Jaden Marketing Pty Ltd v Frederick Briggs and Ronald John Madsen

[1994] ATMO 82

TRADE MARKS ACT 1955

Decision of a Delegate of the Registrar of Trade Marks

Opposition by FREDERICK BRIGGS and RONALD JOHN MADSEN to an application under section 23 in the name of JADEN MARKETING PTY. LTD. for the removal from the Register of trade mark registration number A453291 in the name of SIX WHEELER CONVERSIONS PTY. LIMITED

Background

Trade mark registration number 453291 was registered in the name of RIGA'L UNIVERSAL LOADERS PTY. LTD., ("Riga'l"), of 11 Pinter Drive, Southport, Queensland, in respect of "earthmoving machines, including front-end loaders and bulldozers, parts and accessories therefor included in class 7; and all other goods included in class 7" and the trade mark DINGO, with an effective date of registration of 7 October 1986.  On 9 June 1992 JADEN MARKETING PTY. LTD., of 43 Alex Fisher Drive, Burleigh Gardens Industrial Park, Gold Coast, Queensland, ("the applicant"), filed an application under section 23 of the Act for the removal of the trade mark from the Register in respect of all or any of the goods for which it is registered.  The grounds for the application were that, up to one month before the date of the application, a continuous period of not less than three years had elapsed during which the trade mark was a registered trade mark and during which there was no use in good faith of the trade mark in relation to those goods by the registered proprietor or a registered user of the trade mark for the time being.  The relevant three year period for the purpose of the application is from 9 May 1989 to 5 May 1992.

On 30 October 1992 Gary Frederick Briggs and Ronald John Madsen, of 30 Owen Street, Dalby, Queensland, ("the opponents"), lodged notice of opposition to the application.

On 15 June 1993 the assignment of the trade mark from Riga'l to SIX WHEELER CONVERSIONS PTY. LIMITED ("Six Wheeler"), of 30 Owen Street, Dalby, Queensland, was recorded in the trade marks Register.

Evidence

The applicant's evidence in support of the application consists of a statutory declaration by Douglas William McIlwraith, Director of Jaden Marketing Pty. Ltd., together with Annexures A-G.

The opponents' evidence in answer to this material consists of statutory declarations by Messrs Briggs and Madsen together with exhibits GFB-1 to GFB-10 and RJM-1 to RJM-12 respectively; a statutory declaration by John Kenneth Jackson, of 20 Victoria East, Lidcombe, New South Wales, together with Annexure A; and a statutory declaration by Kate Johnston, of Spruson & Ferguson, patent attorneys of Sydney, together with Annexures (a) and (b).

Hearing

The applicant was represented by Mr Claude Anese of Cullen & Co., patent attorneys of Brisbane.  The opponents were represented by Ms Kate Johnston of Spruson & Ferguson.

There was no dispute between the parties that the applicant is a person aggrieved as required under the terms of section 23, on the basis that it is the applicant for registration of the trade mark DINGO in class 7 in application number 579859.  The progress of this application to registration is prevented by the presence of the subject registration.

It was conceded by Ms Johnston at the outset of her submissions on behalf of the opponents that there was no use of the trade mark in respect of any of the registered goods within the relevant period by the then registered proprietor Riga'l.  Rather the opponents rely on the discretion available to the Registrar under section 23 to consider all the circumstances surrounding the use of the trade mark and to decide that despite the grounds for removal being made out the application for removal should be dismissed and the registration should remain: Carl Zeiss Pty Ltd's Appn (1969) 122 CLR 1. An essential part of the circumstances relied on by the opponents in this regard is a somewhat complex series of transactions involving the trade mark. I set these out below as simply as possible, and in accordance with what I understand the parties to these proceedings to be agreed on.

In the latter half of 1988 Riga'l sold the trade mark to Clafton Pty. Limited which in 1989 changed its name to Deveson Jahn (Sales) Pty Limited ("Deveson Jahn").

In approximately the middle of 1991 Deveson Jahn went into liquidation.

In March 1993 the trade mark was assigned by the beneficial owner to Six Wheeler, which assignment was recorded, as I have indicated above, in June 1993.

In addition to these transactions, in November 1991 the opponents purchased certain assets of the business of Deveson Jahn.  Mr Briggs states in his declaration that he and Mr Madsen thought these assets included the trade mark.  This, as the subsequent assignment between the beneficial owner of the mark and Six Wheeler demonstrates, was clearly not the case.

Ms Johnston referred to Exhibits RJM-4 to RJM-8 to the Madsen declaration as evidence of use by Deveson Jahn of the trade mark on goods covered by the registration during the relevant period.  (At this point I note that the goods of interest to these proceedings are what are referred to in the Briggs declaration as "a four wheel drive hydraulic powered mini loader or digger".)  These exhibits consist of copies of invoices issued by either Deveson Jahn to Mr Madsen's business, Dial A Dingo, or from that business to its customers.  A typical example is RJM-4, dated 29.11.89, from Deveson Jahn to "R. Madsen, Dial A Dingo", and specifying "1 only Dingo 500 petrol C/W small size bucket, serial no. 154".  The invoices cover the period 29.11.89 to 31.01.91.  Mr Madsen states that Dial A Dingo was the Riga'l agent for DINGO loaders from January 1985 until Riga'l's business was sold to Deveson Jahn at the end of 1988.  Dial A Dingo was the agent for Deveson Jahn for the sale of goods sold with reference to the trade mark DINGO from the end of 1988 until Deveson Jahn went out of business.  In that period, Dial A Dingo sold approximately seven new loaders on behalf of Deveson Jahn.  At the same time, Dial A Dingo hired out DINGO loaders on average three times a day every working day.

