Inspectorate Holdings Plc v Mercantile Marine Pty Ltd

[2011] ATMO 86

TRADE MARKS ACT 1995

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

Re:Opposition by Inspectorate Holdings PLC to registration of three trade mark applications: 1289308(39, 42) –

1289309(39, 42) –  

1289310(39, 42) –

filed in the name of Mercantile Marine Pty Ltd.

Delegate:	Alison Windsor
Representation:	Opponent:  Dr David Cox of Jackson McDonald Lawyers Applicant:  Tom Cordiner of counsel instructed by Markwell Intellectual Property Lawyers
Decision:	2011 ATMO 86 S52 opposition:  grounds for opposition under ss 42(b), 58, 60 and 62A pursued: grounds under s58 established for all three trade marks – opposition successful. Costs awarded against applicant.

Background

1. Mercantile Marine Pty Ltd (‘the Applicant’) filed three trade mark applications under the provisions of the Trade Marks Act 1995 (‘the Act’).  Current details of the applications are shown below:

   Application number:            1289308
   Filing date:  21 March 2009

   Services:Class 39:  Inspection of goods for transportation; inspection of vessels; cargo agency services; cargo delivery services; cargo forwarding services; cargo handling; cargo loading services; cargo transportation; cargo unloading services; delivery of cargo; import and export cargo handling services; information services relating to the movement of cargo; loading of cargo; salvage of ships cargo; shipping port services (berthing, mooring, cargo and container handling, storage and transportation); storage of cargo; transport of cargo; transportation of cargo; unloading cargo; chartering of marine vessels; marine freighting; marine salvage; marine towage; marine transport.

   
   

   Class 42:  Inspection of goods for quality control; technical inspection services; cargo surveying; conducting surveys; engineering surveying; engineering surveys and inspections; environmental surveys; hydrographic surveying; quantity surveying; surveying; technical survey services; cargo surveying.

   Trade Mark:   (the IGI trade mark’.)

   Application number:            1289309
   Filing date:  21 March 2009
   Services:  Classes 39 and 42 – As above.
   Trade Mark:   (‘the GWAS trade mark’)

   Application number:            1289310
   Filing date:  19 March 2009
   Services:  Classes 39 and 42 – As above.
   Trade Mark:   (‘the G Symbol’)

2. The applications were examined as required by the Act and all three were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks dated 16 July 2009.

3. On 7 October 2009 Inspectorate Holdings Plc (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to all three applications.  The parties then filed and served evidence in support, in answer and in reply as provided for by the Trade Mark Regulations 1995 (‘the Regulations’).  This process was completed by 22 December 2010 when the Opponent advised that the evidence in reply already filed comprised the whole of that evidence.

4. On 15 February 2011 the Applicant applied for permission to serve further evidence. 

5. On 16 February 2011 the Opponent filed written submissions in response to a letter from IP Australia dated 18 January 2011.  This letter had advised that the as the Opponent did not intend to provide any additional evidence in reply, the opposition was now at the stage where either party could request a hearing.  The letter included the following paragraph:

   If no response is received within one month from the date of this notice, the Registrar will presume that neither party to the opposition is to be heard and will proceed to decide the matter by reference to relevant information about the matter at the Trade Marks Office, including any written submissions filed within that one month period.  Please note that there is no fee required for filing written submissions.

6. The Opponent did not object to the grant of the application to serve further evidence on the proviso that it could respond to that evidence at a later stage.  The application was granted and the further evidence was served and filed on 7 April 2011.  The Opponent was allowed a one month period in which to respond to the evidence, but did not do so within the time allowed.

7. On 18 February 2011 the Applicant requested to be heard.  Somewhat later the Opponent also advised of its intention to attend a hearing, and the matter was set down to be heard in Canberra on 13 July 2011.

8. Late in the afternoon of 12 July 2011 the Opponent filed an application to serve further evidence for consideration in the matter.  The application being received so close to the hearing, there was no option but to leave discussion and consideration of it until the hearing itself. 

9. The parties appeared before me, as a delegate of the Registrar of Trade Marks, on the designated day.  Dr David Cox of Jackson McDonald Lawyers of Perth appeared on behalf of the Opponent.  Tom Cordiner of Counsel instructed by Victor Ng of Markwell IP Lawyers of Melbourne appeared for the Applicant.

10. In respect of the Opponent’s late filed further evidence, Mr Cordiner said that he did not object to it being allowed into proceedings, though he considered it not to be particularly relevant, and that he would make submissions about it where relevant during the hearing.

    Grounds of opposition and Onus

11. I proceed on the basis that the Opponent bears the onus of establishing one or more of the grounds of opposition pressed at the hearing on the balance of probabilities[1]. 

