Grant Olver Investments Pty Ltd v Pilgrim A/S [Sec=Unclassified]
[2009] ATMO 70
•3 September 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Grant Olver Investments Pty Ltd to protection of International Registration Designating Australia 981508 (6,14,20) - PILGRIM - (International Registration No. 682561) filed in the name of Pilgrim A/S.
Delegate: Alison Windsor Representation: Opponent: Maria Schwartz, of Schwartz Barristers and Solicitors
Holder: Wayne Willis of FB Rice & CoDecision: 2009 ATMO 70
Reg 17A.29 opposition: Grounds under ss 44, 58 and 60 pursued in respect of goods in class 14 only– opposition decided under s 58 – opponent was owner of trade mark under common law because of earliest use in Australia – opposition successful– costs awarded against holder.Background
Application 980508, an international registration designating Australia (“IRDA”), was filed in the name of Pilgrim A/S (“the holder”) of Denmark under the Madrid Protocol on 3 October 2003 (“the priority date”). IP Australia was notified of this on 11 December 2003 and, following examination of the IRDA, advertised on 13 October 2005 its intention to extend protection to Australia under the provisions of subsection 44(4) of the Trade Marks Act 1995 (“the Act”).[1]
[1] See regulation 17.28 of the Trade Marks Regulations 1995 (“the regulations”) which covers the application of the provisions of this section of the Act to an IRDA.
Current details of the IRDA are as follows:
Application Number: 981508
International Number: 682561
Priority Date: 3 October 2003Goods: Class 6: Semi-finished articles of common metals for use in the manufacture of jewellery and sunglasses
Class 14:Jewellery
Class 20:Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastic
Trade Mark: PILGRIM
Grant Olver Investments Pty Ltd (“the opponent”) filed a notice of opposition (“the notice”) on 15 December 2005. Evidence in support, in answer and in reply were filed and served, the process being completed by mid January 2009.
The opponent then requested to be heard, and the matter came before me, as a delegate of the Registrar of Trade Marks, in Canberra on 10 June 2009. Maria Schwartz of Schwartz Barristers and Solicitors appeared for the opponent via telephone conference. Wayne Willis of F B Rice & Co appeared for the applicant via video link.
Grounds of opposition and onus
The notice was wide ranging, nominating grounds under sections 41, 42, 43, 44, 58, 59, 60 and 62. At the hearing, the opponent advised that it would only be pursuing grounds under sections 44, 58, 60 and 62, and those grounds would be pursued in respect of goods in class 14 alone, namely “jewellery”.
For completeness, I decide that grounds under the provisions of sections 41, 42, 43 and 59 in the notice have not been established. As the opponent did not make any specific claims or submissions in respect of the ground under section 62, it is also not established.
The onus is on the opponent to establish at least one ground of opposition in order to be successful in its opposition.[2] The standard to be applied in deciding the matter is that of “the balance of probabilities”.[3]
Evidence provided
[2] Trade Marks Act 1995 (Cth), s 55; and see Unilever plc v Livingstone International Pty Ltd (2001) 53 IPR 568 (Reg).
[3] Glaxo Wellcome (Aust) Ltd v Bukwang Pharm Co Ltd [2008] AIPC 92-282; [2008] ATMO 12; Quicksilver International Pty Ltd v s.Oliver Bernd Freier GmbH & Co KG [2008] ATMO 14; Americana International Ltd v Suyen Corp (2008) 75 IPR 596; [2008] ATMO 4; Chocolaterie Guylian N.V v Registrar of Trade Marks [2009] FCA 891
Evidence in support
The opponent provided the following declarations as its evidence in support:
· David Hugh Landeman with exhibits D1 to D3, made 16 July 2007
· Zsusanna Bella with exhibits Z1 to Z3, made 16 July 2007
· Kim Robertson with exhibits K1 to K2, made 16 July 2007
· Estelle Michaelides with exhibit E1, made 12 July 2007
· Sophanny Mao, made 12 July 2007
· Teresa Maree Reeves with exhibit T1, made 13 August 2007
· Cristina Calabro with exhibits C1 to C5, made 15 August 2007
· Norman Grant Olver with exhibit G1 (referred to as Olver 1), made 15 August 2007
Evidence in Answer
The holder provided a single declaration being the following;
· Henrik Rud Adamsen with exhibits 1 to 5, made 26 June 2008
Evidence in Reply
The evidence in reply consisted of a single declaration, being the following:
· Kenneth Ross Olver with exhibit K1 (referred to as Olver 2), made 15 January 2009
The Opponent’s evidence
The opponent’s evidence goes to establishing its claim to use of the word PILGRIM as a trade mark in respect of jewellery in Australia from as early as 1993. The Bella and Olver 1 declarations refer to use of the word in respect of sales of jewellery in Australia, as well as clothing and clothing accessories from late 1993 or early 1994.