I am prepared to accept that these invoices constitute use by Deveson Jahn of the trade mark on goods included in the specification for the subject registration.  The use is also clearly within the relevant period. 

This material does not represent the whole picture of use of the trade mark, however.  In his declaration, dated 1 February 1993, Mr Briggs states that "Since December 1991, by arrangement with Mr Madsen, my Company [Six Wheeler] has used the trade mark DINGO in connection with the manufacture, sale and hire of a hydraulic powered mini loader and has carried on business under the business names DINGO MACHINERY SUPPLIES and DINGO MINI DIGGERS.  On 24 December 1991 the business name Dingo Machinery Supplies was registered in Queensland in the name of my Company.  On 14 January 1992 the business name Dingo Mini Diggers was registered in the joint names of Mr Madsen and myself.  ...My Company commenced production of the Dingo Loader in 1992 and a total of 29 Dingo Loaders were manufactured and sold in 1992."  Mr Briggs goes on to detail further activities in various parts of Australia in respect of the sale of loaders and accessories and parts therefor under the auspices of his company, and apparently under the trade mark DINGO.

Although Mr Briggs refers to his company using the trade mark, since December 1991, "by arrangement with Mr Madsen", it is not at all clear what that arrangement was.  It could not have been in any sense a transfer of title to the trade mark, since Mr Madsen did not at that time or at any subsequent time, have such title.  He merely acted as an agent, first for Riga'l and then for Deveson Jahn, in using the mark.  Mr Briggs indeed notes in his declaration that " I am acquainted with Ronald John Madsen who was a distributor in Mckay of the Dingo Loader manufactured by or on behalf of both Riga'l and Deveson Jahn."  The assignment whereby Six Wheeler became entitled to be entered in the Register as the proprietor of registration A453291 did not take place until March 1993.  Any use of the subject mark by Six Wheeler prior to that time was not, therefore, on the basis of the material before me in these proceedings, under the authority of its owner, whether registered or not.

Ms Johnston argued strongly that the circumstances of use of the trade mark provide sufficient grounds for the exercise of the Registrar's discretion in favour of dismissing the application for removal.  In this argument she relied on the findings of the courts in the cases concerning "Hermes" Trade Mark (1982) RPC 425 and Paragon Shoes Pty Ltd v Paragini Distributors(N.S.W.) Pty Ltd (1988) 13 IPR 323. In the former case, although there had been no use of the trade mark in the relevant period, the court found that its discretion could have been applied against the removal because the registered proprietor had not abandoned the mark, there was a degree of residual reputation, and steps taken during the relevant period to revive the mark resulted in sales, albeit outside the period. In the latter case, the court found that the "technical defect" of failing to record assignment of a trade mark could be overlooked if at all relevant times the use of the mark had been by or under the authority of the person entitled to exercise that authority, and the public interest had not been adversely affected.

Mr Anese, on the applicant's behalf, stated that the Registrar's discretion to dismiss a section 23 application despite the making out of a case for removal can only be exercised where there are compelling reasons to do so.  He argued that the Registrar has a public duty to ensure that entries in the Register are not misleading and that the terms of section 20 of the Act make it clear that there is a substantial responsibility on assignees to trade marks to apply for the recording of that assignment.  In his submission, the use of the subject mark became misleading once Riga'l, the registered proprietor for the time being, ceased using it in 1988, and others, such as Deveson Jahn and Messrs Briggs and Madsen became involved in its use. 

Discussion

I must certainly agree that there must be clear and compelling reasons why, where a case for removal under section 23 has been made out, a trade mark should nevertheless be allowed to remain registered.  The underlying policy of these provisions to allow for the removal of unused marks and thus preserve the integrity of the Register and the rights of other traders should not be lightly put aside.  The sorts of circumstances described in the Hermes and Paragon cases cited above, and in others such as Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417, provide appropriate indication of what may justify such an exercise of the Registrar's discretion. I am not satisfied that comparable circumstances have been shown to exist in the present proceedings.

I cannot agree that the advertising and promotion undertaken by Six Wheeler in the early part of 1991 is equivalent to the situation referred to in Hermes as contributing to the preservation and revival of the trade mark, given that it was done by a party with no connection with or authority from either the registered or beneficial owner of the mark.  Similarly, I do not agree that the material before me shows that at all relevant times the mark has been used by or under the authority of the person entitled to do so.  I have noted that apart from the limited use demonstrated by Mr Madsen on behalf of Deveson Jahn, which could fall into this category, there has been unauthorised use by Six Wheeler.  There is also a suggestion in the Briggs and Madsen declarations that there may have been some use of the mark by those two individuals, trading as Dingo Mini Diggers.  Be that as it may, the picture that emerges from this material is one where the trade mark appears to have been used with little discrimination as to its proprietorship, and even less care as to whether or not the appropriate statutory responsibilities of its owners or users were being met.  In these circumstances it is impossible for me to find that there is a public interest in the preservation of the established registration, nor that there is an unimpeached title to the mark whose use in good faith by the person entitled to it has been continuous, as was the case in Paragon, above.

Decision

It is uncontested that the registered proprietor for the time being, Riga'l, did not use the subject trade mark at any time during the relevant period from 9 May 1989 to 9 May 1992.  I have found that the circumstances in which the mark was used during that period do not justify the exercise of the discretion available to me under section 23 in favour of dismissing the removal application.  That application therefore succeeds and I direct that registration number 453291 be removed from the Register in respect of all the goods in respect of which it is registered.  Having been successful, the applicant is entitled to its costs and I so award them.

Susan Farquhar
Deputy Registrar

3 November 1994