    [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 at [22] to [26]; Sports Warehouse Inc v Fry Consulting (2010) 87 IPR 300 at [36] to [39].

12. The Opponent pursued four grounds for opposition at the hearing, being those under the provisions of sections 58, 60, 62A and 42(b). For completeness, I find that the grounds which were nominated on the Notice but not pursued at the hearing, namely those under sections 41 and 43 of the Act, have not been established.

13. I note that if the Opponent establishes a single ground in respect of one of the trade marks then it is not necessary for me to consider the other grounds in respect of that trade mark. 

    Evidence and submissions

14. The evidence provided for this opposition consists of the following Statutory declarations:

    Evidence in support

    • Christopher Graham Richmond, marketing manager of Inspectorate Australia (Assay) Pty Ltd, made February 2010 with Exhibits A to C
    • Marjorie Frances Hodgson, solicitor of the Opponent’s legal representatives, made 24 February 2010 with Exhibit A
    • Julio Paro-Vidolin, general manager of the Shanghai office of Inspectorate Australia (Assay) Pty Ltd, made 5 March 2010

    Evidence in answer

    ·     Victor Wei-Cho Ng , solicitor of the Applicant’s legal representatives, made 18 June 2010 with Exhibits VN-1 to VN-3

    ·     John Anthony Wilson, Director of the Applicant, made 22 June 2010 with Exhibits JAW-1 to JAW-13 (‘Wilson 1’)

    Evidence in reply

    • Vlajko Vukosavlijevic, manager of the Australian operations of the Opponent,  made 8 December 2010 with Exhibits VV1 to VV8

    Further Evidence

    • Applicant:      *John Anthony Wilson made 30 March 2011 (‘Wilson 2’)

    *Wayne Wills, co-founder of Griffith (WA) Services Pty Ltd, made 4 April 2011 with Exhibit WW-1

    • Opponent:     *Jemma Elizabeth Holt, solicitor of Opponent’s legal

    representatives, made 12 July 2011 with Attachments JEH-1 to JEH-3

15. These opposition proceedings are in respect of the three separate trade mark applications which are shown at paragraph 1 of this decision.  Both parties have provided evidence which they maintain supports their respective cases in the matter of ownership and reputation in the trade marks.  However, what is significant in these proceedings is not the evidence the parties have provided, but the evidence they have not provided.  This will become clearer as I summarise the evidence and submissions.

16. The following is a summary of the development of the Opponent’s trade marks and business in Australia, based on the information it provided in the declarations submitted as evidence and from its submissions provided at the hearing. 

    ·In the 1850’s the Opponent was founded in the United Kingdom by Daniel C. Griffith and became one of the few independent gold assayers acceptable to the British Royal Mint.  In the 1850’s the Opponent was known as Daniel C. Griffith and Company Limited.  Until about the mid 1980s, the Opponent continued to be known as Daniel C Griffith and Company Limited.

    ·In or at some time prior to June 1970, the Opponent created and adopted the G Symbol for use in its business which at the time was expanding out of the United Kingdom.  The G Symbol incorporates the letters ‘D’, ‘C’ and ‘G’ being the initials of Daniel C Griffith and Company Limited.  The symbol was commonly represented in red or a red/orange colour.[2] 

    ·The Opponent held a registration for the device in the United Kingdom for a number of years - trade mark registration 1276902 was filed on 1 October 1986 and expired on 1 October 2007.   

    ·From at least June 1970, the Opponent has had operations in Australia.  The initial operations were in the form of a new joint venture company which purchased all of the shares of Minex Analytical Laboratories Pty Ltd.  Shortly after the purchase, the company’s name was changed to Griffith-INTECO (Australia) Pty Ltd and subsequently to Daniel C Griffith (Australia) Pty Ltd.

    ·From about 1977, the Opponent was operating in at least 3 sites in Australia namely in New South Wales; South Australia; and Western Australia, and was distributing a marketing brochure explaining the services offered by the Opponent to existing and potential customers in Australia and elsewhere in the world.

    ·In the mid 1980s, the Opponent started using the name Inspectorate Griffith in relation to its business (including business activities in Australia).  It commenced doing this following a merger with a Swiss competitor, Inspectorate.  It used the name Inspectorate Griffith Ltd up until 1998 when it was bought by BSI.  Early in 2002 the BSI group rebranded and the Opponent became known as BSI Inspectorate.  In late 2005 the Opponent adopted its current name, Inspectorate International Ltd.

