Gregory Edward Williams v Dolina Fashion Group Pty Ltd

[1993] ATMO 16

trade marks act 1955

decision of a delegate of the registrar of trade marks

Opposition by DOLINA FASHION GROUP PTY LIMITED to Trade Mark Application Nos. 517356 and 517357 in the name of GREGORY EDWARD WILLIAMS

Application numbers 517356 and 517357 were lodged on 18 August 1989 in the name of GREGORY EDWARD WILLIAMS (the applicant).  The applications were for the words DUSK BY DIJARREE with a device of the SETTING SUN'S RAYS (see below) and the word DIJARREE with a device of THREE MOUNTAINS (see below), respectively, both for "Clothing" in Class 25.

517356  517357

Notices of opposition to the marks' registration were lodged on 30 May 1991 by DOLINA FASHION GROUP PTY LIMITED (the opponent).  The main grounds of the oppositions, as stated in the notices and expanded at the hearing, are based on s.40 of the Act, regarding disputed claims of ownership, and on s.28, on the grounds that use of the mark by the applicant would be likely to deceive or cause confusion and that its use would be contrary to law.

Service and lodgment of the opponent's evidence in support, which comprised a Statutory Declaration by Nitzan Ronen together with Exhibits NR1 to NR4, was completed by 29 August 1991.  The applicant did not lodge any evidence in reply.
The matter was set down for hearing before me as the Registrar's delegate in Sydney on 23 October 1992.  Appearing for the opponent was Mr R.Webb of Counsel, instructed by R.B.Kandy & Company, Solicitors and Attorneys.  The applicant became a bankrupt on 10 January 1991 and the Official Receiver became the trustee of the estate.  The Official Receiver advised on 29 September 1992 that it did not intend to "contest the hearing".

I have outlined previously the main points of the opposition.  In the interests of efficiently dealing with them in this decision I will refer to each of the objections in turn.

Section 40

In his submission, Mr Webb referred to the evidence in support where Nitzan Ronen declared that the marks in question were prepared by the opponent and the artwork designed by a firm of commercial artists, Watkins & Murphy.  It was at this time that the applicant was in the opponent's employ as a patternmaker.  Whilst the applicant had some input into the design of the marks, it was as an employee of the opponent.  The applicant ceased his employment with the opponent on 6 July 1990.  Attached as an exhibit to the Ronen Declaration are copies of two invoices submitted by Watkins & Murphy to the opponent on 31 July 1988 for "Film and amend art for DIJARREE swing tags" and "Film and art for DUSK swing ticket", respectively.  Nitzan Ronen further declared that the company commenced selling goods under the mark DIJARREE in about June (sic) 1988 and under the DUSK mark in about September 1988.  The opponent lodged its own applications for the marks in question on 21 December 1989.

The provisions of s.40, so far as is relevant here, are that:

A person who claims to be the proprietor of a trade mark may make application to the Register for registration of that trade mark in Part A or Part B of the Register

Mr Justice McGarvie, at first instance in Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413 explained what is meant by proprietorship of a mark in the following way:

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) (1984) 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 considering who, within s40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 at 625 and 627. Settef claims to be the first person to have used the trade mark in Australia and therefore to have been proprietor at common law in Australia.

A successful claim to proprietorship in a mark (except where there has been no use at all of the mark) thus depends on the ability of the person to demonstrate first use in Australia.  Further, the use relied on 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; Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254 at 271.

The Declaration of Nitzan Ronen stands unchallenged by any submissions or evidence on behalf of the applicant.  The applicant did state on the 27 November 1990 that he intended to use the marks on all the goods specified.  However, he has chosen not to further his case as to use of the marks by the submission of any evidence in answer or appearance at the hearing.  Certainly, the invoices dated July 1988 from Watkins & Murphy indicate they were commissioned to carry out the artwork by the opponent and, to some degree, support the opponent's claim of use since 1988 of the marks despite the (apparent) inconsistency in the month claimed for first use of the DIJARREE mark.  Therefore, in the absence of any demurral by the applicant, I can only conclude that the opponent was the author and first user of the marks in Australia.

In summary, then, I find that the opponent has succeeded in displacing the applicant's claim to proprietorship in the subject marks for the specified goods.  This ground of opposition is therefore upheld.

Section 28

In relation to this leg of the opposition, Mr Webb submitted that, in light of the opponent's own legitimate use of the marks, then registration and use by the applicant would lead to deception and confusion and therefore be objectionable under s.28(a).  He further said that use of the marks by the applicant would offend under s.28(b) as being contrary to law.  This claim was based on the opponent's ownership of the marks under common law and that the Copyright for the marks would either reside with the opponent or with the art house delegated to prepare the marks.

The provisions of this section of the Act reads as follows:

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 test to be applied under paragraph (a) of these provisions, on which the opponent partly relies, has been well established by cases such as Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 608, where the High Court said:

Registration should be refused if it appears that there is a real risk that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case the two products come from the same source.

Following the High Court decision in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd 18 IPR 385 (the Moo case) the Registrar now follows the practice as laid out in the decision of Hearing Officer Homann in Titan Manufacturing Co v John Terrence Coyne 22 IPR 613 - that is that all paras of s.28 should be read together. This means that, should I find that the marks are likely to deceive or cause confusion, then it will also be necessary to find that use of the mark by the applicant is contrary to law.

In assessing the reputation of the opponent's marks in Australia, the relevant date is the date of lodgment of the applicant's applications, Southern Cross, supra, that is 18 August 1989.  It is therefore necessary to consider the evidence of use of the marks in Australia prior to that date.  Nitzan Ronen's unchallenged declaration states that the marks were being used by the opponent since mid-1988.  The only evidence of use or intention to use by the applicant is his statement of 27 November 1990 that he "presently intend(s)" to use the marks.  The inference, then, is that the opponent had achieved some reputation for the marks prior to the date of the present applications.  It follows that use of the marks by the applicant would be likely to lead to deception and confusion.  The first leg of the objection under s.28 is therefore successful.  However, the answer to the opponent's allegation that use of the mark would be contrary to law is not so clear cut.  Despite Mr Webb's assertions that use of the mark is contrary to law by virtue of Common Law proprietorship by the opponent and alleged breaches of Copyright, these matters are beyond the competence of this tribunal to determine.  Additionally, there has been no evidence lodged of any blameworthy conduct on behalf of the applicant.  I therefore cannot find that use of the mark by the applicant is contrary to law and, as outlined previously, the paragraphs of s.28 must be read conjunctively.  Therefore, the objection under this section of the Act must fail.
Conclusion

In summary, then, I find that, although the opposition fails on the s.28 ground, it is successful under s.40, that the opponent has proprietorship of the marks involved.  It follows that the opposition is successful and, subject to any appeal from this decision, the application for registration of the marks is refused.  Mr Webb did not make any submissions with respect to costs but I see no reason why they should not follow the event.  I therefore award costs to the opponent.

Ian Forno
Hearing Officer

24 February 1993