The Robertson and Landeman declarations attest to knowledge of the sale of jewellery under the PILGRIM trade mark in Australia from some time in 1996. The remaining declarations refer to knowledge of this use at varying times from 1995 to 2002.
Several of the declarations provide examples of the trade mark as it was in use according to the particular declarant’s experiences as set out in their declarations. The Landeman, Calabro and Bella declarations exhibit copies of receipts for the purchase of items of jewellery in the opponent’s Australian stores, all of which are dated in the years 2000 and 2001. At the top of all of these receipts are the words “PILGRIM - THANKS YOU”.
The Bella declaration exhibits a copy of the swing tags used within the business on all of the goods sold at the time she was first employed in 1993. She states that a green and blue swing tag, a reproduction of which appears below, was attached to all items of jewellery, and that a stick-on label in the same form was also applied to the tissue paper used to wrap each item at the time of sale.
The declaration also notes that the company changed its branding to pink and black colours at some unspecified time. The Olver 1 declaration states that this change occurred around 1999 at which stage the company was trading under the word “PILGRIM” as well as using its trade mark 959624, which is shown in the following swing tag reproduction:
From the time the company colours changed in 1999 up until at least the dates of declaration, both Bella and Robertson refer to use of adhesive tape in the colours pink and black used to close bags of purchases at the point of sale. A representation of a piece of this adhesive tape is reproduced below:
The Michaelides and Reeves declarations are both made by persons who manufactured and sold jewellery to the opponent. Teresa Maree Reeves states that she designed and manufactured jewellery in the early 1990s at which time she occupied a workshop situated above the premises of one of the opponent’s retail stores. She states that all the jewellery she sold to the opponent was advertised for sale in the opponent’s stores, and subsequently sold, bearing a green and blue swing tag the same as that shown previously at paragraph 14. She also recalls a range of watches sold in the opponent’s stores which had the word PILGRIM on the watch face.
Estelle Michaelides states that she designed and manufactured an exclusive range of jewellery and headware for the opponent in the five years up to the date of her declaration (made 12 July 2007). She says that all the jewellery she sold to the opponent in that period had been labeled with a swing tag or card, a reproduction of which is shown below:
Olver 1 states that at the time of making the declaration, the opponent was trading from eight retail stores situated in various cities in South Australia, Victoria and New South Wales. In addition, there were six concession stands within Myer stores in Victoria, New South Wales and Western Australia. All the stores and concession stands sell jewellery as part of their product range.
In addition to evidence supporting use of the word PILGRIM, the following declarations all state that they are aware of confusion occurring between the opponent’s goods and those of the holder – Michaelides, Mao, Robertson, Calabro, Olver 1 and Olver 2. The dates at which this confusion has occurred are not always clear, but there is enough information to suggest that incidents of confusion have occurred over a number of years.
Olver 2, which forms the opponent’s evidence in reply, goes to the results of a recent survey (January 2009) of the opponent’s customers. The survey specifically asked the respondents to give their opinion on whether a reproduction of an advertisement attached to the survey advertised the opponent’s goods. The advertisement was, in fact, one advertising the holder’s goods.
The holder’s evidence
This evidence consists of a declaration made by Henrik Rud Adamsen, executive officer of the holder.
The declaration states that the holder was established in Denmark in 1983, and traded only in Denmark until its first international sales occurred in 1995. Originally its jewellery was either home made or brought home to Denmark by the original owners following their international trips.
By 2000 the company had created its first collection consisting entirely of its own designs. In 2006 it established a base in China, and in 2007 a base in North America. It now owns an international business with approximately 300 employees worldwide and is selling products into approximately 50 countries around the world.