    ·The Opponent generally did not have sufficient inspectors to undertake all of its work in Australia.  To meet the demand for its services in Australia, the Opponent has from time to time engaged the services of various sub-contractors[3] to perform inspection services on its behalf.  These sub-contractors were often small operations and have included Griffith Australia Services Pty Ltd,[4] Griffith (WA) Services Pty Ltd, ACIRL Pty Ltd, CR Cox & Associates and CR Cox & Associates (Australia) and the Applicant.

    ·During the time that the sub-contractors were providing services in Australia on behalf of the Opponent, the Opponent sought and received instructions directly from clients to perform inspections.  The Opponent would then engage the sub-contractor to perform the physical inspection and the sub-contractor would send the results to the Opponent.  A formal inspection certificate then would be submitted directly to the clients by the Opponent.

    ·The Opponent is the registered proprietor of Australian trade mark number 741741 registered from 18 August 1997 for services in classes 37, 39 and 42 which is for the following trade mark:

    [2] Exhibit VV1 to the Vukosavljevic declaration shows the G Symbol in use on a set of minutes from a board meeting of Daniel C Griffith & Co Limited dated 2 June 1970.

    [3] Richmond declaration, paragraph 12 states that the term sub-contractor indicates that the arrangements between the parties were generally informal, ad hoc and non-exclusive. 

    [4] Richmond declaration, paragraph 14 states that Griffith Australia Services Pty Ltd was an official agent of the Opponent. 

17. The Applicant has provided the history of its business and relationship with the Opponent in two separate places in the evidence.  The Hodgson declaration[5] exhibits “a bundle of correspondence” between the Applicant and the Opponent’s legal advisors which eventuated during a dispute between the parties.  Within this bundle is a letter, dated 13 October 2007, from Mr John Wilson, director of the Applicant.  This letter has as an attachment a document entitled ‘History of the business names of Griffith Australia Services, Griffith W.A. Services and Inspectorate Griffith International Australia’.  The second version of the history of the Applicant’s business is found in the text of Wilson 1.  A compilation of these histories is set out below:

    [5] Submitted as part of the Opponent’s evidence in support. 

    ·     1845 - Daniel C Griffith & Co (‘DCG UK’) established in the UK (Hodgson)

    ·     1971 - Daniel C Griffith (Australia) Pty Ltd (‘DCG’) established in Australia, operating out of Kensington, South Australia. (Wilson 1)

    ·     1974 - Main shareholder & managing director of DCG UK, Mr Alistair Griffith, established Griffith Australia Services Pty Ltd (‘GAS’) based in Newcastle and granted GAS the Australian franchise and license to use the Griffith name and trademark throughout Australia.[6] (Hodgson) 

    [6] Wilson 1 states that this incorporation occurred in 1973.  The Wills declaration in the Applicant’s further evidence refers to having seen Alistair Griffith’s name listed on GAS correspondence as a director of the company around 1974.

    ·     1975 - Main shareholder & managing director of DCG UK, Mr Alistair Griffith together with several Australian shareholders established Griffith WA Services Pty Ltd (‘GWAS) based in Fremantle, and together with GAS grants GWAS the Western Australia franchise and license to use the Griffith name and trademark throughout Western Australia.[7] (Hodgson)

    [7] Wilson 1 describes GWAS as “effectively a branch office of GAS in Western Australia”.

    ·     1979 – Mercantile Services 1979 Pty Ltd (formerly WA Mercantile Services Pty Ltd) (‘WAM’) incorporated.  Wilson is managing director and major shareholder from 1984. (Wilson 1)

    ·     1981 – DCG ceased trading and was de-registered. (Wilson 1) 

    ·     1984 - WAM acquires business, assets and goodwill of GWAS.  As part of the acquisition, the parties agree that WAM would trade in WA under name GWAS.  GWAS Pty Ltd would cease trading and de-register. (Wilson 1)

    ·     1985 - WAM purchases business, assets and Griffith franchise for Western Australia and license to use the Griffith trade mark from the shareholders of GWAS and GAS.  WAM registers the business name of Griffith W.A. Services. (Hodgson)

    ·     1992 - WAM purchases the business, assets and Griffith franchise for Western Australia and license to use the Griffith trade mark from the shareholders of GWAS and GAS. (Hodgson)

    ·     1993 - DCG UK purchased by Inspectorate, Switzerland and became Inspectorate Griffith Ltd (‘IG’) still based in UK. (Hodgson)

    ·     1994 - GWAS receives permission to use the Inspectorate trade mark from Inspectorate Switzerland.  IG requests WAM to use the IG name.  WAM registers business name Inspectorate Griffith International, but uses the Griffith trade mark instead of the Inspectorate trade mark. (Hodgson)

