Fresh Trade Australia Pty Ltd v Fauconshawe Holdings Pty Ltd
[2006] ATMO 37
•8 May 2006
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Fresh Trade Australia Pty Ltd to registration of trade mark application 964731(31) - $$ DOUBLE DOLLAR - filed in the name of Fauconshawe Pty Ltd.
Delegate: | Deirdre O'Brien |
Representation: | Opponent Did not appear or file written submissions Applicant Ed Heerey of counsel instructed by Griffith Hack, patent and trade mark attorneys |
Decision: | Section 52 opposition Ground under section 59 made out. Registration may proceed for limited goods. No award of costs. |
Background
Fauconshawe Holdings Pty Ltd (‘the applicant’) has applied for registration of the following trade mark:
Application Number: | 964731 |
Priority date: | 6 August 2003 |
Goods: | Class 31: Fresh fruits and vegetables |
Trade Mark: | |
Acceptance advertised: | 18 December 2003 |
Fresh Trade Australia Pty Ltd (‘the opponent’) has opposed registration. After both parties had filed and served their evidence the matter came to a hearing before me, as delegate of the Registrar of Trade Marks, in Canberra on 29 March 2006. The applicant was represented by Mr Ed Heerey of counsel (instructed by Griffith Hack, patent and trade mark attorneys) who appeared by videoconference. The opponent did not appear or file written submissions.
The evidence filed and served by the parties is as follows:
| DECLARANT | MADE | EXHIBITS | KNOWN AS |
| Evidence in support | |||
| John Dawson | 14.12.2004 | JD1 to JD6 | Dawson |
| Evidence in answer | |||
| Brian Ceresa | 13.05.2005 | BRC1 & 2 | Ceresa |
Grounds of opposition
The notice of opposition contains all the available grounds of opposition in the Trade Marks Act1995 (‘the Act’). The onus is on the opponent to make out one or more of those grounds[1]. It is usual in opposition proceedings that come to a hearing for the opponent to make submissions in support of its notice of opposition and evidence. In this case the opponent has chosen not to make submissions, either at the hearing or in written form. Thus, in order for registration to be refused, I must be satisfied from the evidence that at least one of the grounds has been established.
[1] Kowa Company Ltd v NV Organon (2005) 66 IPR 131 at 153
It seems to me the only grounds that are arguably supported by the evidence are those based on sections 58 and 59. The threshold test for section 60 is trade mark reputation in Australia at the date the present application was filed (6 August 2003). The opponent’s evidence fails to establish any such reputation. There is nothing in the evidence which goes to whether or not the present trade mark is capable of distinguishing (section 41), nor are there any examples of earlier trade mark applications or registrations which may conflict with the present (section 44). The evidence does not go to the trade mark being scandalous or its use being contrary to law (section 42). Not does it go to connotation (section 43), the presence of a false geographical indication (section 61), or that acceptance was based on false material particulars (section 62). Accordingly I find the opponent has not met its onus with respect to the grounds pursuant to sections 41, 42, 43, 44, 60, 61 and 62.
Section 58 ground
The opponent’s evidence does go to the applicant not being the owner of the present trade mark (section 58). According to Mr Dawson, a director of the opponent, in 2003 both he and Mr Brian Ceresa[2] were directors of the company Fresh Trade Enterprises Pty Ltd (‘FTE’). Mr Dawson says one of the trade marks used by FTE was a trade mark consisting of double dollar signs - $$ - and that it was used in relation to oranges exported to Malaysia. Mr Dawson says that when FTE ceased trading he purchased its assets including the $$ trade mark. There was no formal documentation of this sale, says Mr Dawson, but in evidence is an email[3] from Mr Dawson to Mr Ceresa in which Mr Dawson breaks down his proposed purchase of FTE’s assets for $20,000 to include an amount of $10,000 for ‘brands’.
[2] Mr Ceresa is now a director of the applicant.
[3] JD4 to Dawson declaration
The applicant’s version of events is different. It confirms FTE’s use of the $$ trade mark and says that following the mutual decision by Messrs Dawson and Ceresa in July 2003 that FTE would cease trading, FTE’s office equipment was sold to Mr Dawson. It says no mention was made of the $$ trade mark being included in that sale. The only trade mark sold following the breakdown of the business relationship was, the applicant says, the registered trade mark SUNRISE[4]. That sale was to a third party in October 2003 and is documented in the applicant’s evidence[5]. FTE had not registered the $$ trade mark, nor had it applied for registration.
[4] Registration 544722
[5] BRC1 to Ceresa declaration
Both parties agree that FTE was the first to use the $$ trade mark. The threshold test for section 58 is use by another party of the same trade mark or of a substantially identical trade mark[6]. Applying the accepted test for substantial identity[7] I find there is an overall impression of similarity between the $$ trade mark used by FTE and the present trade mark and that they are substantially identical.
[6] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 at 391
[7] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414
Given this finding, I need to decide whether FTE’s use of the substantially identical $$ trade mark displaces the applicant’s claim to ownership of the present trade mark. In its submissions the applicant points out that trade mark ownership is not defined by statute but by common law. At common law the owner of a trade mark is the party who first used the trade mark in Australia[8]. The applicant says that use of a trade mark in relation to goods which are exported is not trade mark use in Australia. For that reason, the applicant says, FTE’s use of the $$ trade mark in relation to oranges exported to Malaysia does not make it the owner at common law in Australia. The applicant cites the delegate’s decision in Freighter (Australia) Pty Ltd v Freightliner Corporation[9] as support for its argument that trade mark ownership must be founded in public use as a trade mark in Australia.
