Hanky Panky Ltd v Brazin Ltd

[2006] ATMO 55

TRADE MARKS ACT 1995

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

Re:Opposition by Hanky Panky Limited to registration of trade mark applications 954835(25) Hanky Panky and 981226(3, 6, 16, 18, 20, 30) Hanky Panky proceeding in the name of Brazin Limited.

Delegate:

Iain Thompson

Representation:

Opponent

Trevor Stevens of Davies Collison Cave

Applicant

Margaret Ryan and Jennifer Mills of Phillips Ormonde & Fitzpatrick

Decision:

1. s52 opposition, ss 58 and 60 – grounds not established.
2. Costs ordered against opponent.

Background

1.   Brazin Limited, ('the applicant') of Milperra, in New South Wales, has filed applications to register trade marks, current details of which are:

App No:  954835

Filing Date:  21 May 2003

Acceptance Advert:  18 September 2003

Goods:Class: 25:  Clothing, including lingerie and sleepwear; footwear; headgear

Trade Mark:  HANKY PANKY

App No:  981226

Filing Date:  8 December 2003

Acceptance Advert:  29 April 2004

Goods:Class: 3 Cleaning preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; face and body paint

Class: 6 Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; handcuffs

Class: 16 Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks

Class: 18 Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery

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 plastics

Class: 30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices, edible decorations for cakes, edible face and body decorations; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice

Trade Mark:  HANKY PANKY

2.   On 9 December 2003 and 28 October 2004, respectively, Hanky Panky Limited, ('the opponent') of New York filed Notices of Opposition (‘the Notices’) to the registration of the trade marks.  The Notices cite most of the available grounds under the Trade Marks Act 1995 (‘the Act’).

3. Evidence in support, evidence in answer, and evidence in reply was duly served and filed in accordance with the Act and regulations thereto.

4. As a delegate of the Registrar of Trade Marks, I heard the arguments of the parties, made by Margaret Ryan with Jennifer Mills of Phillips Ormond & Fitzpatrick (for the applicant) and (for the opponent) by Trevor Stevens of Davies Collison Cave, at a hearing in Melbourne on 7 June 2006. At the hearing, Mr Stevens relied on sections 58 and 60 of the Trade Marks Act 1995.

Evidence

5.   .The parties have filed the following declarations in relation to these proceedings:

Application 954835

Declarant	Position Known As	Date Made	Exhibits
Evidence in Support
Lida Orzeck	Vice President of opponent Orzeck	3 June 2004	A to E
Randie Shabto	Owner of Lingerie on Lex Shabto	8 June 2004
Evidence in Answer
Andrew Robin Smith	Company Secretary of applicant Smith	30 September 2005	AS-1 to AS-7
Evidence in Reply
Lida Orzeck	Vice President of opponent Orzeck 2	28 February 2006	Lo-1 to LO-5

Application 981226

Declarant	Position Known As	Date Made	Exhibits
Evidence in Support
Trevor Keith Stevens	Trade Mark Attorney for opponent Stevens	31 March 2005	TKS-1 to TKS-3 (Exhibits Orzeck and Shabto))
Evidence in Answer
Andrew Robin Smith	Company Secretary of applicant Smith 2	30 September 2005	AS-1 to AS-7
Evidence in Reply
Lida Orzeck	Vice President of opponent Orzeck 3	28 February 2006	Lo-1 to LO-5

6.   Further evidence, in the form of a statutory declaration by Trevor Keith Stevens, was tendered shortly before the hearing of the issue.  The applicant did not demur to the admission of this evidence which is the result of several searches on the website and shows the content of various websites before the priority dates of the opposed applications.

7.   Since about 1977, the opponent has used the trade mark HANKY PANKY in the United States of America in relation to lingerie and sportswear for women.  The opponent has used its trade mark throughout the United States of America and it has been advertised Lucky, In-Style and Marie Clare magazines within the United States.  Additionally, a garment made by the opponent of handkerchiefs in 1977 is exhibited in the Metropolitan Museum of Art in New York City.

8.   Details of expenditure on advertising within the United States and amounts expended on advertising or promoting the opponent’s trade mark are not given by the opponent – neither are annual turnover details.

9.   The opponent points to the sale of one item of lingerie which was despatched to a customer in Australia through the business Lingerie on Lex in mid to late December 2002.  The statutory declaration by Ms Shabto attests to this sale.  It is not obvious to me that this sale was as the result of an order from Australia; the fact that the purchaser apparently had a local Federal Express account (and the timing, being just before Christmas) might suggest that the sale might just as probably have been as the result of an order from within the United States for a gift to a person in Australia.  There are no invoices or credit card records which establish exactly how this sale might have taken place or documentation from Federal Express which is said to have delivered it.