    ·     1999 - WAM acquires the business and Griffith franchise from GAS and opens branch offices in Townsville, Port Kembla, Melbourne, and Port Pirie all using the registered name of Inspectorate Griffith International (‘IGI’) with the Griffith trade mark. (Hodgson)  WAM acquires business and goodwill of GAS (excluding GAS’ Newcastle-based business).  GAS ceased trading and was eventually de-registered in 2008. (Wilson 1)

    ·     2003 - IG is purchased by British Standards and becomes BSI Inspectorate Ltd UK.  Inspectorate Griffith International Australia continues to act as a sub contractor for all of the BSI Inspectorate offices including those in the UK, Switzerland, Singapore, China and USA. (Hodgson)

    ·     2003 - Mercantile Marine Pty Ltd established with John Wilson as managing director and major shareholder. (Hodgson and Wilson 1)

    ·     2005 - BSI Inspectorate Ltd UK sold to new shareholders and becomes Inspectorate UK. (Hodgson)

    ·     2006 - Mercantile Marine Pty Ltd purchases the assets, business, Griffith franchise, Griffith trade mark and the business names of WAM, GWAS and IGI from WAM. (Hodgson) Sale includes goodwill. (Wilson 1)

    ·     2006 - Inspectorate UK purchases the Standard and Reference Laboratory in Malaga WA and registered Inspectorate Australia Inspection and Assay Pty Ltd (‘IA’). (Hodgson)  

    ·     2006 – 2007 - IGI continues to act as sub-contractor for the various overseas Inspectorate offices as well as for IA at various sites. (Hodgson) Applicant has conducted business in its own name and using the business names and trade marks GWAS and IGI. (Wilson 1)

    ·     In April 2007 a verbal agreement is reached between Mr Julio Paro-Vidolin, manager of IA confirming that IGI will continue to act as sub contractor for IA instead of Inspectorate UK especially at Bunbury and Geraldton but not at Townsville and Fremantle.  In return IGI would use IA as a subcontractor in Townsville, Fremantle and Kwinana.[8] (Hodgson)

    ·     April and May 2007 - IGI subcontracts for IA on two jobs in Geraldton. (Hodgson)

    ·     July 2007 IA performs a major sampling and Marine Surveying job in Geraldton resulting in queries from both client and the Geraldton Port Authority about reasons for it doing the job instead of IGI. (Hodgson)

    ·     August 2007 IGI continues to act as sub contractor for overseas Inspectorate offices in other Australian ports and appoints Inspectorate China to carry out a job in Xingang, China according to its previous practice. (Hodgson)  

    [8] This agreement is said to have been confirmed by the text of e-mail supplied by Mr Wilson.  However, while the text seems to suggest that Mr Paro-Vidolin was happy for the two companies to cooperate, it does not provide any information as to the specific agreements claimed. 

18. Throughout the history which Mr Wilson has provided is mention of ‘Griffith franchises’ and licenses from the Opponent’s predecessors in business to use the Griffith trade marks, which he states were transferred to the Applicant via its purchase of the various companies which he claims as its predecessors in business.  However, neither party has provided any evidence at all to support the existence of a licence to use the trade marks or any evidence of a franchise agreement of any kind.  No documents have been provided which would help shed light on the terms of sales of the companies which the Applicant purchased; whether the trade marks were involved in the sales and whether there was anything amounting to a franchise agreement which could be transferred at the time of the acquisition of the entities. 

19. Vlajko Vukosavljevic is manager of the Australian operations of the Opponent which is conducted through a subsidiary called Inspectorate Australia (Assay) Pty Ltd.  He states (at paragraph 22 of his declaration) that searches of the Opponent’s company records have not discovered any licenses or sublicenses between the Opponent and any third party in respect of use of what he describes as ‘the G symbol’,[9] ‘the Griffith name’ or ‘the Inspectorate name’.  He also states that

    Griffith Australia Services Pty Ltd (‘GAS’) was an official agent of the Opponent, and as such, while there may have been no formal licence, the opponent would have been comfortable allowing GAS to use the G symbol and Griffith name when acting as the Opponent’s agent.  The agency with GAS ceased many years ago.

    [9] This symbol is the same as the G Symbol subject of trade mark application 1289310.

20. He states that in 1999 the Opponent’s directory of worldwide services[10] listed John Wilson and GWAS as providing services on its behalf in Bunbury, Freemantle and Geraldton.  The primary contact with the Geraldton office was to be through Witham UK.  GAS and Tony Guinane are listed as providing services in Newcastle, New South Wales, again with a primary contact through Witham UK. 

