Glenn David Forbes and Anthony C. Forbes v Afar Holdings Pty Limited

[1995] ATMO 28

TRADE MARKS ACT 1955

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

Re:Opposition by AFAR HOLDINGS PTY. LIMITED to the registration of Trade Mark application number 535515 in the name of GLENN DAVID FORBES and ANTHONY C. FORBES

Application No. 535515 was lodged on 4th June 1990 in the name of GLENN DAVID FORBES and ANTHONY C FORBES (the applicants).  The application was for registration of the mark shown below:

It sought registration of the mark in respect of "being (sic) all goods included in this class", namely, class 25.  The application was advertised as accepted for registration in the Official Journal of 9th January, 1992.  Pursuant to the provisions of sub-section 49(1) of the Act, notice of opposition was lodged on 9th April 1992 by AFAR HOLDINGS PTY. LIMITED (the opponent).  The main grounds of the opposition, as stated in the notice and argued at the hearing, are based on s 40, that the applicants are not the proprietors of the subject mark and therefore are not entitled to apply for its registration; on s 33, that the mark is substantially identical with, or deceptively similar to, the opponent's mark IN SPORT; and on s 28, that the use of the applicant's mark would be likely to deceive or cause confusion, and that its use would be contrary to law, or otherwise not entitled to protection in a Court of Justice.

The Evidence

Service of the opponent's evidence in support, which comprises a statutory declaration by Joseph Shalala (Shalala's first declaration), together with exhibits JS1 to JS6, was effected on 12th November 1992.  The applicants' evidence in answer, consisting of a statutory declaration by Glenn David Forbes with annexures 1 to 8, was served on 12th March 1993.  In turn, the opponent served its evidence in reply, a statutory declaration by Joseph Shalala (Shalala's second declaration), together with exhibits A, B and C, on 12th December 1994.    

Mr Shalala, the managing director of the opponent company, states in his first declaration that the first use of the mark IN SPORT occurred in 1984 in relation to shorts, the market being progressively expanded to other articles of clothing and sporting goods.  The sales value of these goods increased from $5,100.00 for 521 items of goods in 1984 to $699,100.00 for 44,765 items in 1992, being $1,996,400.00 in total, of which $1,687,900.00 represents sales of clothing.  The total amount of expenditure for advertising, packaging and labelling for the same period is stated as $155,918.00.  Mr Shalala declares further that at the end of the financial year of 1992, the opponent operated 12 retail outlets, which are situated in and around Sydney and in the cities of Campbelltown and Liverpool.  Even though exhibit JS3 is said to contain copies of advertisements showing the mark IN SPORT in use, in the six advertisements, the first dated 13th November 1985, the words appear as a business name featuring goods bearing different trade marks of a number of sports clothing and footwear.  Other exhibits affixed to the declaration, however, demonstrate use of the opponent's mark IN SPORT.  Mr Shalala also provides details of the opponent's pending applications Nos 556351 in class 25, 556353 in class 28 and 556354 in 42. 

Mr Forbes, whose declaration constitutes the evidence in answer, is a co-applicant of the present application and the proprietor of the Cannibal Clothing Company, which company sells sports clothing to retail outlets under the subject trade mark.  The mark was first used in the financial year 1989/90, total sales at the end of the financial year of 1992 amounting to $99,663.50.  The company has expended approx. $5,000.00 a year on advertising, comprising magazine advertisements, distribution of stickers and radio advertising.  In addition to advertising, approx. $4,500.00 annually is spent on sponsorship of various athletes to further the subject mark.  Mr. Forbes' exhibits consist of advertising material and samples of the subject mark in use. 

Under exhibit A attached to Mr Shalala's second declaration is a certified copy of a business name registration for Cannibal Sportswear, showing the proprietor of the business to be Mr Glenn Forbes.  Mr Shalala comments that it is his understanding that under s 35 of the Act, if two or more persons claim to be joint proprietors of a trade mark, then the mark shall only be used in relation to goods or services with which all the proprietors are connected in the trade and, under B, he exhibits a copy of the examiner's report stating that only one of the joint proprietors signed the present application.  Exhibit C consists of a list of the opponent company's stores which sell goods bearing the mark IN SPORT and also carry out retail services in relation to sporting goods and clothing under the mark. 

