Hepburn Shire Council v Hepburn Springs Naturals Pty Ltd - [2012] ATMO 61

TRADE MARKS ACT 1995

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

Re:Opposition by Hepburn Shire Council to registration of trade mark applications 1335106(35) and 1335107(35) - HEPBURN BATHHOUSE & SPA, HEPBURN BATHHOUSE AND SPA - filed in the name of Hepburn Springs Naturals Pty Ltd.

Delegate:

Iain Thompson

Representation:

Opponent: Marianne Dunham of FAL Lawyers

Applicant: Viesha Lewand, Director of Hepburn Springs Naturals Pty Ltd

Decision:

2012 ATMO 61

Section 52 opposition: s42 – sections 52 and 53 of the Trade Practices Act 1974 – trade marks likely to mislead or deceive – applications refused registration.

Background

These proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) concern two trade mark applications, filed by Hepburn Springs Naturals Pty Ltd (‘the applicant’) of Main Road Hepburn Springs. Current details of these applications appear below:

Application No: 1335106

Priority Date: 6 December 2009

Services:Class 35: Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); book clubs (retailing of books); convenience store retailing; department store retailing; discount services (retail, wholesale, or sales promotion services); hypermarket retailing; management of a retail enterprise for others; pharmacy retail services; presentation of goods on communication media, for retail purposes; retail clothing shop services; retail sale of natural and synthetic flowers and flower arrangements; retail sale of prepared meat and meat products (butcher’s shop); retail services; retailing of goods (by any means); supermarket retailing

Trade Mark: Hepburn Bathhouse & Spa

Application No: 1335107

Priority Date: 6 December 2009

Services:Class 35: Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); book clubs (retailing of books); convenience store retailing; department store retailing; discount services (retail, wholesale, or sales promotion services); hypermarket retailing; management of a retail enterprise for others; pharmacy retail services; presentation of goods on communication media, for retail purposes; retail clothing shop services; retail sale of natural and synthetic flowers and flower arrangements; retail sale of prepared meat and meat products (butcher’s shop); retail services; retailing of goods (by any means); supermarket retailing

Trade Mark: Hepburn Bathhouse and Spa

I note that the opposed trade marks are, to all intents and purposes, identical and henceforth I will refer to them as ‘the opposed trade marks’.
The opposed trade marks were examined in terms of section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 8 April 2010. On 8 July 2010 Hepburn Shire Council (‘the opponent’) of Vincent Street, Daylesford, served and filed Notices of Opposition (‘the Notices’) to the registration of the trade marks. The Notices include the ground pursuant to section 42 of the Act under which I will decide this matter and (for reasons which will become obvious) I will not consider the other grounds under sections 43, 58 and 62(A) which were included in the Notices and argued by the opponent.
The opponent and the applicant respectively served and filed evidence in support and answer and evidence in reply as allowed by the Act and regulations thereto.
The hearing of the matters was before me as a delegate of the Registrar of Trade Marks in Melbourne on 5 March 2012. Ms Marianne Dunham of FAL Law represented the opponent. Ms Viesha Lewand, who I understand is the sole director of the applicant, made submissions on behalf of the applicant.
At the outset of the hearing, Ms Lewand advised that she had turnover figures for the applicant’s business and could call witnesses on the applicant’s behalf. These witnesses were not present. I advised Ms Lewand that if she wished I could adjourn the proceedings in order for her apply to serve and file further evidence, to put the additional material into declaratory form and to properly serve and file it as the opponent ought to have an opportunity to consider and respond to it. I advised Ms Lewand that in the event it was likely that the costs of the present hearing would be regarded as being thrown away by the applicant. I asked Ms Lewand whether the turnover figures for the applicant’s business included specific and corroborated details of turnover under the opposed trade marks and told her that if this was not the case, it was possible that I would subsequently not accept the proposed evidence as without such information it would lack relevance to the proceedings.
After some hesitation on Ms Lewand’s part (during which I advised Ms Lewand that I was not in a position to offer her legal advice and pointed out the advisability of her seeking qualified legal advice) Ms Lewand elected to proceed on the basis of the evidence already served and filed.

Onus

The opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities. See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051.