    [10] Exhibit VV6

1. The directory for 2005[11] lists Inspectorate Griffith International (John Wilson) as providing metals and minerals services in Geraldton, with branches in Fremantle, Bunbury and Townsville.  The primary contact is now listed as Singapore.  Services other than the metals and minerals services are provided by ACIRL Pty Ltd/ACtest, CR Cox & Associates and C R Cox & Associates (Australia) in Sydney, Melbourne, Dampier and Bunbury.  All have a primary contact through Singapore. 

   [11] Exhibit VV7

2. Exhibit VV8 of the Vukosavljevic declaration is a copy of the Australian listing from the 2006 directory.  The primary contact for services to be provided in Australia is still through Singapore but there are no listings for any parties providing services in Australia on behalf of the Opponent.

3. The Applicant’s evidence provides information which both clarifies and confuses the issues.  Paragraphs 21 to 24 of Wilson 1 state the following:

   I refer to paragraph 4 of the Paro-Vidolin Declaration.  The Applicant has previously acted as a subcontractor and not as agent of the Opponent.

   I refer to paragraph 5 of the Paro-Vidolin Declaration.  Only inspections subcontracted by the Opponent to the Applicant (or its predecessors) were managed by the Opponent’s United Kingdom office.  While the Opponent had overall responsibility in respect of such subcontracted inspections, the Applicant largely operated autonomously in managing and performing the subcontract work.

   Since 1985, the amount of work subcontracted by the Opponent to the Applicant and its predecessors accounts for only a small proportion of the Applicant’s business (less than 10% of the Applicant’s turnover).  The substantial bulk of the Applicant’s business and turnover was derived from its own marketing and business activities.

   I refer to paragraph 6 of the Paro-Vidolin declaration.  I am not aware of the Opponent marketing the Applicant’s services especially given the small amount of work that was subcontracted by the Opponent to the Applicant and its predecessors.  The Applicant and its predecessors conducted their own marketing in Australia.[12]  

   [12] I note here that neither party has seen fit to provide examples of its claimed promotional activities.  It is also important to remember that the applicant is Mercantile Marine Pty Ltd.

4. Wilson 1 exhibits various pieces of correspondence between the Applicant and its clients.  Exhibit JAW-8 consists of a letter, dated 17 January 1997, under the letterhead of Griffith W.A. Services to Mr David Bale of Gwalia Consolidated Limited.  The letter is an estimate for ‘scope of works’ for a particular job.  The letterhead includes both the G Symbol and the following phrase:  ‘Part of the Inspectorate Griffith International Group of Companies’ (‘the phrase’).

5. Exhibit JAW-9 contains an invoice to the same company as that noted above, dated 4 April 1997, and on the same letterhead paper, with the same phrase and symbol.  A second document is a facsimile transmission sent to Kanowna Belle Gold mine, under the same letterhead, and with the phrase and the G Symbol.

6. Exhibit JAW 10 consists of an invoice issued to Aluminium Bahrain B.S.C. for certain services.  It is issued under the letterhead of Griffith W.A. Services, and includes both the G Symbol and the phrase.

7. Exhibit JAW-12 includes a Certificate of Analysis of iron ore fines dated 29 May 1991.  It was issued under the letterhead of Inspectorate Griffith International, and includes the phrase as well as the G Symbol.  The second document in the exhibit is a certificate of ‘Inspection and agreed pre-melt weights’ dated 4 March 1997 for goods described as ‘Kanowna Belle Gold Bullion’.  This certificate is issued under the Inspectorate Griffith International letterhead (which includes the G Symbol) but the phrase is not in evidence on the document.

8. Exhibit JAW-13 consists of an invoice to Sons of Gwalia dated 12 September 2006 and issued under the letterhead of Inspectorate Griffith International and the G Symbol.  There is no mention in this document of any connection between the issuer and Inspectorate Griffith International Group of Companies.

9. Both parties agree that the Applicant has provided services in the relevant fields as a subcontractor for the Opponent.  These services have been provided over a considerable period of time – at least 30 years.  There is no indication, however, of the volume of services requested by the Opponent during that period and then provided by the Applicant, except the mention by the Applicant that the volume forms only about 10 percent of its total turnover.[13]

   [13] Wilson 1, paragraph 23.

10. The Hodgson declaration exhibits the bundle of correspondence mentioned previously.  This correspondence is in relation to the dispute between the parties previously mentioned which resulted when the Opponent began to provide relevant services on its own behalf at the port of Geraldton in Western Australia.  From the letters exhibited it appears that the Applicant had advised representatives of the Opponent that it had a contract or agreement with the Opponent about exclusive rights to provide services on the Opponent’s behalf at Geraldton and threatened legal actions if the Opponent’s representatives did not cease provision of services at that port.  After this altercation, the Opponent formally requested, via a solicitors letter, copies of any legally binding agreements between the parties, or if the agreements were oral or partly written and oral, that the Applicant provide particulars of the terms, the dates the agreements were made, and the persons with whom the agreements were made.