The applicants applied for a hearing to determine the opposition.  It was set down before me in Sydney as the Registrar's delegate on 28th February 1995.  Mr Glenn Forbes represented the applicants.  Appearing for the opponent was Mr Peter Maxwell, of Peter Maxwell and Associates, patent and trade mark attorneys of Sydney.

Submissions
Having discussed in considerable detail the contents of Mr Shalala's first declaration, Mr Maxwell referred to Mr Forbes' declaration, first commenting that it was of interest to note that Mr Forbes states that he himself - and not himself and Anthony C Forbes - is the proprietor of the business Cannibal Clothing Company.  He observed that the subject mark was not used until the financial year 1989/90, and that Mr Forbes had not provided separate sales figures representing the goods under the mark in question.  Comparing the opponent's sales figures with those of the Cannibal Clothing Company during the period 1991/92, Mr Maxwell considered the figures of the latter paled into insignificance, particularly having regard to the sales representing 87 retail outlets.  He remarked that Mr Forbes had not indicated whether or not the goods of the subject mark were sold prior to the date of the present application.  He further surmised that the advertising expenditure, the advertising material and the sponsorships related to well after the lodgment of this application. 

Turning to Mr Shalala's second declaration, particularly exhibit A, Mr Maxwell commented that, although the copy of the Certificate of Registration of the Business Name does not indicate it relates to New South Wales, he tendered a copy of his firm's Certificate of Registration showing the same logo which appears on the copy of exhibit A, and a copy of the Business Names Extract obtained from the Australian Securities Commission database in respect of the business name Cannibal Sportswear to establish that, contrary to Mr Forbes' statement, his business name was registered in New South Wales as Cannibal Sportswear, with Glenn Forbes alone carrying on the business, not the Cannibal Clothing Company.  That business name had been registered at the time of lodgement of the present application.  In this connection, he directed my attention to the reference of s 35 in Mr Shalala's second declaration, arguing that it was clear from Mr Forbes' statements that he regarded himself to be the proprietor of the subject mark and had continued using the mark in contravention of that section.  Consequently, he said, the applicants of the present application were not proprietors of the mark in respect of which this application is sought, within the meaning of s 40 of the Act.     

He further argued that any use of the subject mark would accrue to the benefit of Cannibal Clothing Company and not to the applicants of this application, therefore the mark was not distinctive of the goods of the joint applicants at the date of the application.

He set out the particulars of the opponent's applications for the series of marks:

which are the subject of the following applications:

No. 556351 in class 25 in respect of "clothing, footwear, headgear, towels and all other goods included in this class";

No. 556353 in class 28 in respect of "games and play-things; gymnastic and sporting articles, footballs, shinpads, sporting bags, bags, travelling bags and all other goods included in this class"; and

No. 556354 in class 42 in respect of "retail services in relation to sporting equipment, sporting goods clothing and all other services included in this class".

Relying on the cases Saville Perfumery Limited v June Perfect Limited (1941) 58 RPC 147 and De Cordova v Vick Chemical Co (1951) 68 RPC 103, Mr Maxwell submitted that the inclusion of the essential feature and distinct part IN SPORT of the opponent's trade mark of applications 556351, 556353 and 556354 in the mark the subject of the present proceedings, has resulted in these trade marks being substantially identical or deceptively similar. To reinforce his argument, Mr Maxwell directed my attention to an Australian case Seven-Up Co v Bubble Up Co Inc (1987) AIPC 90-433 where, having considered Saville v June Perfect and De Cordova v Vick, King J held that the mark BUBBLE UP was not registrable in terms of s 33 of the Act, because of the existence of the registered mark UP for the same goods.  The present case, he said, falls fairly within the tests propounded by King J.  The situation considered in Seligmann's Appn (1954) 71 RPC 52 and Eau de Cologne & Parfumerie Fabriken v Bay Aerosols (1972) AOJP 4976, however, could be clearly distinguished from the present circumstances. 

