Graeme Norman Hyland & Helen Minette Hyland v Carol Redford

[2001] ATMO 60

TRADE MARKS ACT 1995

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

Re:Opposition by Graeme Norman Hyland and Helen Minette Hyland to registration of trade mark application 796673(29) - GINGIN OLIVES and device - filed in the name of Carol Redford

Background

On 9 June 1999 Carol Redford (the applicant) filed trade mark application 796673 for the trade mark depicted below, in class 29 in respect of "olives, olive oil".

The application was duly examined under the Trade Marks Act 1995 (the Act) and advertised as accepted in the Official Journal of Trade Marks on 10 February 2000 for the specification of goods claimed in the application. 

On 9 June 2000, after applying for and obtaining an extension of time in which to do so, Graeme Norman Hyland and Helen Minette Hyland (the opponents) filed Notice of Opposition to registration of the trade mark application.  The single ground relied on fell under the scope of section 58 of the Act.

Evidence in support of the opposition was filed and served by 9 September 2000.  The applicant responded with evidence in answer, which was served and filed by 9 December 2000.  The opponents did not file evidence in reply.  No party requested a hearing and the matter came before me, as Registrar's delegate, to decide on the written record.

Evidence

Evidence in support of the notice of opposition consists of the statutory declaration of Graeme Norman Hyland (the Hyland declaration), dated 5 September 2000.  The statutory declaration attests to the opponents' registration of the words GINGIN OLIVES as a business name, brief details of the opponents' olive growing business activities, and evidence of membership by the opponents under the name GINGIN OLIVES in olive growing organisations.  Attached to the Hyland declaration are Exhibits "A" to "I", which comprise property title and business name searches, copies of correspondence and invoices addressed to and received by the opponents, a copy of a newsletter of an organisation known as Gingin Regional Olive Growers, and a copy of a letter written by the opponents to that organisation.

The applicant's evidence in answer is the Statutory Declaration of Carol Redford, dated 1 December 2000.  That declaration includes background information relating to adoption of the words GINGIN OLIVES as an element of the applicant's trade mark, and brief details of the applicant's intentions to grow olives, with a view to marketing both olives and olive oil.  Olive production estimates are included for the years 2004 and 2009.  Attached to the declaration are Exhibits "A" to "G", which comprise Trade Marks Office filing and acceptance notices in respect of the applicant's trade mark, a copy of a title search from the Western Australian Office of Titles, Notice of approval of Planning Consent from the Gingin Shire, and invoices relating to purchase of olive trees.

Reasons

The opponents have relied on one ground in their Notice of Opposition, and this is couched in terms of section 58 of the Act.  Section 58 reads:

Applicant not owner of trade mark

58. 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.

Ownership of a trade mark depends on a combination of authorship and first use. Ownership may be established by first use of the mark in Australia in respect of the relevant goods or services, or authorship and the making of an application for registration, whichever is the earlier. [1]

[1] Shell Co (Aust) Ltd v Rohm and Haas Co (1949) 78 CLR 601

For the opponents to be successful under section 58, they must establish a prior use of the same or of a substantially identical trade mark[2], in Australia, in respect of the same kind of thing[3].  A very small amount of use is sufficient, but the use must be use as a trade mark.

[2] Carnival Cruise Lines Inc v Sitmar Cruises Ltd 31 IPR 375 at 391

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

Applying the standard test for substantial identity[4], I find the words GINGIN OLIVES and the applicant's trade mark are not substantially identical.  Both trade marks contain the words GINGIN OLIVES but here the similarities end.  The applicant's trade mark includes the stylised device of a tree.  This is a prominent feature of the trade mark, and makes it, as a whole, very different visually to the plain words GINGIN OLIVES.

[4] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 415

Having found the trade marks are not substantially identical, it is not necessary for me to proceed further in my inquiry and I will leave aside the questions of the "the same kind of thing" and "first use".

As the opponents have not demonstrated use of the same, or an almost identical mark, they have failed to discharge the onus on them under section 58.  The opposition is, therefore, unsuccessful.

Decision

I find the opposition has failed on the only ground relied on under the Act, being that in terms of section 58.  Accordingly, I dismiss the opposition.

Frances Aarnio
Senior Examiner        

11 July 2001