11. Mr Wilson responded to the letter from the Opponent’s solicitors in some detail via his letter dated in October 2007.  He said that the Applicant had been associated with the International Inspectorate Group of Companies and their predecessors for the past thirty two years as their Australian minerals and metals representatives, and provided the history which I summarised earlier.  He said that Inspectorate Griffith International has been registered as a business name in Australia for the past 14 years and its proprietor is Mercantile Marine Pty Ltd, the Applicant.  He said that it was at the request of Inspectorate UK and Switzerland that he incorporated the name of Inspectorate into the business name which was previously Griffith W.A. Services.  

12. The final sentences of this letter read as follows:

    We also believe that the current management team at Inspectorate UK are unaware of the agreements, circumstance and tradition established over many years between Inspectorate Griffith International, Australia and the international Inspectorate group of companies. 

    As the Australian regulative company records will indicate, the business name of Inspectorate Griffith International was registered in Australia a long time before the establishment of Inspectorate Australia.

    In view of the above, Mercantile Marine Pty Ltd as the proprietor of the “Inspectorate Griffith International” business name, must protect their rights and remedies to this legal business name that has been in existence for many years with the full knowledge and acceptance of your clients predecessors.

13. It was after the parties failed to reach any agreement in the matter of this dispute that the Applicant filed its trade mark applications. 

    Discussion and Reasons.

14. It is clear from the evidence provided by both parties that the Opponent has been aware of the Applicant’s use of the word ‘Griffith’ in company names and business names over a long period of time.  Similarly the Opponent has been aware of the Applicant’s use of the G Symbol in letterheads and signature blocks on various pieces of correspondence over that period.  It appears that the Opponent elected to do nothing about these matters until shortly before the Applicant filed its trade mark applications.  It also appears that the Applicant has been, again until shortly before filing its applications, indicating the possibility of a connection with the Opponent via the phrase included in its letterheads or in the footers on correspondence.

15. What is not clear is just how much work the Opponent has subcontracted to the Applicant, let alone how much was subcontracted to the earlier created companies which the Applicant subsequently acquired.  Neither party has provided an indication of any advertising expenditure relevant to the trade marks nor have they made any indication of the revenues resulting from use of the trade marks which they claim to own. 

16. It is not clear how the Opponent usually subcontracted jobs to the Applicant – was it via cable, telex, phone call, letter, fax or e-mail – all of which would or could have been used in the lengthy time period during which these jobs seem to have been performed.  Exhibits A and B to the Richmond declaration provide copies of e-mail correspondence from 2003 which are relevant to this matter but just what arrangements were in place in earlier years is unclear. 

17. It is not clear whether any of these contacts have involved any kind of agreement between the parties as to any standards of work; use of the G Symbol or of any use of references to the Opponent’s name.  It is far from clear what the statuses of GAS and Griffith WA Services Pty Ltd were in relation to the Opponent.  On the whole, the evidence provided raises just as many questions as it manages to answer.

18. Nevertheless, on the basis of this far from satisfactory evidence, it is necessary for me to decide whether the Opponent has been able to establish at least one of the grounds of opposition in respect of each of the trade marks.  It must do this if it is to succeed in the opposition to the trade marks concerned.  I will now proceed to a consideration of the grounds which were pursued at the hearing.

    Section 58 – Applicant not owner of trade mark

19. Section 58 of the Act provides:

    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.

20. In order to establish a ground of opposition under the provisions of section 58 for any of the three trade marks under opposition in the context of this opposition the Opponent needs to establish that:

    ·   the respective trade marks of the Applicant and Opponent are either identical or substantially identical[14],

    ·   the respective services of both parties are the ‘same kind of thing’[15]

    ·   the Opponent has the earlier claim to ownership based on use prior to both the application to register and any pre-filing use of the trade mark by the Applicant[16].

    [14] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd 31 IPR 375 (1994) 120 ALR 495, though the courts have been prepared to heavily discount added matter in a trade mark which is purely descriptive. See PB Foods Limited v Malanda Dairyfoods Limited [1998] ATMO 66.

    [15] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75

    [16] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413

21. One thing which I can be certain of is that the parties are dealing in services which are ‘the same kind of thing’.  I am certain of this because the Opponent and Applicant agree that the Applicant acted as a subcontractor for services which the Opponent wished to provide in Australia but for which it neither had the personnel nor the infrastructure at various times. 