10.   The opponent states that it has had an intention to use its trade mark in Australia.

11.   The opponent’s goods are (as well as being sold in retail stores) also sold via traders other than itself on the Internet.

12.   The applicant produces a range of lingerie, adult novelty, play and toy goods which it sells through a chain of 114 retail stores called Bras ‘N’ Things throughout Australia.  There are also 6 Bras ‘N’ Things stores in New Zealand.  After conducting a search on ATMOSS, the applicant decided to adopt the trade mark HANKY PANKY for a range of merchandise for women as an extension on its trade mark HANK (registered under 831205) which is used or intended to be used in relation to a range of merchandise for men. 

13.   Goods sold under the trade mark HANKY PANKY are available also from the applicant’s Internet website.

14.   I will discuss the evidence of the parties in more detail as is required later in this decision.

Discussion

Section 58

15. Section 58 of the Act provides:

58  Applicant not owner of trade mark

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.

16.   As explained by Hearing Officer Jock McDonagh in Computer Business Works Inc v Dylan Mark Johnston [2005] ATMO 14:

Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. In order to establish this ground, it is incumbent upon an opponent to show that, in the time before filing, the applicant is not the first user in trade in Australia of the applied-for trade mark. To do so, the opponent must show, at a minimum, that not only is the applied-for trade mark substantially identical to the older trade mark, but that it is applied to the same kind of goods: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640.

The proper comparison for substantial identity is side by side, as described in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, per Windeyer J, at 414:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

17.   There is no doubt that the trade marks are identical.  The question is if the opponent has evidenced sufficient use, or preparation for use, of its trade mark in Australia to displace the applicant’s claims to ownership of the trade marks.

18.   .The owner of a trade mark at common law in Australia is the first person who uses the mark in Australia: Shell Company of Australia Limited v Rohm and Hass and Anor (1949) 78 CLR 601.

19.   Mr Stevens drew my attention to the following passages quoted in Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278 – the stress is that of Mr Stevens:

In Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414 at 432 (‘Moorgate’), Deane J said at 433:

‘The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be local use of the mark as a trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark (Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd (1951) 82 CLR at 204-205 or that the mark has been used in an advertisement of the goods in the course of trade: Shell Company of Australia v Esso Standard Oil Australia Ltd (1963) 109 CLR at 422. In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade. In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade. There was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used.’:

However, the subjective intention must be accompanied by some evidence of objective proof of that intent. In Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 51 IPR 149, Drummond J said at 155, speaking of dicta of Deane J in Moorgate:

‘Deane J did not say that a subjective intention of the owner of the mark to use the mark in trade at some time in the future was, without more, sufficient to show use of a mark. What he said was that such an intention, if accompanied by objective proofs of that intention in the form of evidence of action by the mark owner to commit goods bearing the mark to actual trade in Australia, would suffice to show use of the mark here at the time in question, though no marked goods had yet been offered for sale in this country.

McGarvie J understood Deane J’s dictum as being to this effect in Settef.[1] One issue there was whether an Italian company, Settef, had used its "Riv-Oland" word mark in Australia before 1978 so as to become the proprietor of the mark here and thus entitled to the registration of the mark which it obtained in 1978. McGarvie J said at 417–18:

I consider that it follows from the authorities that a mark is used as a trade mark only if it is used with a view to facilitating or promoting the operation of a trading channel which in a business sense had already been opened to Australia. The mark must be used for the purpose of trade ... The forwarding of samples and brochures [in 1967] is not sufficient to indicate that Settef was ready and willing to fulfill such orders as it received from Australia. The purpose of these items may well have been to ascertain whether there was a market in Australia sufficient for it to be worthwhile for Settef to export here. Use of the mark in such preliminary activities would not be a use in the course of trade: Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414 at 432–3; 56 ALR 193; 3 IPR 545 at 556.’

Drummond J’s explanation is consistent with the passage which I have cited above. A mere claim of intention to use a mark could never be enough. It would mean an intention by itself could give rise to personal property: s 21. In Moorgate and Setteff SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 (the authority to which Drummond J referred), there was evidence that the mark had been applied to the goods. There is no such evidence in this case.

[1] Setteff SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402

20.   In Orzeck, the opponent deposes to an intention to use the trade mark in Australia before the priority dates of the opposed applications; support for the proposition is said to lie in the single sale (which, I interpose, is not strongly evidenced) and the presence of the goods on third party Internet websites that might have been bought from Australia.  Further support for the proposition is said to lie in the registration and use of the opponent’s trade mark in Canada, Japan and China, Hong Kong and Europe and Australian visitors to those countries.  