The evidence

The evidence in support of the opposition comprises a statutory declaration by Steve Phillips who is General Manager, Corporate Services of Belgravia Health and Leisure Group Pty Ltd of Bayswater, Victoria (‘Belgravia’); a statutory declaration by Marianne Dunham who is the solicitor for the opponent; and a statutory declaration by Richard John Pekin who is Resource Officer for the opponent.
The evidence in answer is a declaration by Viesha Lewand, director of the applicant.
The evidence in reply is a further statutory declaration by Marianne Dunham.
I will mention at the outset of my discussion of the evidence that it is obvious that Ms Lewand has a deep sense of grievance which arises from what she perceives as being the actions of the opponent and others and how she identifies these alleged actions as impinging on her personal and business interests. None of these allegations are in any way substantiated or have a place in this forum other than by way of shedding some light on the applicant’s possible motives in seeking registration of the opposed trade marks.
Hepburn Springs is a resort village in the Macedon Ranges which at the time of the 2006 census had a population of some 601. Hepburn village, which lies very close to Hepburn Springs, had in 2006 a population of some 375. Both villages lie about three kilometres from Daylesford. Hepburn, Hepburn Springs and Daylesford are, inter alia, population centres which come under the control of the Hepburn Shire Council which is here the opponent.
Local nomenclature is hazy in properly distinguishing between Hepburn and Hepburn Springs. The historic reserve in Hepburn Springs (which is central to this decision) is called the Hepburn Mineral Spring Reserve (‘the Reserve’). There is a historic swimming pool at the Reserve which is called the Hepburn Pool. The Bathhouse (as I will refer to that complex) on the Reserve has been commonly referred to as being the Hepburn Spa. These places refer to themselves as being in ‘Hepburn’, rather than in ‘Hepburn Springs’. The local football and cricket teams refer to themselves by reference to the word ‘Hepburn’ rather than ‘Hepburn Springs’ and the area is surrounded by the Hepburn Regional Park. It will be further noted that the opponent in this matter is the Hepburn Shire Council which, while named for the smallest population centre in question, has its base of operations in Daylesford that, apparently, either has its own springs or is identified so closely with either of the ‘Hepburns’ that it is not easily distinguishable from them in this regard. This fact is signalled by a range of Daylesford businesses which identify themselves with the springs in either Daylesford or Hepburn – the Central Springs Inn, the Daylesford & Hepburn Mineral Springs Company and Deep Spring Estate.
As I have intimated, the Hepburn Mineral Spring Reserve is central to this decision: it has an interesting history, which is also relevant.
In his declaration Mr Pekin recounts the history as follows:
Historically Daylesford, Hepburn and the Hepburn Springs area were sites of gold diggings, the Daylesford site being more financially successful and hence having more substantial buildings. The Hepburn and Hepburn Springs area suffered a bushfire in 1906 which destroyed most of the older buildings in these towns.
The Hepburn Mineral Springs Reserve (“HMSR”) was proclaimed by the Victorian Colony in 1865 and established in 1867. The historic bathhouse and spa is situated within the HMSR, having first been established at the site in which it still stands in 1895 (but having been remodelled numerous times, with the most recent being 2008). HMSR was the first reserve of its type in Australia and in world terms was also a very early example of this type. The idea of nature reserves came from the United States and President Abraham Lincoln provided protection for the Yosemite area in 1864 (one year before the Hepburn Mineral Springs Reserve). Yosemite was only the second reserve in the United States of America following the first reserve which was proclaimed in 1832 when President Andrew Jackson created the “Hot Springs” reserve in Arkansas, to protect the mineral springs of that area.
Since HMSR was proclaimed, other springs in the area have also had small reserves set aside around them, but they are not as well known as the iconic HMSR. In the HMSR, there are 5 springs. The Victorian Department of Sustainability and the Environment (DSE) reports that there are 65 springs in the area, many of which are on private land. Nevertheless, many spa facilities in the area are now located in areas in which mineral springs are not situated, as I understand is the case with the Applicant.
As I understand it, there is archaeological evidence of human activity in the United Kingdom region of Bath’s hot springs dating back to the BC era. For Europeans especially, mineral springs and the “taking of the waters” are a strong cultural experience, and people are known to travel widely to seek the benefit of mineral waters.
The Hepburn Springs/Daylesford region of Victoria is acknowledged as Australia’s leading spa centre and, similar to the European experience, people travel widely to experience the benefits of the mineral springs. Exhibit RP-1 is a print-out of the current (2010) Victorian Tourism Board advertisement for the region.
