Hero Pty Ltd v Peter Bestry

[2000] ATMO 109

TRADE MARKS ACT 1995

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

Re:Opposition by Hero Pty Limited to registration of trade mark application 773160(19) - Ultrastone - filed in the name of Peter Bestry.

Background

This application was filed in the name of Peter Bestry ('Bestry') on 16 September 1998 in Class 19 and seeks to register the trade mark ULTRASTONE in respect of:

Non-metallic building materials in this class, brick, building blocks, paving bricks, masonry items, cement products.

The application was accepted for registration and advertised as such in the Australian Official Journal of Trade Marks of 21 January 1999.

On 19 March 1999, within the time allowed to do so, Hero Pty Limited ('Hero') filed Notice of Opposition to the registration of the trade mark.  The relevant grounds of opposition that were put at the hearing will become apparent in my reasons, below.

On 19 April 1999, after seeking and receiving extensions of time in which to do so, Hero filed and served its evidence in support of the opposition.  On 12 September 2000, I heard the issue by teleconference in Canberra; the opponent was represented by Peter Caporn of Wray & Associates of Perth, Western Australia.  The applicant did not appear and was not represented at the hearing.

The evidence

The evidence consists of a statutory declaration by Anthony Lloyd Richardson who is general manager of Ultrastone, a business registered in Western Australia.  Mr Richardson attests to a web of companies involving a group of concrete businesses that were, apparently, in some financial difficulty.

Mr Richardson was previously (in 1997 to 1998) a director of a company called Innovative Concrete Pty Limited, which traded as Ultrastone.

As I understand this declaration, companies called Innovative Precast Systems Pty Ltd, Innovative Concrete Pty Limited, A1 Slabs Pty Ltd and Uxbridge Pty Ltd were merged in July 1997 - I gather (although it is not expressly stated) to form the IPS Group.  IFS Mgnt Pty Ltd was a company established to own all of the assets of the IPS Group as at 20 August 1996 and was registered as a company on 9 July 1996 - these assets were leased back to the IPS Group.

I must interpolate here to state that I am quite unclear as to why IFS Mgnt Pty Ltd should have been established one year before the merger of the above-mentioned companies to own their assets.

However, under the new arrangements, IPS encountered further difficulties and, on 25 August 1998, Price Waterhouse of Perth was appointed receiver and manager of IPS.

By agreement dated 10 October 1998, IPS assets (which I gather to be only fixtures), including (says Mr Richardson) the instant trade mark, was sold to Hero Pty Limited - the opponent in these proceedings.  Shortly after the sale of these fixtures, Hero made an offer to IFS Mgnt Pty Ltd for the balance of the assets - this offer was rejected and the balance of the assets were collected by a Mr Paul Antonelli.

The trade mark was adopted by Mr Richardson, Tony Perrella and Paul Antonelli during July or August 1997.  The business name Ultrastone was registered on 21 August 1997 by IPS, Westside Offshore Pty Ltd and Fairbridge Investments Pty Ltd.  On 27 August 1997, IPS applied to register the trade mark in respect of goods the same as those of this application.  However, the application lapsed after it had been accepted for want of payment of the registration fees.

Use of the trade mark started in August 1997 and continued to August 1998 when the receiver/manager was appointed.  I will note that the sales forecasts had been very optimistic but that modest sales under the trade mark totalling $96002.91 are evidenced for the period January to June 1998.

Mr Richard son suggests that Mr Bestry, the applicant, is an investor in IFS Mgnt Pty Ltd.

The hearing

At the hearing, Mr Caporn presented his submissions for the applicant in terms of sections 58, 60 and 43 of the Act.  At the conclusion of the hearing, I asked him whether, should the opposition be successful, he would accept my reasons in terms of only one of the sections he had put.  Mr Caporn agreed to this approach.

Section 58

Section 58 of the Act allows:

Applicant not owner of trade mark

58. 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.

Section 6 defines:

applicant, in relation to an application, means the person in whose name the application is for the time being proceeding.

The applicant here is Mr Peter Bestry - the person in whose name the application is proceeding.

In the course of the argument in Hicks's Trade Mark, (1897) 22 VLR 63 6 (at 640) Holroyd J stated:

A person cannot be properly registered unless he is the proprietor. Proprietor is the person who at the moment he makes application to be registered is entitled to the exclusive use of the name, whether he then or before publicly adopted it. A man cannot be said to have adopted a name if someone else has done so before him. Section 19 merely says that the act of applying is to be deemed equivalent to public user. No one could otherwise be entitled to registration as proprietor unless he had publicly used the trade name before. The section does not affect the fact that another person used the name first. The difficulty here is that although Hicks may have by virtue of his application publicly used the name, someone else publicly used it before him.

In delivering the judgment of the court his Honour said:

For the reasons given by us in the course of the argument, we think this application to expunge Hicks’s name from the register of trade marks as the proprietor of the word “Empress” as a trade mark applied to stoves ought to be granted. In order to substantiate his application to be placed on the register for this word he must have claimed to be the proprietor, and the word “proprietor” must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration of the word “Empress” in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the register for that trade mark, and his name will be properly removed on the application of the person whose right of user was thereby disturbed.

In the absence of any evidence of prior use of the trade mark by Peter Bestry, the relevant date I am to use in this assessment is the date of filing of this application: 16 September 2000. 

The expression in the above quotation from Hicks Case "the same word" has come to mean 'a substantially identical trade mark.'  In Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) AIPC 91-049; (1994) 120 ALR 495, Gummow J, referring to The Shell Company of Australia Limited v Rohm and Haas Company (1949) 78 CLR 601, said:

... it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice.

The trade marks at issue here are substantially identical.

The expression in Hick's Case, above, "the same goods" looks to the identity between the goods (or services) of an applicant and the goods (or services) of an opponent.  The goods in question here are, to all intents identical.

It is not necessary for me to find who is the proprietor of the trade mark ULTRASTONE - all I must determine is whether, at the time he filed the application, Peter Bestry was the proprietor of the trade mark.  To this extent, the evidence about the somewhat involved chain of asset ownership, lease-back and insolvency is something of a side issue.

It is evident that the trade mark was devised by Mr Richardson, Tony Perrella and Paul Antonelli and may have been first used by IPS or one of their associated companies around August 1997.  I find the evidence unclear and vague on this point.  However, the evidence before me does clearly show that whoever the first user and 'author' of the trade mark was, it was not the applicant - Mr Peter Bestry.  Mr Bestry has not answered and refuted this evidence.

Accordingly, the opposition in terms of section 58 of the trade mark is successful.

Decision

Hero has been successful in making out a case for its opposition.  I therefore refuse to register this application.

Costs

The opponents, having been successful, are entitled to their costs, which I award against the applicant.

Ian Thompson
Hearing Officer

14 October 2000