21.   Additionally, the evidence shows that the opponent’s trade mark is registered in Singapore and Taiwan although not apparently used in those countries – but I wonder, does this mean that while the opponent intends to use the trade mark in Australia, it has a more definite intention to use the trade mark in Singapore and Taiwan?  Similarly, if the opponent at the time before these opposed applications were filed seriously entertained the thought that other traders’ websites were to sell, or were actually selling, its goods into Australia, why did it not take the precaution of registering its trade mark here?

22.   I consider that the authorities show that something more than what the opponent has pointed to is required to establish that the applicant is not the owner of the trade mark.  The opponent had not even reached a situation where there had been preliminary discussions with an Australian agent or distributor which in Moorgate, above, were not enough to establish ownership.

23.   Moreover, in whichever country the opponent has formed an intention to use its trade mark and use has followed, it has registered its trade mark; as it has not registered its trade mark in Australia, the most obvious inference is that it has not had an immediate intention to use it here. 

24.   An example of one instance of use might be sufficient to displace the applicant’s claims to ownership[2], but if an opponent is to rely on such a single instance, the probative weight of the evidence which is said to establish the use must be high[3].  I do not think that the undocumented and anecdotally reported sale of anonymous goods bearing the opponent’s trade mark from a third party which falls within the general description ‘clothing’ and might have been directly to Australia as the result of an order which was possibly from within Australia and the delivery of which has not been documented is any sort of a basis for displacing an applicant’s claims to ownership of a trade mark. 

[2] Thunderbird Products Corporation v. Thunderbird Marine Products Pty. Ltd. (1974) 131 CLR 592

[3] "Nodoz" Trade Mark (1962) RPC 1.

25.   While the opponent’s trade mark was most assuredly on the Internet on third party websites before the priority dates of the opposed applications, there is no evidence that the websites offered goods to Australia at that time or that goods were sold to Australia.

26.   The evidence does not displace the applicant’s claims to be the owner of the trade mark in Australia.

27. The opponent has not established its grounds under section 58 of the Act

Section 60

1. Section 60 of the Trade Marks Act 1995 provides:

   60  Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)       it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

   (b)       because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note 1:For deceptively similar see section 10.

   Note 2:For priority date see section 12.

   29.   I think that it is fair to say that the opponent’s arguments here fall over at the first hurdle: the trade mark on which the opponent relies did not have a reputation in Australia at the priority dates of the opposed applications.  In fact, the evidence before me does not satisfy me that the opponent’s trade mark had a reputation in the United States before the priority dates, let alone having a reputation in Australia.  There are no details of United States sales, amounts spent on advertising, number of items sold annually, etc.  While it is apparent that an opponent might establish that a trade mark has a reputation in Australia notwithstanding the fact that it has not been use here[4], the demonstration of its overseas reputation which is said to be the basis for the Australian reputation must be clear and unambiguous as must be the evidence of the flow of that reputation into Australia.  The evidence that the opponent relies on is advertising in three United States magazines which have not been shown to have circulated in Australia, the appearance of the trade mark on some four or five Internet sites and the inclusion of a garment it made in a museum exhibit.  However, the opponent has not shown that any Australian Internet users have visited those websites or purchased goods therefrom – there is no presumption that since a trade mark is on the Internet, Australians must know of it.  The Internet is not a village high street, it is (to use the same metaphor) a mega-city – the search engine Google has indexed over 3 billion webpages.  The chances of any particular person in Australia noticing the opponent’s trade marks goods on one of four websites are remote.  So, would I assess, are the chances that many Australians have seen the museum exhibit or retained a memory of it.

   [4] Conagra Inc. v Mccain Foods (Aust) Pty Ltd (1992) 23 IPR 193, (1992) AIPC 90-892 (extract) (1992) 106 ALR 465 (1992) 33 FCR 302

   30. The opponent has not established its ground of opposition under section 60.

   Decision

   31. Section 55 of the Act provides:

   55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or
   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:  For limitations see section 6.

   32.   Subject to the opponent notifying the Registrar of an appeal against my decision within one month of the date of this decision, the applications may proceed to registration.  If such appeal is notified and not withdrawn, the applications should be dealt with as the Court directs.

   Costs

   33.   The applicant is entitled to its costs and I order costs against the opponent at the official scale.

   Iain Thompson

   Hearing Officer

   Trade Marks Hearings

   3 July 2006