod & Custom Car Club Of All Cost Outlaid By Ourselves to Register The Above Mentioned Business, Company, Corporation.

   I We (All Parties) Agree that Upon Accepting Reimbursement That the Ownership of The above Mentioned Car Club Is Owned By The Club And All Its Financial Members.

   We also Agree That Any Future Names Registered For The Club will be owned By The Club And All Its Financial Members. 

   [12] Australian Securities & Investments Commission.

   [13] Gau, (exhibit TM-07).

10. As it transpired, the details of the ownership of the name were not rectified and this continued to be a source of disagreement between the parties.

11. Australian trade mark law makes clear that the mere registration of a business name is not, by itself, use of a trade mark.[14] Accordingly, the registration of the name appearing on ASIC is not the date of first use. In addition, the business name of the unincorporated club is simply not the Trade Mark and neither is it substantially identical to it. Unlike the business name, the Trade Mark consists of the words ‘Full Throttle Custom Car Club Australia Est. 2013’ accompanied by a large and distinctive device element, being a stylised suit of spades.    

    [14] See Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554, [308].

12. Turning to other examples in the evidence, exhibit FC-5 to Cavasinni is also not the Trade Mark, but a logo mockup of a hotrod car superimposed on a different stylized background and featuring the expression ‘Full Throttle Hotrod & Custom Car Club’.

13. On 3 July 2013, the Opponent had changed the name of his ‘Facebook’ page to ‘Full Throttle Hotrod & Custom Car Club’. On 17 July 2013, the logo at annexure FC8 appeared on this Facebook page. This logo is again a different representation of one hotrod car on a different stylized background with the words ‘Full Throttle Hotrod & Custom Car Club’ surrounding it. Certain elements appear visually similar to the Trade Mark, but this logo is not substantially identical to it. 

14. The subsequent promotions and flyers for the club’s ‘1st Annual Full Throttle HotRod Custom Car and Bike Show’, to be held on 2 February 2014, feature use of the following trade mark:

1. The above trade mark[15] is also present on sponsorship agreements for the event. At this event in February 2014, a dispute arose between the Opponent and members of the club. The Opponent and Mr Cosoleto were asked to step down from their positions in the club and refused. The other members of the club had a meeting and decided to form the Applicant but first they filed the above trade mark no. 1602954 under Mr Gau’s name. The Opponent continued to attend ASRF meetings as the appointed delegate of the unincorporated club.

   [15] Trade mark application no. 1602954 in the name of the Applicant.

2. Jorge Gau is the public officer for the Applicant, which was incorporated on 27 February 2014, the day before Anthony Cutri filed the opposed trade mark application. Exhibit TM-01 to Gau is a declaration of Frank Calesse, the designer of the various club logos (including the Trade Mark). The exhibit provides examples of logos and what appears to be Trade Mark no. 1602954 is shown, dated 15 July 2013 and accompanied by the words ‘ArtWork by Francesco Calesse’. Amongst the other logos created, the Trade Mark appears as the most recent example created by Mr Calesse on 17 February 2014.

3. The evidence provided by the Opponent in this opposition does not (on its face) demonstrate any use prior to the filing of the Trade Mark by a party other than the Applicant. After scrutinising the evidence provided in this opposition and the inconsistencies that it contains, I cannot be satisfied that the Opponent has discharged the onus of establishing prior use of a trade mark substantially identical to the Trade Mark before the filing date, such that the Applicant’s prima facie claim to be the exclusive owner (arising from the act of filing the Trade Mark) is disturbed.

4. On the balance of probabilities, I find that the ground of opposition under section 58 of the Act has not been established.

Section 44

1. Section 44 of the Act relevantly provides:

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)the similar goods or closely related services; or

   (ii)the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

2. Under the section 44 ground, the Opponent must establish the existence of an earlier filed trade mark that is not only substantially identical with, or deceptively similar to the Trade Mark, but also is in respect of similar services or closely related goods. The relevant details of the pending[16] trade mark application relied upon by the Opponent in this opposition are:

   Trade Mark No: 1607595

   Trade Mark: Full Throttle Hot Rod & Custom Car Club (‘the Opponent’s trade mark’)

   Priority Date: 26 February 2014

   Specification of Services: Class 41: Social car club services
   

   [16] Currently under opposition by the Applicant.

   Endorsements: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

3. It is worth reiterating that at the examination stage, the Trade Mark was accepted under the provisions of s44(4) as the Applicant satisfied the examiner that it had continuously used the Trade Mark since before the 26 February 2014 filing of the Opponent’s trade mark. While I may have regard to the decision made during examination, I am in no way bound by it and must take into account the particular evidence filed for this opposition.