Mineral Springs have been reported historically as being first discovered in the area by European settlers in 1836 by Captain John S Hepburn who had taken up a large land holding in the area.
The first shelter for visitors to the HSMR was a timber structure erected in the 1870s. This was replaced by the establishment of the original mineral springs bathhouse (Bathhouse) built in 1894 at a cost of GBP302. The Bathhouse was designed by the Swiss architect L Boldini and started with just two mineral spring baths. The Bathhouse at Hepburn Springs formed an integral part of the attraction of the area. Exhibit RP-2 is an extract from an unknown publication on or about the 1930s with a history of the HMSR. From this it can be seen that in the early years after the grant of land, and “with very little aid from the Government, the two shires developed the reserve, and established bathrooms, with two baths, and provided hot mineral baths.”
By 1912, Hepburn Bathhouse and Spa had expanded to include 4 mineral spring baths. Around this time, demand for the bathing services increased from 2,215 baths in 1913 to 7,000 baths in 1924. Visitors could choose from hot mineral baths, hydro-massage, sinusoidal electric baths and radium baths. Exhibit RP-4 is a print-out from the Victorian State Government website available at exhibition/mineral indicating “Hepburn Springs has the highest tourist profile of the Victorian mineral springs. Here a bathhouse was built in 1894 which provided hot and cold mineral baths and towels. ‘Electric baths’ were introduced in the 1930s with electric charge to ‘stimulate’ bathers. An experienced nurse supervised visitors -although people with infectious diseases were not permitted into the bath house”.
Concerning the management of the Bathhouse at the Reserve, Mr Pekin states:
The Bathhouse which opened in 1894 has undergone several renovations since it first opened - most notably in the 1920s, the 1980s, the 1990’s and more recently in 2008 (see below) - and has expanded over time to add more services. The management of the HMSR and Hepburn Bathhouse and Spa has varied over the years since the HMSR was first proclaimed in 1865. For example, under section 14 of the Crown Land (Reserves) Act 1978, the Council of the Shire of Daylesford and Glenlyon was appointed over portion of the Hepburn Springs Reserve to include the area known as “the Bath House Site”. Exhibits RP-6 - RP-9 (inclusive - 4 documents dated 1991) are copies of documents executed under the Crown Lands (Reserve) Act 1978 confirming the role of the “Council of the Shire of Daylesford and Glenlyon over portion of the Hepburn Springs Reserve to include the area known as the “Bath House Site”.
Implicit within these various manifestations and iterations of the Bathhouse on the Reserve were changes in its name and the way in which it has been publicly identified. Mr Pekin states that that the Bathhouse on the Reserve has been variously called “Hepburn Spa, the Bathhouse, the Bath House, the electric baths, the Hepburn Springs Bathhouse and Spa Complex, the Hepburn Mineral Springs Baths, the Mineral Baths, the Hepburn Springs Bath House, the Hepburn Springs Spa Complex and since the occupation and running of that facility by the current lessee, Belgravia with the consent/permission/license of the Hepburn Shire Council, “Hepburn Bathhouse and Spa” (also shown sometimes as “Hepburn Bathhouse & Spa”).”
Mr Phillips’ declaration reflects a part of the difficulty facing the opponent and Belgravia as the new (and current) lessee of the Bathhouse in choosing a name for the complex. He says:
Belgravia looked to the issue of what the historic bathhouse could be called. Belgravia was aware that the former lessee had traded under the name Hepburn Spa, had a company called Hepburn Spa Pty Ltd and had continued to trade under this name in the premises that it leased across the road from Hepburn Springs Mineral Reserve between 2006, when the historic bathhouse closed for renovations and 2008, when it re-opened. Belgravia and Council conferred on a name that would best describe the historic bathhouse, considering the situation with Hepburn Spa Pty Ltd and considering also the historical use of (the variety of) names by which it had been known by members of the public who were previous customers of the historic bathhouse, some of which were long-standing customers.
Another part of the naming difficulty for the opponent and Belgravia was the fact that at least two of the people (including the applicant) who had tendered for the lease of the Bathhouse on the Reserve allegedly attempted to anticipate what the new operation of the Bathhouse on the Reserve might be called and to register these names as trade marks.[1] A search of the Register of Trade Marks reveals that applications filed at around this time include:
[1] It is alternatively possible that these tenderers for the lease were so certain of winning the lease that they attempted to register trade marks which they thought that they might themselves might be likely to use.