Mr Forbes did not agree with the assertion that the marks under consideration were substantially identical or deceptively similar, having regard to the prominence of the word CANNIBAL in the applicants' mark.  He said that he had not copied the words IN SPORT and had not been aware of anyone using the words as a trade mark in respect of goods falling in class 25, but only as the name of a business.  He had attended an 'In Sport' retail outlet store in 1992, as far as he could remember, where he had showed his range of goods to the proprietor who appeared to be impressed, but three weeks later he had received a letter advising him to withdraw the present application because 'In Sport' stores had been in the business for 8 years.  As he was not aware of any use of the trade mark IN SPORT in Australia, even though he had visited the opponent's retail shops and had followed the correct procedure by seeking registration of the subject mark, he could not see any reason for withdrawing the application, nor would he be prepared to delete the words IN SPORT from the mark.                 

Concerning Mr Maxwell's submissions that the second applicant Anthony C Forbes was not connected with the business names Cannibal Sportwear and Cannibal Clothing Company, Mr Forbes explained that he had registered the former name in the state of New South Wales and the latter in the state of Queensland, and that Anthony C Forbes, his brother, was now a partner in the business. 

Decision
Section 40 - Proprietorship
Under the provisions of sub-section 40(1) of the Act:

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.

Section 35 of the Act reads as follows:

(1)  Where the relations between 2 or more persons interested in a trade mark are such that no 1 of them is entitled as between himself and the other or others to use the trade mark except -

(a)  on behalf of both or all of them; or

(b)  in relation to goods or services with which

both or all of them are connected in the course

of trade,

those persons may be registered as joint proprietors of the trade mark, and this Act has effect in relation to any rights of those persons to the use of the trade mark as if those rights were rights of a single person.

(2)  Subject to the last preceding sub-section, nothing in this Act authorizes the registration of 2 or more persons who use a trade mark independently, or propose so to use it, as joint proprietors of the trade mark.

In Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, McGarvie J explained at pages 413-414:

"Acquiring proprietorship
...

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) 59 ALJR 77 at 83. A person who becomes proprietor of a trade mark in this way is entitled at common law to restrain a person who later commences to use the trade mark."

In order to succeed in the claim to proprietorship in a mark (except where there has been no use at all of the mark), a person must be able to demonstrate first use of the mark in Australia, and the use relied upon must be shown to be for the purpose of indicating or so as to indicate a connection in the course of trade between the specified goods and that person (see section 6 of the Act and W D & H O Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182 at 191 and Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254 at 271).

However, in instances where the question of proprietorship is raised, the parties must be claiming the same mark, or one which is substantially the same (see Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR 300 and Tavefar Pty Ltd v Life Savers (A/asia) Ltd (1988) 12 IPR 159). To determine whether the marks under consideration are substantially identical, I turn to the criteria in this regard considered by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407.

It is clear that the opponent's application No. 556351 seeks registration of the series of marks containing the words IN SPORT for precisely the same goods as those nominated in the present application.  The applicant's mark consists of a number of elements: the words CANNIBAL, IN SPORT, CLOTHING AUSTRALIA and a device of a spear.  In size and prominence the word CANNIBAL, which is rendered in an unusual stylized and striking script form, occupies the major part of the mark creating such an overwhelming effect that the other features in the mark appear to be subordinate, i.e. the device of the spear which is split in two parts by the words IN SPORT, also in a stylized script, and the words CLOTHING AUSTRALIA in ordinary small upper case letters.  The series of marks of the opponent's application No. 556351 comprises the words IN SPORT in ordinary upper case letters and the same words in sloping form between two heavy parallel lines.  Comparing the marks under consideration side by side, it is apparent that, even though the words IN SPORT are incorporated in the applicant's mark, the marks are easily distinguishable.  They may be deceptively similar, according to the test of Windeyer J, supra, but that factor will be considered elsewhere.  

In Shell Co (Aust) Ltd v Rohm and Haas Co (1948) 78 CLR 601, Dixon J (as he then was) said at pp 627-628:

"[It] is clear enough from the course of legislation and of decision that an application to register a trade mark so far unused must, equally with a trade mark the title to which depends on prior user, be founded on proprietorship.  The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration."

