Geoffrey Inc v MHS Engineering Pty Ltd

[2005] ATMO 35

TRADE MARKS ACT 1995

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

Re:Opposition by Geoffrey, Inc to registration of trade mark application 837237(35) - EMPLOYMENT.R.US - filed in the name of MHS Engineering Pty Ltd.

Delegate:	Terry Williams
Representation:	Opponent: Andy Chrysiliou, solicitor, Chrysiliou Law Applicant: no appearance
Decision:	S52 opposition: s 58: adverse inference drawn from past history including coining trade mark with an element that, standing separately, is alleged to be of some notoriety – registration refused

Background

1. MHS Engineering Pty Ltd (MHS) has applied to register the trade mark EMPLOYMENT.R.US in respect of “Business management, employment agency services, business administration, office functions”.  While the application has been examined and accepted by the Trade Marks Office for registration, such a registration is now opposed by Geoffrey, Inc (Geoffrey).  Geoffrey is the owner of the trade mark TOYS R US and is a quite well-known toy sales outlet.

2. As is usual in such matters, Geoffrey served evidence in support of its opposition, a process governed by Part 5 the regulations under the Trade Marks Act 1995.  MHS has not responded in any way or taken any part in the opposition proceedings.  I have now conducted a hearing and am to decide the opposition, under delegation from the Registrar of Trade Marks.

3. What makes the present matter somewhat unusual is that a significant part of the evidence that Geoffrey relies on in the present matter was recently considered by my colleague Hearing Officer Thompson.  This was when Geoffrey relied on some of the same material in opposing registration of a quite different trade mark, GLASS R US.  At that time, Geoffrey was unsuccessful in impeding the progress of the GLASS R US trade mark to registration, though it appealed the decision to the Federal Court with the result that the trade mark application was withdrawn and the appeal finalised without decision.

   Relevant Issues

4. When the present matter came on for hearing, Geoffrey was represented by Andy Chrysiliou, solicitor.  Mr Chrysiliou noted that Geoffrey relies on a number of grounds, those provided by sections 42(b), 43, 44 and 60 of the Act.  In essence, Geoffrey objects to the usage of trade marks that incorporate R US.  In the present matter Mr Chrysiliou also pointed out that Geoffrey is a not-insignificant employer in the retail sector.  He also posited a real conflict between the employment activities of MHS and the employment opportunities available with TOYS R US.  In doing so, he quite understandably urged me to find that certain conclusions drawn by Hearing Officer Thompson, when Geoffrey relied on some comparable grounds in GLASS R US, were not appropriate in the present matter. 

5. As matters turn out, Geoffrey is successful in the present matter.  However, its success is, in my opinion though doubtless not that of Geoffrey, clearest on a single ground that is quite removed from the GLASS R US opposition.  I would not wish to put Geoffrey in the almost ridiculous position of wishing to appeal a finding in its own favour now, simply because there are other grounds on which it might not relish my conclusion.  Therefore I will simply say that, while I have every faith in the conclusions reached by Hearing Officer Thompson, I intend to deal with only a single ground of opposition, that under s 58.

   Section 58 – Ownership

6. The scheme of making an application is that the making of the application becomes a claim to ownership.  See Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 401 on the importance of intention to use when applying for a mark not previously used in Australia. Consequently, where that claim is not backed by an intention to use, the claim to ownership is fatally flawed. In the present matter, the intentions of MHS have been cast under a shadow by past conduct.

7. In the present matter, Geoffrey has filed and served evidence that MHS has previously tried to register the trade marks DIGIMON and DIGITAL DIGIMON MONSTERS.  Those applications are numbers 837238 and 837239 respectively.  The applications were filed in respect of “clothing, hats, games/toys/electronic games” and “Games, toys, cartoons”.  Those applications lapsed, the examiner pointing to the prior registration of DIGIMON as a trade mark for toys by Kabushiki Kaisha Bandai.  In the evidence in support of the present opposition, Exhibit JFR 7 of the Redenbach declaration shows that Geoffrey has promoted and advertised DIGIMON toys, “the original battling digital monster”.  There is no reason to believe that the source of goods sold under the trade mark was MHS, and I think it is common knowledge that the trade mark DIGIMON is by no means an obscure one.

8. The present applicant is aware of the opposition proceeding but has declined to take part.  I find it curious, to say the least, that what appears to be an engineering company should adopt, or rather, by making an application, purport to be the owner of, trade marks as diverse as the one now at issue and those to which I have just referred.  The inference I draw from this is that the present applicant is in the habit of “adopting” trade marks of some notoriety, or (as here) of coining trade marks with an element that is, standing separately, alleged to be of some notoriety. 

9. I am aware, from my own experience, that there are more than a few such applicants.  They sometimes succeed because their applications either do not encounter prior applications or slip through the net of examination.  See, for instance, Danjaq, LLC v Resource Capital Australia Pty Ltd[1], in relation to the trade mark JAMES BONDI.  However, when such a party is opposed and finds its intention to use the mark called into question, and facts are in the evidence that support an adverse inference, I think that such an applicant is under an onus to show its bona fides.

   [1] [2004] ATMO 18

10. While the evidence impugning the legitimate intentions of MHS in making this application is slight, “slight evidence will suffice”[2] when the opponent has the difficult task of “proving” a lack of intention to use, just as much as it does in relation to proving a lack of actual use.  Again, the court seizes on small evidence to deter sharp but not unlawful business practice[3].  That is a truism in relation to ownership matters based on prior use.  However, it also suggests that I should not lean against adverse inferences where these go to intention to use, the keystone of ownership in the absence of use.

    [2] Estex Clothing Manufacturers Pty. Limited v. Ellis and Goldstein Limited, 116 CLR 254 at 258:

    [3]  The Seven Up Co v OT. Ltd (1947) 75 CLR 2O3 at 211

11. I note that in Jones v Dunkel[4] Kitto J said at 312:

    (i)      that the absence of the defendant Hegedus as a witness cannot be used to make up any deficiency of evidence; (ii) that evidence which might have been contradicted by the defendant can be accepted the more readily if the defendant fails to give evidence; (iii) that where an inference is open from facts proved by direct evidence and the question is whether it should be drawn, the circumstance that the defendant disputing it might have proved the contrary had he chosen to give evidence is properly to be taken into account as a circumstance in favour of drawing the inference.

    Accordingly, in the lack of any answer from the applicant, I find the ground of opposition established.

    [4] (1959) 101 CLR 298

    Conclusion

12. I refuse to register the trade mark.  I direct that the applicant pay the costs of Geoffrey Inc.

    Terry Williams
    Hearing Officer
    Trade Marks Hearings
    30 June 2005