Application No: 1122139 (lapsed)

Priority Date: 5 July 2006

Owner: Hepburn Springs Naturals Pty Ltd

Services:Class 44: Health spa services; health spas (health, hygiene and beauty care services); medical spa services

Trade Mark:

Application No: 1122140 (lapsed)

Priority Date: 5 July 2006

Owner: Hepburn Springs Naturals Pty Ltd

Services:Class 44: Health spa services; health spas (health, hygiene and beauty care services); medical spa services

Trade Mark:

Application No: 1123296 (lapsed)

Priority Date: 7 July 2006

Owner: Hepburn Spa Pty Ltd[2]

[2] My understanding is that Hepburn Spa Ltd, former name Hepburn Spa Group Pty Ltd, is a prior lessee of the Bathhouse on the Reserve.

Goods:Class 44: Beauty care salons; provision of skin and body care, massage, hydrotherapy, balneotherapy and spa therapy services; day spa and resort spa services; mineral and salt water therapy services; services provided by health, cosmetics and beauty salons
Trade Mark: HEPBURN SPRINGS BATHHOUSE ;
HEPBURN BATHHOUSE

Registration No: 1218750

Priority Date: 10 January 2008

Owner: Hepburn Springs Naturals Pty Ltd

Goods/Services: Class 3: Non-medicated massage preparations; massage creams, not medicated; massage oils, not medicated; non-medicated massage preparations
Class 35: Book clubs (retailing of books); convenience store retailing; department store retailing; hypermarket retailing; retailing of goods (by any means); supermarket retailing

Trade Mark: Hepburn Springs Bathhouse

Registration No: 1246037

Priority Date: 19 June 2008

Owner: Spa Country Getaways Pty Ltd

Services:Class 44: Massage; health spas (health, hygiene and beauty care services); health spa services; medical spa services; advisory services relating to beauty treatment; beauty consultancy; beauty consultation; beauty counselling; beauty services; beauty treatment; consultancy relating to beauty; consultancy relating to beauty care; therapeutic treatment of the body

Trade Mark:

Registration No: 1252525

Priority Date: 21 July 2008

Owner: Hepburn Springs Naturals Pty Ltd

Services:Class 44: Acupuncture services; advisory services relating to beauty treatment; advisory services relating to diet; advisory services relating to diseases; advisory services relating to health; advisory services relating to medical problems; advisory services relating to medical services; advisory services relating to nutrition; advisory services relating to slimming; advocacy services relating to health issues; aged care services (medical and nursing services); aromatherapy services; beautician services; beauty salon services; beauty services

Trade Mark:

Registration No: 1256405

Priority Date: 12 August 2008

Owner: Hepburn Springs Naturals Pty Ltd

Goods/Services: Class 3: Almond soap; antiperspirant soap; bar soap; bath soap; body soaps; cakes of soap; cakes of toilet soap; cosmetic soaps; deodorant soap; deodorising soaps; facial soaps; liquid soaps; perfumed soaps; shower soap; soap; after sun moisturisers; body moisturisers; cosmetic moisturisers; eye moisturisers for cosmetic use; facial moisturisers (cosmetic); hair moisturisers; moisturisers (cosmetics); non-medicated moisturisers
Class 44: Massage

Trade Mark:

The opponent and Belgravia alighted upon the name “Hepburn Bathhouse and Spa” which they believed would reflect the way in which the Bathhouse had been historically known and would avoid conflict with the other traders who had applied to register as trade marks, or were using as business or company names, the word ‘Hepburn’ with various qualifying words or elements. This decision was effectively communicated to the public in May 2008 – on 4 May 2008 an article which carried this import appeared in The Courier (a Ballarat newspaper) and on 9 May 2008 Belgravia placed an advertisement for staff for the Hepburn Bathhouse and Spa on the website spacareers.com.au. On 13 May 2008 a similar advertisement appeared in The Advocate (which is the local Daylesford, Hepburn and Hepburn Springs newspaper) under the heading ‘Hepburn Bathhouse & Spa’.