The holder says it entered the Australian market on a reasonably small scale in 2001. Exhibit 1 to the declaration consists of a copy of Adamsen’s earlier declaration made on 5 September 2005 and provided in support of the IRDA at the time of examination.[4] This declaration has no exhibits, but states that the holder has used the PILGRIM trade mark in Australia “from at least as early as January 2001” in relation to a range of jewellery products. It also notes that sales have increased yearly from then until the date of the declaration.
[4] It was this declaration which allowed the examiner to apply the provisions of subsection 44(4) – prior use – to the IRDA to allow acceptance in the face of pre-existing trade marks already on the register.
Exhibit 3 to the declaration shows data for the holder’s sales to its Australian distributor for the period 2001 to 2003. The figures are not insignificant, but there is no clear information demonstrating whether or not the goods sold to the distributor carried the holder’s trade mark, or were indeed on-sold carrying the holder’s trade mark. Exhibit 4 gives similar information, but to a wider range of businesses, and with the same shortcomings.
The remaining exhibits, which consist of a considerable volume of assorted examples of use of the word PILGRIM within the fashion industry in Australia, are all dated later than the priority date of the IRDA under consideration. The use demonstrated is all of the plain word PILGRIM, with no additions or decoration of any kind.
Discussion
The IRDA subject of this opposition was accepted for possible registration on the basis of prior use as allowed for by subsection 44(4) of the Act. The first report issued on 27 February 2004 and advised of a provisional refusal based on the existence of a number of pre-existing registrations and applications for deceptively similar trade marks. The initial report included, as standard content, information about the kind of evidence which would be suitable to support claims for honest concurrent use (paragraph 44(3)(a)) and prior use (subsection 44(4)).
The holder responded through its address for service in Australia and requested that it amend the goods claims within the IRDA to overcome some of the grounds for rejection. In respect of trade mark 959624, a trade mark owned by the opponent and previously referred to in paragraph 15, the holder decided to rely on a claim for prior use of its trade mark within Australia.
Subsection 44(4) reads as follows:
(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.
At the time the holder responded to the first official report, the acceptable evidence requirements to support a claim for prior use were not onerous. The holder only needed to provide a statutory declaration which included the following information:
· the date of first use of the holder’s trade mark in Australia, and
· a specification that the use had continued up until at least the filing date of the cited trade mark and
· a specification of the goods in respect of which the trade mark had been used during that period.
The contents of the earlier Amundsen declaration were noted previously in paragraph 25. The claimed date of first use (January 2001) pre-dates the filing date of the opponent’s then application 959624. This information, and the claim that the holder’s trade mark was in continuous use up until September 2005 (the date on which the earlier declaration was made), was sufficient at the time for the examiner to apply the provisions of subsection 44(4) in the holder’s favour.
The opponent, however, by reason of the evidence it has provided, is disputing that claim for prior use and claiming ownership of the trade mark in Australia. The matter is most appropriately considered via the provisions of section 58 of the Act, and it is to that section that I will now turn.
Section 58 – Applicant not owner of trade mark
Section 58 provides that “the registration of a trade mark may be opposed on the ground that the applicant [holder] is not the owner of the trade mark”.
In order to establish a ground of opposition under the provisions of section 58, the opponent needs to establish that:
· the respective trade marks of the holder and opponent are either identical or substantially identical [5],
· the respective goods of both parties are the ‘same kind of thing’ [6]
· the opponent has the earlier claim to ownership based on use prior to both the application to register and any actual use of the mark by the holder[7].
[5] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd 31 IPR 375 (1994) 120 ALR 495
[6] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75
[7] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413
Both applicant and opponent are claiming the trade mark PILGRIM. There is no argument about this fact, and thus the first of the above mentioned requirements has been met.
Both parties are claiming use of the trade mark in respect of “jewellery”. However, while the holder was prepared to accept that the opponent had used the trade mark PILGRIM in Australia prior to the holder’s own use, it submitted that the opponent had not used it in respect of “jewellery”, but had used it in respect of the service of “retail sale of jewellery”. This, the holder said, was not use of the trade mark in respect of “the same kind of thing”.
