Jason Singh v Tim Watson & Tim Wild
[2024] ATMO 33
•22 February 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Jason Singh to registration of trade mark application number 2221201 (classes 9, 25 & 41) - Taxiride - in the name of Tim Watson and Tim Wild
Delegate:
Tracey Berger
Representation:
Opponent: Wayne Covell, Worthy of the Name Pty Ltd
Applicants: Andrew Watt, Ravens Nest Consulting Pty Ltd
Decision:
2024 ATMO 33
Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 43, 58, 50, 62(b) and 62A pursued – s 58 ground established – trade mark application refused
Background
1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Jason Singh (‘Opponent’) to registration of the following trade mark filed in the names of Tim Watson and Tim Wild (‘Applicants’):
Number: 2221201 (‘Application’)
Trade Mark: Taxiride (‘Trade Mark’)
Filing Date: 20 October 2021
Specification: Class 9: Records bearing entertainment material; Digital music (downloadable) from the Internet; Digital music (downloadable) provided from MP3 web sites on the internet; Downloadable music files; Electronic sheet music, downloadable; Music recordings; Musical cassettes; Music tapes; Musical recordings in the form of discs; Pre-recorded music videos; Acoustic records
Class 25: Apparel (clothing, footwear, headgear)
Class 41: Entertainer services; Entertainment; Live entertainment; Musical entertainment services; Organisation and conducting of dance, music and other entertainment festivals; Provision of live entertainment; Provision of entertainment services via an online forum; Provision of club entertainment services; Radio entertainment; Production of live entertainment; Production of audio entertainment; Organising of entertainment and social events (entertainment, sporting and cultural services); Organisation of entertainment events.
[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
2. The Trade Mark was examined and advertised as accepted for possible registration on 21 March 2022. On 23 March 2022, the Opponent filed a Notice of Intention to Oppose followed on 20 April 2022 by a Statement of Grounds and Particulars (‘SGP’). On 4 July 2022, the Applicants filed a Notice of Intention to Defend.
3. The parties proceeded to file their evidence in accordance with the Regulations. The Opponent’s Evidence in Support of the opposition was filed on 30 September 2022 (‘EIS’), followed by the Applicant’s Evidence in Answer on 4 January 2023 (‘EIA’) and concluding with the Opponent’s Evidence in Reply on 1 March 2023 (‘EIR’).
4. After the evidence stage, the parties were able to request a hearing and both parties asked for an oral hearing. The Opponent filed a written summary of its submissions on 18 January 2024 and the Applicant filed its written submissions on 25 January 2024. I heard this matter as a delegate of the Registrar of Trade Marks on 1 February 2024. At the hearing, Wayne Covell from Worthy of the Name Pty Ltd (assisted by Robin Covell from Worthy of the Name Pty Ltd and observed by the Opponent and his manager Claire Reynolds) made oral submissions on behalf of the Opponent. Mr Andrew Watt of Ravens Nest Consulting Pty Ltd (observed by the Applicants) made oral submissions on behalf of the Applicants.
5. I have decided the opposition as required by s 55 and in doing so I have taken into account the materials filed during the proceedings and the parties’ written and oral submissions.
Grounds of opposition, onus and standard of proof
6. In its SGP, the Opponent nominated grounds of opposition under ss 42(b), 43, 58, 60, 62A and 62(b).
7. The Opponent bears the burden of establishing at least one of the grounds of opposition[2] on the ordinary civil standard of the balance of probabilities.[3] The date at which the rights of the parties are assessed is 20 October 2021 (‘Relevant Date’), being both the priority date and the filing date of the Trade Mark.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3]Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
EIS
8. The Opponent’s evidence in support, which is summarised below, consists of:
· Declaration of Jason Mahendra Singh, the Opponent, made on 30 September 2022 with Annexures JS-1 to JS-35 (‘Singh 1’);
· Declaration of Daniel James Hall, musician, made on 30 September 2022 with Annexure DH-1 (‘Hall Declaration’); and
· Declaration of Claire Reynolds, owner of Bannon Reynolds Solutions (an artist management and development business) made on 30 September 2022 (‘Reynolds Declaration’).
9. The Opponent declares that in 1999 the band Taxiride (‘Band’) was formed consisting of the Applicants, the Opponent and Dan Hall (‘Original Band Members’). Singh 1 outlines the history and success of the Band. In summary, the Band’s first album reached number 1 on the ARIA Albums Chart in 1999 and was certified double platinum in sales; its debut single ‘Get Set’ won the 1999 ARIA Award for Breakthrough Artist - Single and was nominated for Best Pop Release; the Band’s second album was also certified platinum; they had 9 Top 40 singles and their song ‘Creepin’ Up Slowly’ was certified platinum in 2002. The Band toured internationally and supported Tina Turner across Europe including two sold out shows in July 2000 at Wembley Stadium.
10. In 1999, the Original Band Members registered Mandarin Music Pty Limited which company owned Australian registration 792527 for the Trade Mark in classes 9, 25 and 41 from April 1999 (‘Initial TM Registration’). This registration was not renewed in 2019 and was subsequently cancelled.
11. Over time, the composition of the Band underwent a number of changes but Mr Singh claims he was a leading vocalist of the Band and a main frontman of the Band for media and promotional activities. Singh 1 includes the following summary from Wikipedia of the participation of the various band members:
12. In 2005, after Dan Hall and Tim Watson had left the Band, the Opponent and Tim Wild registered the company Blue Tiger Music Pty Ltd which the Opponent claims remained active until 2015. According to the Opponent there was a written partnership agreement in place at this time but a copy of that agreement is not provided. The Opponent and Mr Watson performed together under the Trade Mark from 2005 and with other band members, released two further Taxiride albums; Axiomatic in 2005 and Electrophobia in 2006 which album also included Mr Hall. From 2006, the Opponent pursued a solo career but he and Mr Wild also continued to perform live as Taxiride until 2008. Thereafter Mr Wild and the Opponent went their separate ways only occasionally performing together as Taxiride.