22. In respect of the trade marks, I will first deal with the G Symbol (subject of application 1289310) which both parties claim to own, to have a reputation in and to have the first use in Australia. 

23. It is clear from Exhibit VV1 to the Vukosavljevic declaration that Daniel C Griffith & Company Limited (DCG UK) used the G Symbol, at least in its in-house documents in the UK, as early as 2 June 1970.  Exhibit VV2 shows use of the G Symbol on an information brochure which is claimed to have been distributed within Australia during the 1980s.  Exhibit VV3 is a copy of a price list on which the G Symbol appears dating from 1983 and which is said to have been available in Australia. There is, however, some dispute from the Applicant about the extent, if any, of the distribution in Australia of both these documents.  Mr Wills, who was a foundation director of Griffith WA Services Pty Ltd, states in his declaration forming part of the Applicant’s further evidence that he recalled seeing a copy of the brochure in 1982 which was, however, after he had severed his connections with the company he had helped found.

24. Paragraph 13 of Wilson 1 states that between at least 1984 and 1991 WA Mercantile Services Pty Ltd (‘WAM’), trading as Griffith WA Services (‘GWAS’), a predecessor of the Applicant, used the G Symbol on inspection and valuation reports provided to its customers.  Examples of these reports are provided at Exhibit JAW-5 to the declaration.   

25. The evidence from both parties suggests that DCG UK established an agency in Australia in about 1974 – Griffith Australia Services Pty Ltd (GAS).  Mr Vukosavljevic states, as I noted previously at paragraph 19, that as this company was an official agent of DCG UK, its use of the G Symbol and ‘the Griffith name’ would not have caused DCG UK any concern.  I infer from the information provided that any use of the G Symbol in respect of relevant services at this time would have been in respect of services, whether provided by the agency or by a subcontractor, which had been ordered and organised for and on behalf of DCG UK.  In other words, without a request having been made by the Opponent’s predecessor in business, I infer that none of this work would have gone ahead in the way it subsequently did, and therefore none of the application of the G Symbol in relation to the particular job of work would likely have occurred.  I am satisfied that DCG UK, which is the direct predecessor of the Opponent according to the history provided by both parties, therefore has had the first use of the G Symbol in Australia for relevant services.

26. However, the Applicant claims that the Opponent had abandoned the G Symbol as a trade mark in Australia and therefore no longer has any right to benefit from any claim to first use.  While the Opponent’s evidence attesting to use of the trade mark is significantly lacking, in the matter of abandonment the words of McGarvie J in Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 at 421 are worth noting:

    In my opinion the proprietary title to a trade mark is lost at common law by intentional abandonment but not by mere non-use. 

27. The Applicant does not dispute that it has acted as a subcontractor for the Opponent over a considerable period of time and at least up until not long prior to filing the opposed trade mark applications.  Mr Wilson attests to his belief that the Applicant’s purchase of GAS and Griffith WA Services Pty Ltd involved purchase of a ‘Griffith franchise’ and ‘license to use the Griffith trade mark’.  I infer from those comments that the trade mark referred to is the G Symbol.  I also infer from those comments that the Applicant knew and accepted that its use of the G Symbol would be use on behalf of the Opponent, as is likely to be the case when a franchise is involved.  The fact that the Applicant used the phrase in its letter head and on footers for its official letters appears to me to support this inference.  Under these circumstances I do not consider that the Opponent had abandoned its use of the G Symbol in Australia as it knew and accepted, as it appears the Applicant also knew and accepted, that the Applicant used the trade mark on the Opponent’s behalf when undertaking jobs subcontracted by it.

28. At the hearing the Applicant’s legal representative, Mr Cordiner, submitted the following:

    To the extent Mr Wilson either stated or may be inferred to have meant that the Applicant or its predecessors in title were licenced by the Opponent to use the Opposed Marks or any part of them, such statements or inferences are factually and legally incorrect.  The Applicant’s position is that it did not have and did not need such licence.

29. Hindsight is a wonderful thing.  Mr Wilson had been prepared to inform the Opponent in response to its solicitor’s letter during their dispute in 2007 that he considered that he had purchased the right and licence to use “the Griffith trade mark” when he bought up Griffith Australia Services Pty Ltd and Griffith WA Services Pty Ltd.  He made these claims in the context of protecting his business names and the reputations he considered that the applicant had developed in them over a long period of use.  Now that that it has been established that there were apparently no written copies of official licences but that the arrangements between the parties were much less formal, Mr Cordiner wishes me to ignore Mr Wilson’s words.  I am not prepared to do so as the information put before me clearly paints a picture of the Applicant’s belief that it had a licence to use the trade mark, whether or not that belief was justified.