The holder argued that because the opponent had “done nothing more than purchase jewellery from a variety of sources simply for the purposes of re-sale” through its various stores, it could not make a claim to use of the trade mark in respect of goods, but only in respect of the service of retailing. The opponent must be able to show, the holder said, at least some input into the creative aspects of the manufacture of the goods before it could claim to be using the trade mark in respect of those goods. Otherwise, the holder contended, use of the trade mark was for the purposes of retail of other manufacturer’s goods.
I do not agree with the holder’s arguments here. While it is likely, especially in the fashion industry, that a trader will design and organise the manufacture of its own range of goods for sale under a particular trade mark, this is by no means a requirement. There is nothing preventing that trader from sourcing goods from other manufacturers, as long as the goods meet the trader’s requirements as to design and quality. A decision will be made at some stage in this process as to what trade mark will be used in relation to these goods at the point of sale. If the trader is using its own trade mark on the goods when they are sold, the connection in the minds of the purchaser will be with the trader, not with the manufacturing source.
The opponent, and indeed the holder as well, is a “retailer”. Retailing is generally accepted as being “the sale of commodities to household or ultimate consumers, usually in small quantities (opposed to wholesale)”.[8]However, whether the opponent is only offering a “retail service” per se in respect of “jewellery” needs to be decided.
[8] Definition from the Macquarie Dictionary Online.
I am satisfied that the opponent is using its trade mark in respect of “jewellery”, as opposed to “retail of jewellery”. The evidence provided by the opponent, in particular the Michaelides and Reeves declarations, go right to the point. The opponent sourced jewellery from these two manufacturers and sold the goods using its PILGRIM trade marks. There is no reason to suppose that the opponent did not do the same for jewellery sourced from other places. Evidence provided by the opponent supports the contention that this was indeed the case.
Given my satisfaction that both parties are dealing in “the same kind of thing”, the first two of the three requirements to establish a ground of opposition under section 58 have thus been met.
The remaining matter is the claim for ownership of the trade mark. This claim does not require that the opponent’s trade mark be a registered trade mark. Ownership may be based on use of a trade mark under common law, and the first person using a trade mark within the jurisdiction becomes the owner of the trade mark there - per Branson J in Eos Australia Pty Ltd v Expo Tomei Pty Ltd[9]:
The Act does not displace the common law concerning trade marks, it merely supplements it. The test of ownership of an unregistered trade mark is a common law test. A person who publicly uses a trade mark acquires at common law, as an adjunct to the goodwill of his or her business, the right to preclude others from using that mark; and the first person who uses a trade mark within a country becomes the proprietor of the mark there: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 at 413.
[9] (1998) 42 IPR 277
The right to ownership of a trade mark in this opposition context is to be considered by the position as it was at the date the application was filed,[10] or the date of first use within Australia, whichever is earlier.
[10] Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261
While the applicant may be able to claim use of its trade mark at a date earlier than the opponent’s registration date, this does not displace the fact that the opponent has demonstrated use in trade of the word PILGRIM in respect of “jewellery” from as early as 1993. I am satisfied that the opponent is therefore the owner of the trade mark PILGRIM in Australia for “jewellery”. The opponent has successfully established the ground of opposition under the provisions of section 58.
Having established the ground under section 58 the opponent has been successful in its opposition, and there is no requirement that I consider any of the other grounds pressed at the hearing.
Decision
Subregulation 17A.34(1) provides:
17A.34(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.
The opponent has been successful in its opposition. I therefore refuse to extend protection to the goods listed in class 14, namely “jewellery”. I will extend protection to the goods listed in classes 6 and 20, as set out in paragraph 1 of this decision, one month from the date of this decision. I note also that the endorsement referring to acceptance under the provisions of subsection 44(4) becomes redundant once class 14 is deleted, and that endorsement will be removed prior to the application proceeding to protection.
If the Registrar is notified of an appeal from this decision within the time allowed by the Court, the above decision will not take effect until the appeal has been discontinued, or in the event of a decision issuing from the court, the IRDA will be subject to those orders.
Costs
The opponent has been successful and is entitled to its costs. I award costs against the holder according to the official scale.
Alison Windsor
Hearing Officer
Trade Marks Hearings
3 September 2009
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