Heather Hayward v Paul King, Raymond Mitchell and Carl Arneson Trading as Predator Surf and Skate

[1997] ATMO 33

TRADE MARKS ACT 1955

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

Re:Opposition by Paul David King, Raymond Desmond Mitchell and Carl Joseph Arnesen to the registration of trade mark application number 550263 in the name of Heather Hayward.

Background:
After examination, trade mark application 550263 was advertised as having been accepted for registration.  The applicant is Heather Hayward.

The trade mark in question is the word “predator”, rendered as below:

Ms Hayward seeks to register that mark in respect of all of the goods in class 25 - clothing, footwear and headgear.  In making this application, Ms Hayward asserts that she was the owner of the trade mark on 12.2.91, the date on which she made the application.

Registration of the application is jointly opposed by Paul David King, Raymond Desmond Mitchell and Carl Joseph Arnesen.  These three trade as Predator Surf and Skate and, for convenience, I will refer to all three of them as “the first opponent” from this point forward.  Registration was initially opposed on various grounds. 

The opposition process has followed the course set out in the regulations.  Both sides served evidence to support their positions and the opposition came on for hearing and decision by me, as a delegate of the Registrar of Trade Marks.  However, as matters have transpired, the matter is anything but routine.

At the hearing, the first opponent was represented by its patent attorney, Wayne Willis, of the attorney firm F. B. Rice and Co.  The applicant’s solicitor, Brett Doyle, of the firm Blake Dawson Waldron, also appeared.  It soon became clear, however, that Mr Doyle also represented a third party.  That was Twentieth Century Fox Film Corporation, a former opponent with no connection whatever to the first opponent.  While the opposition lodged by Twentieth Century has since been withdrawn, its repercussions are to be felt here and now in the issue of this decision.

At the hearing, Mr Willis commenced by making it clear that the first opponent, his client, now relies only on proprietorship of the disputed trade mark.  What is at issue, that being so, is simply a claim that his client has made prior use of essentially the same mark for the same kind of thing. (Hicks’ case, (1897) 22 VLR 636). This claim would undermine the applicant’s claim, under s 40, to be the lawful proprietor.

Mr Doyle, in answering this, did not dispute that this was the essence of the matter at issue.  However, he did make it clear that, as far as his two clients are concerned, Twentieth Century has the prior claim.  Ms Hayward, he argued, merely held the trade mark in trust for the true owner, Twentieth Century.  Twentieth Century, he asserted, had the right, as first user, to be registered ahead of the first opponent. 

Ms Hayward, he noted, had assigned all her trade mark rights to Twentieth Century and these rights had, he argued, coalesced with Twentieth Century’s.  The necessary application to have the assignment recorded in the register has been filed with the Trade Marks Office and is in order.  However, as Mr Doyle noted, the 1955 act does not recognise the assignment of an application, only that of a registration.  Therefore, recordal of the true owner must, despite the coalescing of rights, await the issue of a certificate of registration.

In simple terms, Mr Doyle argued that there are now really only two parties to this matter and two competing bundles of rights - the first opponent’s on one hand and, on the other, Twentieth Century/ Ms Hayward’s.  Twentieth Century now stood in Ms Hayward’s shoes.  Any defects that might have existed in Ms Hayward’s application were thereby cured.  Ms Hayward, while being notionally the legal owner, holds the trade mark in trust for the true owner, Twentieth Century.  Mr Doyle went so far as to describe Ms Hayward’s application as a mere shell for the rights of Twentieth Century.

Mr Willis, for his part, argued that Twentieth Century had no cause of action in the present dispute.  What was at issue in the present hearing was the contest as between the first opponent and Ms Hayward.  Mr Willis stressed that if I now considered Twentieth Century’s rights I would be assessing, from an administrative point of view, the property rights of a firm that never was, and never could be, the applicant.  Ironically, it was common ground that the actual applicant, Ms Hayward, was not the proprietor at law.

Mr Doyle argued that the difficulty of the present situation was a result of the framing of the 1955 act.  Unlike the 1995 legislation, the earlier act did not allow an assignment to be recorded during the time an application was pending.  Mr Willis suggested that the same problem would possibly arise under the new act where there was evidence that the original applicant had never been the owner at law.  Here, I think he was suggesting that the recordal of an assignment, even if possible while an application is pending, may not be able to remedy a defect that existed in the applicant’s title when the application was made.

Mr Doyle invited me to see the assignment as a mere acknowledgment of the obligation which Ms Hayward was under.  This was said against a background of s 15 of the 1955 act, which reads:

Trusts not to be noticed

15. Notice of a trust, expressed, implied or constructive, shall not be entered in the Register or be received by the Registrar.