4. At the same time, the Opponent’s trade mark had also been accepted under the provisions of subsection 44(4) as the Opponent satisfied the examiner that he had continuously used the Opponent’s trade mark since before the 29 January 2014 filing date of the Applicant’s earlier trade mark. The details of the Applicant’s earlier trade mark can be seen below:

   Trade Mark No. 1602954

   Priority Date: 29 January 2014

   Trade Mark:

   Specification of Services: Class 41: Provision of social club services, being social car club services

5. Turning to the issues at hand, it is evident that the Opponent’s trade mark has an earlier priority date than the Trade Mark (by 2 days) and is in respect of ‘social car club services’ which are similar services[17] to the Applicant’s services. The Applicant did not contest these points and further conceded that the Trade Mark and the Opponent’s trade mark were substantially identical.

   [17] See section 41(2) of the Act.

6. On the question of substantial identity, Windeyer J in the case of Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd set out the relevant test for comparison: 

   [the trade marks] should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[18]

   [18] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, (414-415).

1. Despite the concession from the Applicant on this point, I find that the Trade Mark is not substantially identical to the Opponent’s trade mark on a side by side comparison. The Opponent’s trade mark is simply the expression ‘Full Throttle Hot Rod & Custom Car Club’ absent any other indicia and the Trade Mark is ‘Full Throttle Custom Car Club Australia Est. 2013’ presented in a particular font and layout and accompanied by a large and stylised device of the spades suit. The visual, aural and conceptual differences preclude a finding that there is a ‘total impression of resemblance’ between the trade marks.

1. The consideration of whether trade marks are deceptively similar[19] requires a different approach. As Dixon and McTiernan JJ stated in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd:

   [T]he marks ought not ... to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same ... The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.[20]

   [19] See the definition in section 10 of the Act.

   [20] [1937] HCA 51; (1937) 58 CLR 641, (658).

2. The similarities between the words in the respective trade marks cannot be overlooked when one is considering the likely impression on the mind of the relevant consumer. In this context, the omission of the word ‘Hotrod’ and the addition of ‘Australia’ are slight differences unlikely to be noticed. Further, it is evident that one trade mark contains a distinctive device element and the other does not, but I am not convinced that this difference would avoid a real, tangible danger of deception or confusion[21] arising from use of the Trade Mark. The similarities in the respective expressions and the more distinctive ‘Full Throttle’ common to both trade marks is the element that would fix itself in the recollection[22] of the relevant Australian consumer. I therefore find that the Trade Mark and the Opponent’s trade mark are deceptively similar.

   [21] Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, (p595).

   [22] See Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, (162).

3. While it is true that the Opponent’s trade mark is pending and currently under opposition, the wording of section 44 clearly contemplates deceptive similarity on the basis of a trade mark whose registration is being sought. The Opponent’s trade mark constitutes a bar to registration and remains so as at the date of this decision.

4. On the face of it, I find that the primary elements of section 44(2) of the Act have been satisfied. The onus now shifts to the Applicant to satisfy the Registrar that the Trade Mark may be accepted under the provisions of prior continuous use (s44(4)) or honest concurrent use/other circumstances (s44(3)). On this point, the written submissions from the Applicant’s legal representative provide:

   The opponent submits it is the Applicant of mark number 1607595, which is substantially identical to the Opposed mark subject of the Opposition here. This is not disputed. The Opponent acknowledges the application number 1602954, which is the Applicant’s name. The Applicant therefore has the earliest priority date of a Full Throttle, and in the present Trade Mark Application successfully provided evidence of its prior use to overcome the Opponent’s 1607595 application. Therefore, the Opponent is unable to establish its opposition under section 44.

5. These arguments from the Applicant’s representative contain a number of deficiencies. Firstly, trade mark no. 1607595 is not substantially identical to the Trade Mark (although it is, as I have found, deceptively similar to it). Secondly, trade mark no. 1602954 is not the Applicant’s name (i.e. ‘Full Throttle Custom Car Club Australia Incorporated’), but a composite trade mark consisting of prominent device elements and the different expression ‘Full Throttle Hotrod & Custom Car Club’. However, the earlier trade mark is ‘in’ the Applicant’s name, if that was what was intended by the Applicant’s submissions. Thirdly, although the Applicant provided evidence of prior use during examination for the Trade Mark to be accepted, that is not the end of the matter. Opposition proceedings under section 52 of the Act effectively consider the issue afresh, and the Applicant still bears the onus of satisfying the Registrar that it is appropriate for the exceptions under section 44(4) or 44(3) of the Act to be applied. In that regard, I turn to the evidence provided by the Applicant for the purposes of this opposition.