The company name ‘Hepburn Bathhouse and Spa Pty Ltd’ commenced in the name of Belgravia on 20 November 2008.
Relevant to this matter Ms Lewand, (who as a sole director of the applicant does not distinguish between herself and the applicant), states that she moved to Hepburn Springs in about 1997 and that at around that time gained a diploma in holistic healing.
I gather, from both Ms Lewand’s statutory declaration and her submissions at the hearing that she sells her products, which largely fall within Class 3 of the International (Nice) Classification of Goods and Services, from stands in large shopping centres in the South East of Australia. In addition she states that she has travelled to Dubai to sell her goods ‘three times or more’.
Not much of Ms Lewand’s declaration appears to be specifically directed to her adoption of the opposed trade marks (or her use of them) or to the addressing of the opponent’s evidence. A tenor of her declaration may be gained by the following passages:
I have experienced other matters with my Local Council — I believe my Local Council treated me severely and without justice because my house is in a block which a large hotel surrounds. The hotel surrounding my property had intentions of expanding and placing a large venue right on my fence line, the length of my block. I stopped this in VCAT. The reason I bring this up here is that my Local Council have been attacking me on all fronts - my business (where I earn my income to fight them), my property as they were trying to help the expansion plans of the surrounding hotel , etc. They do this by lying about my activities, etc. My Local Council started sending my rate notices showing that I was zoned COMMERCIAL and so I opened up my shop. They waited until I spent money on my business then threatened from memory on three occasions to “break into my house with the police and take photos of my bedroom cupboards and drawers”. This was construed by me to mean that they were going to plant drugs in my home and then get the police to find them. This is why I screamed out loudly and ended up on TV. My mother was dying of lung cancer in one of the bedrooms at the time.[3]
… I was told by a non reliable source that a Jewish Englishman living in London pays for the Dead Sea Product sales stands in shopping centres all over the world and which employs many ex Israeli army people (who are actually very nice and I have employed a couple of ex Dead Sea sellers at Christmas time to help me) (a strong competitor of mine — Dead Sea products) - I am still wondering if this same gentleman also owns Belgravia (which I have been told by a local resident is the part of London where many wealthy Jewish people live — like Caulfield in Victoria), Belgravia is the company which presently leases the Hepburn Springs Mineral Reserve Bathhouse. I admit I am naïve in these matters but am fighting to save the investment I have built up for many years. I am an Australian and am fighting for my entitlement. Belgravia Holdings may also lose the lease in years to come but I am still here. I have heard that Belgravia have closed the Hepburn Springs mineral reserve spa resort several times for different reasons and many residents fear that they will pull out of their lease altogether. None of us I am sure want this as we want the investments of our real estate to be raised to new heights and so want this multi million dollar company to keep the lease and run the spa resort professionally.
[3] These various allegations are vigorously denied by the opponent.
There is no direct assertion (or any corroborative evidence) served or filed by Ms Lewand as to when, or if, she first used the opposed trade marks although she asserted in submissions that she “did use these trade marks for some ten years”. While Ms Lewand gives some dollar figures within her declaration, as far as I can ascertain they relate to the expense of hiring stands within shopping centres rather than being turnover figures for the provision of services under any particular trade mark. Ms Lewand was also careful to place representative product in front of her at the hearing of this matter. However, the labels affixed to that product were printed on a home laser printer and there was nothing in evidence to show to date on which the labels had been affixed.

Discussion

Section 17 of the Act provides:
17What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note:For sign see section 6.
Thus, in proceedings under the Act, if a person is to rely on a sign in proceedings under the Act as a trade mark, that sign must have been used under the control of a person in relation to particular goods or services in order for that sign to qualify itself as being a trade mark.
It should be noted that the opponent, or Belgravia, did not have the use of a trade mark in relation to any particular goods or services before the priority dates of the opposed applications. While the words ‘Hepburn Bathhouse and Spa’ appeared in a newspaper article and in two advertisements seeking staff, these instances were not uses in the course of trade so as to indicate a connection between the user of the sign and any particular goods or services.
At that time, there were no goods or services available to be purchased by prospective customers and those uses of the sign do not, for example, fall into the established categories of use which would qualify Belgravia to be regarded as the owner of a trade mark: Buying Systems (Australia) Pty Ltd v Studio Srl [1995] FCA 1063; [1995] AIPC 91-119; (1995) 30 IPR 517.
It is, however, obvious that Belgravia used the words HEPBURN BATHHOUSE AND SPA and those words were identified with Belgravia and its future operations (although not as a trade mark) before the relevant date which is the priority date that the opposed applications were filed: 6 December 2009.