30. In any event, whether or not Mr Wilson believed he was licensed to use the Opponent’s trade mark in Australia, he used it in a manner which pointed to that use being done on the Opponent’s behalf. I am thus satisfied that it is more probable than not that the Opponent is the owner of the G Symbol and therefore of trade mark 1289310. The Opponent has therefore established the ground of opposition under the provisions of section 58 in respect of trade mark application 1289310.

31. In respect of application 1289309 the histories which the parties have provided refer to the existence of Griffith WA Services Pty Ltd as a company.  Mr Wilson states that Alistair Griffith, chief shareholder and managing director of DCG UK set the company up in 1975 with a number of Australian shareholders.  The Wills declaration says that Mr Wills founded that company in conjunction with Messrs Buchanan, Guinane and Ryan.  Mr Guinane and Mr Ryan were both directors and shareholders of GAS, a fact which is confirmed in an ASIC[17] company extract provided as Exhibit JAW-3 to Wilson 1.  Griffith WA Services Pty Ltd is described in paragraph 8(c) of Wilson 1 as a separate legal entity which effectively operated as a branch office of GAS in Western Australia. 

    [17] Australian Securities and Investments Commission

32. Exhibit JAW-4 to Wilson 1 also confirms that a predecessor in business to the Applicant registered ‘Griffith W.A. Services’ as a business name in Western Australia in September 1985. 

33. Exhibits JAW-8 and JAW-9 to Wilson 1 exhibit letters which include the following in the letterhead:

    Exhibit JAW-10 has virtually the same letterhead, except that the phrase appears at the bottom of the page rather than in the letterhead block.  These letters are dated before the filing date of the application.  They are all letters in respect of the services the applicant company was providing for various customers at the time and are dated for dates ranging from 1997 to 2006.

34. The third trade mark, 1289308, involves the words ‘Inspectorate Griffith International’ and the G Symbol.  It is shown in the letterhead of the document exhibited as JAW-12 as shown below:

    The footer on the bottom of the certificate is the phrase ‘A member of the Inspectorate Griffith International Group of Companies’.  The document is dated 29 May 1991.

35. Exhibit JAW-4 contains a business name extract from the Western Australian register of business names from which I note that one of the Applicant’s predecessors in business, Mercantile Services 1979 Pty Ltd, had registered the business name ‘Inspectorate Griffith International’ in 1991.

36. These matters confirm the Applicant’s claim that it has used the trade marks (subject of applications 1289308 and 1289309) in Australia in respect of relevant services from a period before it applied to register them.  However, during the dispute between the Applicant and the Opponent to which I referred previously, Mr Wilson’s letter informed the Opponent’s legal representatives that he and the Applicant “have been associated with the International Inspectorate Group of Companies and their predecessors:  BSI Inspectorate, Inspectorate Griffith and Daniel C Griffith & Co for the past thirty two years as their Australian Minerals and Metals representatives”.  This is, to my mind, a clear indication that, despite having registered ‘Griffith W.A. Services’ and ‘Inspectorate Griffith International” as business names, the Applicant considered that it was related in some way to the Opponent ( such as by working on its behalf) for at least a portion of the work it conducted at various Australian ports. 

1. Despite Mr Cordiner’s contention that Mr Wilson’s statements are factually and legally incorrect and should therefore be somewhat discounted, I am satisfied that, at least up until the dispute between the parties Mr Wilson believed that he was undertaking at least part of the work he did at Australian ports on behalf of the Opponent and thus he had a right to use its trade mark and its associated names.  In addition, it is to my mind clear that the customers with whom he dealt would have seen his use of the various trade marks as an indication of a connection with the Opponent. 

2. Under the circumstances detailed above, I am satisfied on the balance of probabilities that the Applicant’s use of the trade marks subject of applications 1283908 and 1283909 in Australia as demonstrated in the documents provided as evidence was, prior to the filing date of the trade mark applications, use for and on behalf of the Opponent. The Opponent has therefore succeeded in establishing the ground of opposition under the provisions of section 58 in respect of trade mark applications 12839018 and 1289309.

   Decision

3. The opponent has established a ground of opposition in respect of each of the trade marks under consideration.  It is not necessary therefore for me to discuss or consider the remaining grounds pursued at the hearing, though these and any others may be considered if the matter if appealed to the Federal Court.

4. I refuse to register trade mark applications 1289308, 1289309 and 1289310.

   Costs

5. Both parties requested their costs, which I award against the Applicant according to the official scale, with costs for the second and third of the three oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.

   Alison Windsor
   Hearing Officer
   Trade Marks Hearings
   30 August 2011