Section 44 (4): Prior Continuous Use

1. The provisions of section 44(4) make it clear that for this matter the Applicant must establish use of the Trade Mark prior to 26 February 2014 (being the filing date of the Opponent’s trade mark). Use after this date will not be relevant to the consideration. Furthermore, the use must be in the course of trade and use by a predecessor in title[23] is taken, for the purposes of the Act, to be use by the Applicant for the Trade Mark.

   [23] For the definition of a predecessor in title, see section 6 of the Act.

2. Use of the Trade Mark also includes use with additions or alterations that do not substantially affect the identity of the Trade Mark.[24]

   [24] Section 7(1) of the Act.

3. The Applicant was incorporated on 27 February 2014 being one day after the filing of the Opponent’s trade mark. Accordingly, any prior use of the Trade Mark relied upon by the Applicant must have been conducted by a predecessor in title, which includes Anthony Cutri.

4. As mentioned earlier, exhibit TM-01 to Gau set out the design history of the various ‘Full Throttle’ logos, and the specific representation of the Trade Mark was created on 17 February 2014, being only nine days before the Opponent filed his trade mark application on 26 February. Considering the evidence supplied, any use of the Trade Mark (as applied for) occurs after 27 February 2014 and the invoices for club clothing are largely dated from the following year.

5. Instead, the Applicant has claimed earlier use on the basis of the use of trade mark no. 1602954. For ease of reference I have reproduced the two trade marks below:

1. The essential features of the trade marks may be seen as the expression “Full Throttle” and the device element of the spades suit. In relation to the differences between the device elements, the Trade Mark no longer features the representations of the two cars (a ‘custom car’ and a ‘hotrod’). This is reflected in the subsequent words where ‘Hotrod & Custom Car Club’ has evolved to ‘Custom Car Club Australia’. The removal of the car devices in the Trade Mark signals the Applicant’s intention to move away from ‘Hotrods’, an intention also made clear in the incorporated name of the Applicant. Those word changes cannot be ignored in the overall comparison, but since the words in question are descriptive of the type and location of the social car club services offered, they would not be seen as the essential features of the trade marks. Further, it may be argued that the car devices are simply illustrations[25] of the descriptive words within the earlier trade mark. I am accordingly satisfied that there is an overall impression of resemblance between the trade marks when compared side by side.

   [25] E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15, [69].

2. Nevertheless, I reiterate that there is much ambiguity surrounding the chain of title to the Applicant and whether the Applicant (or indeed the Opponent) can legitimately claim the earlier use of a relevant trade mark by the unincorporated club as its own use is in doubt. Accordingly, I am not satisfied that the Applicant has demonstrated prior continuous use of the Trade Mark and the provisions of section 44(4) of the Act do not apply. A result of this finding is that the ground of opposition under section 58A of the Act (which is reliant on the application of section 44(4)[26]) cannot be established. 

   [26] See section 58A(1) of the Act.

Section 44(3)(b): ‘Other circumstances’

1. There is insufficient evidence of honest concurrent use of any trade mark before me, let alone of the Trade Mark, and section 44(3)(a) is not available to the Applicant in this matter. However, I do find that the circumstances before me are entirely relevant to the application of section 44(3)(b) of the Act.

2. As I have mentioned, both the Opponent and the Applicant lay claim to the first use of trade mark no. 1608950 as theirs by virtue of being members (or in the Opponent’s case, also being President) of the same club. I find that the circumstances in this opposition have parallels with the circumstances in matters where competing traders derive their trade mark rights from the same source. The decision in No Name Restaurants (Cesare) Pty Ltd v No Name Restaurants Pty Limited[27] is one such opposition where trade mark rights were derived from the same source and the provisions of honest concurrent use and other special circumstances were applied under section 34(1) of the (now repealed) Trade Marks Act 1955 which was the equivalent of section 44(3) of the Act. In addition, the decision in The Totally and Permanent Disabled Soldier's Association v The Australian Federation of Totally & Permanently Incapacitated Ex-Service Men & Women Limited[28] also addressed analogous vexed ownership issues and the delegate applied the provisions of section 44(3)(b), finding in that decision:

   [I]t appears that each party has a right to an identical claim in 'first use' of the mark - and such a claim cannot override the claim of the other party.

   [27] [1996] ATMO 63; 36.488; 91-301.

   [28] [2001] ATMO 63.