Section 42

Section 42 of the Act provides:
Trade mark scandalous or its use contrary to law
42. An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
Following the decision of Madgwick J in Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683; [2001] AIPC 91-724; (2001) 52 IPR 24, the Registrar is obliged, when assessing whether use would be contrary to law under s.42(b), to take into account the operation of laws and legislation other than the Trade Marks Act 1995.
It is not, of course, essential that a sign relied upon by an opponent in relation to this ground of opposition has been used as a trade mark: QANTAS Airways Limited v Danniel Amadio [2011] ATMO 84.
Ms Dunham argued that section 52 of the Trade Practices Act 1974, which was in force at the priority date of the opposed applications, applies because the use of the opposed trade marks by the applicant would mislead or deceive:
The mark itself, HEPBURN BATHHOUSE & SPA is contrary to law according to section 52 of the Trade Practices Act 1974 (Cth) (TPA) and / or section 18 of Schedule 2 (Australian Consumer Law [ACL] ) of the Competition and Consumer Act 2010 (Cth) (the CCA) (with the TPA applying up until 31 December 2010 and the CCA applying from 1 January 2011) and the common law tort of “passing off”.
The mark is misleading and deceptive as the use of the words “Bathhouse” and “Spa” separately from each other, and in combination with each other, with “Hepburn”, in the context of the unusual history of the mineral springs region in Australia and its historical promotion over many years within Australia, is misleading and deceptive, given that the Applicant’s business and residence in which the business operates does not contain a bathhouse, or a spa, but merely a bath in a bathroom. The Opponent will provide dictionary definitions that show this case to be stronger for the term “bathhouse”, than “spa”, (mainly due to a general broadening of the use of the word “spa” in the last 20-30 years in Australia), nevertheless the combination of each of the words together, I submit, is misleading and deceptive. The Opponent will take the Hearing Officer to evidence where people actually have been misled or deceived and the Applicant has done nothing to rectify, or correct the misconception. This demonstrates that it would, rather than could mislead or deceive Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24. The Opponent will rely on the case of Automobile Club de L’Ouest v Gardiakos (2005) 66 IPR 191.
The relevant date at which to consider the appropriate legislative provision which is properly applicable is 6 December 2009, being the date on which the opposed applications were filed. As at that date, the Australian Consumer Law had not commenced to take effect. So, it is the wording of Section 52 of the TPA to which proper regard must be given in this instance. That Section relevantly provides as follows:
A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Given the particular facts of the present matter, the preliminary requirements of section 52 of the TPA are satisfied. The applicant is a corporation and it is apparently engaged in trade or commerce, so that the threshold formal elements of the section are met.
In Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506; (1989) 16 IPR 431; [1990] ATPR 40-994, Hill J said at paragraph 41:
While there remain many areas of difficulty in the application of s.52 of the Act to the facts of a decided case there have been established a number of propositions, relevant to the determination of the present case, which are no longer in dispute:
1. For conduct to be misleading or deceptive the conduct must convey in all the circumstances of the case a misrepresentation: Taco Bell[4] at 202. In the present case the misrepresentation on the part of the respondents is said to be that the financial product advertised and marketed by each of them is the product of the applicant or that there is some business relationship between the applicant and each of the respondents or that the applicant has endorsed the respective product of the respondents.
2. There will however be no contravention of s.52(1) of the Act unless error or misconception results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: Puxu[5] per Gibbs CJ at p 6 and per Mason J at p 15, Global Sportsman Pty Ltd v. Mirror Newspapers Ltd [1984] FCA 180; (1984) 55 ALR 25, at p 34.
3. Conduct will be likely to mislead or deceive if there is a "real or not remote chance or possibility" of misleading or deception regardless of whether it is less or more than 50%: Global Sportsman[6] at p 34. The question of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective question which the Court must determine for itself. Hence evidence that persons in the relevant class have been misled will, although admissible, not be determinative. In some cases however such evidence will be very persuasive: Puxu per Gibbs CJ at pp 198-9.
4. Conduct of a corporation causing mere confusion or uncertainty in the minds of the public in the sense that they may be caused to wonder whether two products may have come from the same source is not necessarily coextensive with misleading or deceptive conduct: Puxu at p 100; Bridge Stock Brokers v. Bridges (1984) 57 ALR 401 at p 413 per Lockhart J. Since actual deception need not be shown the Court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived: Weitmann v. Katies Ltd (1977) 29 FLR 336, 343. The test in passing off cases is usually expressed as being whether a "substantial number of persons likely to become purchasers ... are liable to be deceived by the defendant's use of the name. On the other hand it is not necessary to show that all, or substantially all, persons in the market associate the name with the plaintiff's goods, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question." (per Wilberforce J, as he then was, in Norman Kark Publications Ltd v. Odhams Press Ltd (1962) RPC 163 at 168 and see Saville Perfumery v. June Perfect Ltd (1941) 58 RPC 147 at 175-6, 10th Cantanae Pty Ltd v. Shoshana Pty Ltd (1987) 79 ALR 299 at 315 per Gummow J).