He stressed, however, that he was not asking me to make an assessment of rights under the trust relationship, except as they arose under the assignment.  By this, I think he was saying, quite rightly, that recordal of the assignment would not of itself be receiving notice of a trust, since as a rule the Registrar does not go behind the assignment documents.

Evidence

Ms Hayward has declared that she has assigned the trade mark to Twentieth Century.  She also asserts that she had “used the trade mark PREDATOR on aerobic clothing for men in early 1991”.  However, while I accept this statement as having been honestly made, it is not supported by any evidence whatsoever of commercial use of the word PREDATOR as a trade mark.  Nor is the statement specific as to the date of first use.

The first opponent, for its part, claims use on a broader range of goods but does so without the support of any invoices.  There is, moreover, some disparity between its claims and the supporting declarations of those with whom it has traded.  Those declarations refer to use only on long and short-sleeve t-shirts and shorts.  Without something more than an unverified assertion, I cannot come to a positive finding on this crucial question of law.  I therefore say that I am satisfied only that the first opponent’s prior use extends to long and short-sleeve t-shirts and shorts.  I do not consider that trade mark use has been established for any other goods.

It is true that the first opponent’s evidence is approaching the minimum which could meet an evidentiary onus.  However, the declarations relied on by the first opponent are - in total and supported by various exhibits which suggest a business operation - sufficient.  They satisfy me that, earlier than the date of Ms Hayward’s application, the first opponent was engaged in actual commerce under the trade mark in question.  It has used the trade mark PREDATOR in a variety of forms, some of which are substantially identical to that which Ms Hayward seeks to register.

Twentieth Century, for its part, asserts use since 1988.  Mr Willis directed criticism at the extent to which this was truly trade mark use.  As matters pan out, that will be a question for another day.

Twentieth Century is not the applicant.  “Applicant” is defined in the regulations, but only for the limited purposes of Division 1 of Part VII of the regulations.  That division, in simple terms, sets limits for who can serve evidence on whom, and when, in relation to the opposition.  It also specifies who can request a hearing.  Were it not for the dispensation of Mr Willis, I certainly would not have heard Mr Doyle in his role as advocate for the rights of Twentieth Century.  However, given that concession, it was proper for me to hear Mr Doyle’s arguments.

Decision

Section 40 of the act stipulates that:

(1) 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.

While the law about proprietorship of marks can be complex, in the present case I can summarise it as follows:  the first user, in Australia, of a specific trade mark for a particular kind of thing, becomes the proprietor.  For that present purpose, I am required to decide if the condition specified in s 40 has been met for the recording of Ms Hayward on the register as the owner of the trade mark in suit.  If I am not satisfied of this, I must decide if the assignment of Ms Hayward’s rights to Twentieth Century has healed the apparent problem.

It is not for me to take on the role of a court and assess property rights where they are not directly relevant to the present application.  It may be that there has been some sort of coalescing of Ms Hayward’s rights with those of Twentieth Century, but that is a process beyond the concern of the present opposition.  The process of determining such property rights is outside my scope, as an administrator, in deciding whether or not to register the present application.

I cannot, therefore, give Mr Doyle the direction that he seeks, that the “true owner” is Twentieth Century.  It may be that Twentieth Century owns a trade mark, but it is not the present applicant.

Mr Willis anticipated such a decision.  He noted that his client, the first opponent, had its own pending application.  This was still under examination but apparently viewed with hostility by Twentieth Century.  Mr Willis argued that, in a sense, it would be inefficient to leave for another day the conflict between his client and Twentieth Century.  However, I do not think that, in deciding Ms Hayward’s application, I should give a ruling that might be seen as deciding the outcome of a hypothetical opposition to the registration of an application that has not yet even been accepted.  If nothing else, such a ruling would put any other potential opponent in an invidious position, its fate constrained at a hearing where it was not represented.

The present application, as filed by Ms Hayward, is flawed.  She cannot be recorded as proprietor for the same goods as those for which the first opponent has used the mark.  I have come to the conclusion that the only appropriate step is to dismiss the present application unless this defect is remedied.  It appears that Mr Doyle is still able to act notionally on Ms Hayward’s behalf to bring this about.  Indeed, Ms Hayward herself can request this amendment to what is still her application.  Accordingly, unless within the next month the application is restricted to exclude long and short-sleeve t-shirts and shorts, I will formally refuse it. 

I do not make any award of costs - the parties reserved the right to make submissions on that issue when the fate of the application is known.

T. Williams

Hearing Officer.
30 June 1998