3. In Maydel Extrusion Industries Pty Ltd v Plastic Extruders Ltd the delegate was more circumspect on the facts, but she also found:

   Given that this matter relies more upon to whom the benefit of use enures, rather than whether there is sufficient use to satisfy either prior continuous use or honest concurrent use, I consider the most appropriate provision to determine the matter under is subsection 44(3)(b).[29]

   …

   Given the lack of documented use, I consider it more appropriate to reflect that the circumstances between the parties are such that registration is proper rather than reflecting that prior use has been established.[30]

   [29] [2015] ATMO 60, [29].

   [30] Ibid, [40].

4. I consider that the facts and circumstances (set out earlier) are analogous and a similar approach is appropriate. Here, the Applicant’s earlier trade mark application predates the Opponent’s trade mark by a month. According to the evidence before me, the Applicant is now intending to focus its social club services on custom cars alone (rather than including hot rods) and the subsequent use of the Trade Mark (rather than use of the earlier trade mark application) indicates that this is the intended way forward for the Applicant, whatever may have occurred in the past. I would also add that in circumstances such as these, the Applicant is entitled to the presumption of registrability.

5. Accordingly, I consider that other circumstances make it proper for the Trade Mark to be accepted under the provisions of section 44(3)(b). The ground of opposition under section 44 of the Act has accordingly not been established.

Other Grounds of Opposition

1. The Opponent submits that the use of the Trade Mark would be likely to deceive or cause confusion under section 43 of the Act because of an inherent connotation it contains. The connotation identified by the Opponent is that arising from the Trade Mark’s similarity to the Opponent’s trade mark. However, established precedent in this area indicates that the connotation must be inherent in the Trade Mark itself and not from its similarity to another trade mark.[31] The ground of opposition under section 43 of the Act has therefore not been established.

   [31] Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599, [53].

2. The Opponent has not provided any evidence in support of the section 59 ground which is sufficient to upset the presumption arising from the act of filing that the Applicant intends to use the Trade Mark. Further, there is clear evidence of use of the Trade Mark after filing and, on that basis, I find that the ground of opposition under section 59 cannot be established.

3. As mentioned above, the evidence of use of any trade mark before the priority date of the Trade Mark by the Opponent is not substantial or significant. It is certainly not sufficient to demonstrate the requisite reputation[32] under section 60(a) of the Act. Any deception or confusion that may result from the use of the Trade Mark would not be due to a prior established reputation in another trade mark. I therefore find that the ground of opposition under section 60 of the Act has not been established.

   [32] See Renaud Cointreau & Cie v Cordon Bleu International Ltee (2001) 52 IPR 382; [2001] FCA 1170 and ConAgra Inc. v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193.

4. It follows from the section 60 ground that the evidence from the Opponent additionally does not support the proposition that the use of the Trade Mark ‘would’[33] be contrary to law. The Registrar cannot be satisfied that it would constitute a breach of ‘The Australian Consumer Law’ provisions (as the Opponent has briefly argued). I am not satisfied that use of the Trade Mark would be contrary to law under s42(b) and I find that this ground has not been established.

   [33] Not ‘could’: See Advantage Rent - A-Car Inc. v Advantage Car Rental Pty Ltd [2001] FCA 683; (2001) 52 IPR 24, [28].

5. The written submissions from the Opponent’s legal representative also argued that the filing of the Trade Mark was in bad faith and calculated to “stop Mr Cavasinni using the trade mark that has been continuously used since July 2013” and also “as a backstop in the event that Mr Cavasinni is successful in opposing trade mark 1602954”. The evidence before me simply does not support these allegations as the Applicant has actually used the Trade Mark after filing. In essence, I find that the act of filing the trade mark application was not of ‘an unscrupulous, underhand or unconscientious character.’[34] The evidence does not establish that the application was made in bad faith, as provided for under section 62A. This ground is not established.  

   [34] Fry Consulting Ltd v Sports Warehouse Inc. (No 2) [2012] FCA 81, [166].

Decision

1. Section 55 of the Act relevantly provides:

55Decision

(1)Unless subsection (3) applies to the proceedings, 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.

1. A ground of opposition under the Act has not been established. As a result, the opposition is unsuccessful. I direct that trade mark application no. 1608950 proceed to registration after one month from the date of this decision with the following endorsement:

   Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied

2. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been dismissed or discontinued. In the event of a decision from the court, the trade mark application will be subject to that order.

Costs

1. The opposition has not been successful, and I therefore award costs against the Opponent under section 221 of the Act in accordance with the relevant amounts in Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson
Hearing Officer
Oppositions and Hearings
7 June 2017