5. In a case such as the present the applicant must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant's business in a particular country or geographical area: Sheraton Corporation of America v. Sheraton Motels Ltd (1964) RPC 202; BM Auto Sales Pty Ltd v. Budget Rent A Car System Pty Ltd (1976) 12 ALR 363. However at least in some circumstances very slight activities may be found to be sufficient to establish that a name has become distinctive of a person's business in a particular country: Miki Shoko Co Ltd v. Merv Brown Pty Ltd (1988) ATPR 40-858.
6. Section 52 is not confined to conduct which is intended to mislead or deceive: Puxu per Gibbs CJ at p 197 and a corporation which acts honestly and reasonably may none the less engage in conduct that is likely to mislead or deceive: Yorke v. Lucas [1985] HCA 65; (1985) 61 ALR 307 at p 309.[7]
[4] Taco Company of Australia Inc v. Taco Bell Pty Ltd [1982] FCA 136; (1982) 42 ALR 177.
[5] Parkdale Custom Built Furniture Pty Ltd v. Puxu Pty Ltd [1982] HCA 44; (1981-2) 149 CLR 191.
[6] Global Sportsman Pty Ltd v. Mirror Newspapers Ltd [1984] FCA 180; (1984) 55 ALR 25
[7] A recent summary of the relevant principles is to be found in the decision of Justice Gordon in ACCC v. Dukemaster Pty. Limited [2009] FCA 682; (2009) ATPR 42-290 at paragraph 10.
In Miki Shoko, above, the Court observed at paragraph 41:
Very slight activities have been held sufficient to establish that a name has become distinctive of a person's business in a particular country: Sheraton Corporation of America v. Sheraton Motels Limited (1964) RPC 202; Poiret v. Jules Poiret Limited (1920) 37 RPC 177; Volt Australia Limited v. Directories (Aust.) Pty. Limited [1985] FCA 160; (1985) 5 IPR 140; B.M. Auto Sales Pty. Limited v. Budget Rent-A-Car System Pty. Limited (1976) 12 ALR 363; and Elida Gibbs Limited v. Colgate-Palmolive Limited (1983) FSR 95. The cases of Volt Australia, B.M. Auto Sales and Elida Gibbs also support the proposition that it is not necessary that Merv Brown had commenced retail sales in order to acquire the relevant reputation for the purposes of passing off and as a basis for the operation of ss. 52 and 53 of the Trade Practices Act.
Similarly here I am satisfied that it was generally known via a newspaper article and an advertisement in the Hepburn Daylesford area that the Bathhouse at the Reserve would be trading under the name Hepburn Bathhouse and Spa and that these activities by the opponent were sufficient to enliven this ground.
At hearing Ms Lewand portrayed the applicant as a sole trader who only sells goods at stands in shopping centres and who consequently had no interest in providing the sorts of services that are offered at the Bathhouse on the Reserve. However, the applicant’s pattern of trade mark applications which includes such services clearly indicates the contrary.
In the context of the particular services in respect of which registration is sought (that run as far as butchers’ shop services) which are not those immediately thought of as bathhouse or spa services, I do not consider that the opposed trade mark (in the sense suggested by Ms Dunham) misleads or deceives as it would do if the services in respect of which the trade marks were proposed to be used were ‘mineral springs services’, ‘spa services’ or ‘health resort services’. The applicant, by Ms Lewand’s submissions at the hearing, does not run a ‘bathhouse and spa’ but rather has a house which contains a bath and a domestic spa. Ms Dunham here focused on wording of the trade mark itself being misleading and deceptive because the applicant does not offer the services denoted by the words ‘bathhouse and spa’: but if Belgravia and Hepburn Bathhouse and Spa Pty Ltd did not exist, the use of the opposed trade marks by the applicant could be viewed as being fanciful. However, as indicated in paragraph 50, below, the applicability or otherwise of section 52 of the TPA does not necessarily end at this point.
The situation changes when viewed in the light of both sections 52 and 53 of the TPA. Section 53 reads:
53. A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services-
(a) falsely represent that goods or services are of a particular standard, quality or grade, or that goods are of a particular style or model;
(b) falsely represent that goods are new;
(c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;
(d) represent that the corporation has a sponsorship, approval or affiliation it does not have;
(e) make false or misleading statements concerning the existence of, or amounts of, price reductions;
(f) make false or misleading statements concerning the need for any goods, services, replacements or repairs; or
(g) make false or misleading statements concerning the existence or effect of any warranty or guarantee.
In this instance, I consider that subparagraphs 53(c) and (d) of the TPA are applicable. These provisions have their counterparts in Section 29 of the Australian Consumer Law.
The evidence demonstrates that applicant has shown an apparent willingness to align its trade marks with what it perceived to be the possible names which a successful person in the tender for the lease of the Bathhouse on the Reserve might use and it has applied to register these trade marks. Once the lease for the Bathhouse on the Reserve was granted to Belgravia, the new name for the Bathhouse on the Reserve became fixed as being Hepburn Bathhouse and Spa and was bruited about as such during May 2008 in local newspapers.
In September 2008 the applicant applied to register the following trade mark:

Registration No: 1261336

Priority Date: 9 September 2008

Goods:Class 3: Almond soap; antiperspirant soap; bar soap; bath soap; body soaps; cakes of soap; cakes of toilet soap; carbolic soaps; cosmetic soaps; deodorant soap; deodorising soaps; disinfectant soap; disinfectant soap solutions; facial soaps; floating soaps; laundry soaps; liquid soaps; medicated soap; non-medicated soaps; non-medicated toilet soaps; perfumed soaps; perfumed toilet soaps; preparations containing soaps; shaving soap; shower soap; soap; soap creams for use in washing; soap for brightening textile; soap for foot perspiration; soap free washing emulsions for the body; soap pads; soap powders; soap products; soap solutions; soaps; soaps for laundry use; soaps for personal use; soaps in cake form; soaps in gel form; soaps in liquid form; soapy detergents; soapy gels; sponges impregnated with soaps; sugar soap; textile pads impregnated with soap for toilet cleansing purposes; toilet soap

Trade Mark:

The acceptance of the above trade mark for possible registration occurred on 27 November 2009 and on 6 December 2009 the applicant applied to register the trade marks which are here opposed.
It is apparent that the applicant seeks to claim, via trade mark registrations, that it and its goods and services have the sponsorship or approval of either the business ‘Hepburn Bathhouse and Spa’ or the person ‘Hepburn Bathhouse and Spa Pty Ltd’ which approbation the applicant and those goods and services do not have.

However, the applicant points to the trade mark registration mentioned at paragraph 46 and argues, in effect, that the opponent has (by not opposing its registration) acquiesced to its use and should be taken to have acquiesced to all uses of the trade mark by the applicant. Conversely, Ms Dunham argued that the opponent is a Council of limited resources but ‘had to draw the line in the sand somewhere and that line was crossed when the applicant applied to register in respect of services.’
I agree with Ms Dunham. At the hearing, Ms Lewand characterised trade mark registrations as cheap, easy to obtain for a self-representer, and being a weapon to use against “business enemies”. In her declaration she more directly refers to the opponent as being an enemy.[8] Both that, Ms Lewand’s obvious sense of grievance, and the timing and content of the applications, strongly dictate a conclusion that the applicant decided because it had not won the lease on the Bathhouse on the Reserve that it would at least claim that the applicant and the applicant’s services are directly connected with, or had the approbation of, the new lessee of the Bathhouse on the Reserve via its trade marks.
[8] Statutory declaration of Ms Lewand at para 21: “This is the fear generated by my enemies towards me. It is very well known that my Local Council and others are fighting me on many fronts through my own appearance and outcry on tv.”
The other claim inherent in the opposed trade marks (that the services and goods offered in connection wherewith are those of the HEPBURN BATHHOUSE AND SPA) is also misleading and deceptive in terms of section 52 of the TPA. This might be gauged by Ms Lewand’s sworn statement that several of her customers who have visited the Bathhouse on the Reserve have expressed extreme disappointment at not finding her products bearing the trade marks being retailed there. While Ms Lewand’s complaint may be aimed at expressing her frustrations that the new lessee of the Bathhouse will not stock her goods, the customers’ expectation that they would find goods bearing the trade mark being retailed by Hepburn Bathhouse and Spa Pty Ltd at the Bathhouse on the Reserve does in my consideration demonstrate the deception.
The opponent has established its ground under section 42 of the Act.

Decision

Section 55 of the Act relevantly provides:
Decision
55(1). 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.
I refuse to register applications 1335106 and 1335107.

Costs

Costs may follow the event and I award costs at the official scale against the applicant apportioned appropriately between the two oppositions – thus, for example, the opponent may claim once for its evidence in support and reply and once for its representation at the hearing but it may claim all of its official fees in relation to each application.

Iain Thompson

Hearing Officer

Trade Marks Hearings

26 June 2012