As indicated in the examiner's first report on the present application, a copy of the application, as is the normal practice, was forwarded to the applicants for the signature of Mr Anthony C Forbes, which was duly returned with the signature.  In accordance with reg 8, both applicants have stated that the mark is being used on all the goods specified.  The provisions of s 40 of the Act had therefore been satisfied by the applicants at the time of lodging the application.  Moreover, the applicants were also advised of the provisions of s 35 of the Act.  The fact that, from the evidence in answer, it is obvious that only one of the applicants was using the subject mark, as argued by Mr Maxwell, can be explained by assignment documents on file, dated 27th October 1993, attesting to the mark having been assigned to Mr Glenn David Forbes, even though no documentary evidence has been produced relating to registration of the business name Cannibal Clothing Company in the State of Queensland at the time of lodging the present application.  Thus, the opponent's allegations based on the proprietorship question are unfounded.           

Sections 33 and 28
Sub-section 33 of the Act provides that:

Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

As the opponent's applications Nos. 556351, 556353 and 556354 were lodged on 22nd May 1991 which date is later than the lodgment date of the present application, the opponent, despite its vigorous arguments, particularly in terms of the Seven-Up v Bubble Up decision, supra, cannot claim substantial identity or deceptive similarity of the marks under the provisions of section 33, hence the ground based on such claims is not valid. 

Section 28 of the Act provides that:

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.

The basic test to be applied under para 28(a) of the Act has been enunciated by Evershed J in Smith, Hayden & Co Ltd's Appn (1946) 63 RPC 97. Paraphrasing his Honour's words at p 97:

"Having regard to the reputation required by the opponent's mark, is the Registrar satisfied that the mark applied for, if used in a normal or fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?"

In assessing the reputation of the opponent's marks in Australia, the relevant date is the date of lodgment of the applicant's application - Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. It is therefore necessary to consider the evidence of use of the opponent's marks prior to 4th June 1990. The opponent is also obliged to establish that a substantial number of persons who are interested in purchasing the goods would suspect that the goods had eminated from the same source, or at least wonder whether that might be so. (Kendall v Muslyn Paint, supra).  

The progressive increase in the sales of the opponent's clothing under the mark IN SPORT in the relevant period is evident, considering that the sales value for these goods was worth approx. $684,900.00 and $135,600.00 for sporting goods.  However, in support of the purported use of the mark before 4th June 1990, the opponent has exhibited as JS3 of Mr Shalala's first declaration copies of advertisements in Western Suburbs Courier, 13th November 1985 and 23rd July 1986, which show other proprietors' well recognized trade marks, the words IN SPORT appearing only in the context of a business name.  No invoices or other material have been included in the opponent's evidence to clearly establish use of the mark in the trade marks sense earlier than the date of the present application.  Moreover, the opponent has failed to demonstrate any instances of deception or confusion caused by use of the applicants' mark.  Similarly, no evidence has been made available by the opponent to the effect that, having regard to the reputation of the opponent's mark IN SPORT, persons would infer a connection in the course of trade between the opponent and the subject mark.  Given the inclusion of the words IN SPORT in the applicants' mark, albeit in minute letters compared with the dominant and distinguishable word CANNIBAL, it may well be that a number of members of the purchasing public would be induced into believing that the opponent's and the applicants' goods originate from the same trade source, or that there was some connection with the subject mark and the opponent, but in the absence of any evidence, as indicated previously, I am unable to draw a conclusion to what extent the  use of the applicants' mark would be responsible for deception or confusion.  In my opinion, the opponent only partly succeeds in relation to para 28(a).

Even if the opponent had successfully made a case under para 28(a), in accordance with the decision in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd 18 IPR 385, and the Office's practice outlined in Titan Manuafacturing Co v John Terrence Coyne 22 IPR 613, that all paras in s 28 should be read together, from the available evidence I have no reason to consider the question of a blameworthy behaviour by the applicants, nor any circumstances which would disentitle the applicants'' mark to protection in a Court of Justice. It should also be noted that the opponent did not make any submissions in that regard. I consider therefore that the opponent has not substantiated the allegations in terms of para 28(d). Accordingly, the opponent has not succeeded in relation to the grounds of opposition based on s 28.

Conclusion
In view of the foregoing, I find that the opponent has failed on all the grounds upon which it relied in the notice of opposition.  Accordingly, I dismiss the opposition, and subject to any appeal from this decision, the mark should proceed to registration.  No submissions were made as to costs and I make no award.

Sharyn Sullivan

Acting Hearing Officer
30 May 1995