[8] Shell Co (Aust) Ltd v Rohm & Haas Co (1949) 78 CLR 601 at 628
[9] (1992) AIPC 90-862 at 30,222
It has not been judicially considered whether use of a trade mark on goods for export is sufficient to establish trade mark ownership in Australia. The applicant notes that subsection 228(1) allows the Registrar to deem use of a trade mark on goods for export as being trade mark use in Australia but argues such deeming is limited to trade mark use ‘for the purposes of this Act’[10]. Such purposes, it says, include trade mark use in order to establish honest, concurrent use or prior use pursuant to section 44 or to rebut an allegation of non-use pursuant to section 92. The applicant says section 58 does not define ownership and there is no mention elsewhere in the Act of a claim to ownership being contingent on being the first party to use a trade mark. Accordingly, the applicant argues, the ‘deeming’ provision does not apply. It contends that in applying the common law test for ownership I must disregard FTE’s use on export oranges.
[10] Section 228 provides inter alia:
(1)If:
(a)a trade mark is applied in Australia:
(i) to, or in relation to goods that are to be exported from Australia (export goods); or
(b)(ii) …
the application of the trade mark … is taken, for the purposes of this Act, to constitute use of the trade mark in relation to the export goods … .
That is an interesting argument although I note that section 228 has been interpreted differently in previous decisions by the Registrar’s delegate[11]. However I am not required to decide the merits of the applicant’s argument as FTE’s use of the $$ trade mark ceased in 2003 with the mutual decision by Messrs Dawson and Ceresa to wind up the business. If FTE did have a valid claim to ownership of the $$ trade mark at common law, that claim fell away when FTE abandoned use of the trade mark. The opponent can only rely on FTE’s first use if it is able to establish that Mr Dawson’s purchase of FTE’s assets included its goodwill[12] so that any common law rights FTE may have had to the $$ trade mark were transferred to Mr Dawson.
[11] Sushi King Pty Ltd v Sushi Kin SDN BHD [1999] ATMO 42; Virbac (Australia) Pty Ltd v Dermcare-Vet Pty Ltd [2001] ATMO 16
[12] Rights to an unregistered trade mark can only be transferred at common law in conjunction with the transfer of the goodwill of the business which used the trade mark.
The opponent is certain rights to the $$ trade mark were included in the purchase but I am not satisfied from the evidence that this is so. I do not wish to infer the opponent is being deliberately untruthful. The evidence shows the breakdown of the business relationship between Messrs Dawson and Ceresa was a painful one. Communication between the two was obviously difficult and it is not surprising that each has a different perception of events. I can only base my decision on what is documented in the evidence. While there is a document to substantiate the sale of FTE’s SUNRISE trade mark, there is no such evidence of the sale of the $$ trade mark and/or of the goodwill associated with FTE’s business. The evidence shows Mr Dawson wanted to purchase FTE’s ‘brands’ but it is clear from the sale of the SUNRISE trade mark to another party that the purchase did not go ahead as Mr Dawson proposed. The parties agree that Mr Dawson purchased FTE’s office equipment but the applicant disputes the sale of anything else. In view of the conflicting views of the parties and the lack of any documentation of the sale, I cannot be satisfied that FTE’s rights to the $$ trade mark (if any) were transferred to Mr Dawson.
In October 2003 the opponent commenced use of the $$ trade mark, that is, after it had been abandoned by FTE. In the meantime the applicant had applied to register the present trade mark for fresh fruits and vegetables. The opponent’s October 2003 trade mark use therefore cannot dislodge the applicant’s claim to ownership of the present trade mark.
In summary, there is information in the evidence which goes to the section 58 ground. It contains such ambiguities and inconsistencies, however, that I am not satisfied the ground has been established.
Section 59 ground
Section 59 provides:
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.
The opponent alleges that when the business relationship between Messrs Dawson and Ceresa broke down, Mr Ceresa said he was no longer interested in exporting oranges but intended to deal in stone fruit. That is not disputed by the applicant, although Mr Ceresa in his declaration claims he did not limit his options to just the stone fruit industry. Nonetheless it is clear that Mr Ceresa did intend to leave the citrus fruit industry.
Although Mr Ceresa is not the applicant, he is a director of the applicant and I am satisfied Mr Ceresa’s intention not to trade in citrus fruit was also the applicant’s intention when it applied to register the present trade mark. The trade mark application, being for all fruit and vegetables in class 31, encompasses citrus fruit. Accordingly I find the section 59 ground has been made out with respect to citrus fruit.
Decision
As I have found the section 59 ground has been made out with respect to citrus fruit, I intend to refuse to register application 964731 unless the applicant asks within fourteen days of the date of this decision for its goods to be amended to ‘Fresh fruits and vegetables excluding citrus fruit’. If the application is so amended, I direct that application 964731 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time I direct that registration shall not occur until the appeal has been decided or discontinued.
Costs
The applicant has sought its costs, however as the opponent has been partially successful I decline to make such award. Both parties are to bear their own costs.
Deirdre O'Brien
Trade Marks Hearings
8 May 2006
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