13. In 2015, the Band reformed with the Original Band Members. On 17 September 2015, the Original Band Members registered a partnership for the operation of the Band under ABN 50 822 637 664 (‘First Registered Partnership’).
14. In 2017, Dan Hall left the Band again and the First Registered Partnership was cancelled. The Opponent and the Applicants registered a new business partnership under ABN 93 257 822 460 (‘Second Registered Partnership’) and entered into a partnership agreement (‘2017 Agreement’). The Opponent and Applicants performed from 2017 by reference to the Trade Mark. Singh 1 annexes a copy of the 2017 Agreement, an article about the Band from 19 May 2016 and a list of the Band’s performances from 2015-2019.
15. The Second Registered Partnership registered the Trade Mark as a business name in August 2019 and filed tax returns until at least 2021. A copy of the 2021 Income Tax Return for this partnership is annexed to the Singh Declaration. Further in 2021, the Second Partnership agreed to use of the synchronisation of the Taxiride song ‘Get Set’ by Visit Victoria which was used in 2021 and 2022 in Australia and New Zealand. Payments for use of this synchronisation were made into the business account of the Second Registered Partnership with the most recent payment (at the time of the Singh Declaration) being made on 13 September 2022. The Opponent attests that at all times, the Band operated as a partnership regardless of whether or not there was a written partnership agreement in place at the time.
16. In July 2020, the Opponent contacted the Applicants by email to advise that post-pandemic he proposed to start playing again including the Band’s songs but would do so in accordance with their past partnership terms.
17. On 22 April 2021, the Opponent made enquiries with My Legal Group about re-registering the Trade Mark in the name of the Opponent and the Applicants. The Opponent claims he engaged in various emails and telephone discussions with the Applicants and on 6 October 2021, the Opponent wrote to the Applicants recommending that they re-register the Trade Mark. Mr Watson responded the next day confirming that it was a good idea and “we should do it through the biz account”.
18. On 7 October 2021, Mr Watson asked the Opponent about his availability to perform a Taxiride show with the Applicants but the Opponent advised he was unavailable. The Opponent understands that the Applicants proceeded to perform that show without him as well as subsequent shows in 2022. The Opponent claims that the shows performed by the Applicants in November and December 2022 were promoted using the Opponent’s image without his permission.
19. The Hall Declaration confirms Mr Hall’s involvement as an Original Band Member and attesting that the Band took a break in 2009 for about 6 years before reforming in 2015 with the Original Band Members then taking a break again in mid-2017. Mr Hall attests to the Opponent’s involvement and important role in the Band.
20. Ms Reynolds declares that she was the Opponent’s personal manager for seven years from April 2015 and also worked as a consultant to the Band at times during 2016, 2017 and 2019. Ms Reynolds declares that by late 2019, the Band became dormant. The Reynolds Declaration states that on the Opponent’s behalf she was involved in an online audit of Taxiride images in about 2015 whereby she contacted the originator of any Taxiride images with a request to update the images as per the partnership agreement. Ms Reynolds also claims that when the Opponent and Mr Watson performed together from 2018-2020, they were not exclusively billed as Taxiride but referred to as, for example, ‘Tim Watson from Taxiride’ or ‘Taxiride’s Tim Watson’, a practice that the Applicants also followed until early 2021.
EIA
21. The Applicants filed the following evidence:
· Declaration of Timothy Harcourt Watson made on 3 January 2023 (‘Watson Declaration’);
· Declaration of Timonthy Andrew Wild made on 3 January 2023 with Annexure TAW-01 (‘Wild Declaration’);
· Declaration of Sean McLeod made on 2 January 2023;
· Declaration of Andrew McIvor made on 3 January 2023; and
· Declaration of Frank Stivala, Director, shareholder and CEO of Premier Artists Pty Ltd, made on 3 January 2023.
22. Mr Watson declares that he founded the Band with Tim Wild in November 1995 at a meeting with Mr Peter Dacy, the Band’s early mentor and co-producer of the Band’s first two albums. The Applicants started writing songs and a few weeks later a third member, Jimi Christo, joined them. Several months later the Opponent auditioned to join the band. Mr Hall then auditioned for the Band in December 1997.
23. Mr Watson declares that Sean McLeod and Andrew McIvor were also involved in the early demonstration recordings of the Band at around the time the Opponent became involved. Mr McLeod and Mr McIvor were respectively a bass player and a drummer so they were not considered members of the Band as this would be inconsistent with the proposed perception of the Band as comprising ‘four equally relevant harmony vocalists’. Nevertheless, both were listed as band members on the second and third albums and Mr McLeod is listed as a band member on the fourth album. According to Mr Watson, both Mr McLeod and Mr McIvor have played in all live performances of the Band since its inception.
24. Mr Watson confirms that the 2017 Agreement was signed on 4 October 2017 but expired on 31 December 2017 and provided for the Applicants and Opponent to enter into a new agreement in January 2018 unless the partnership was terminated by majority vote. According to the Watson Declaration, the term of the 2017 Agreement was short because the Opponent would not agree to a non-compete clause as he was developing a solo venture named ‘Jason Singh Plays Taxiride’. Mr Watson attests that the Applicants decided not to enter into a new agreement.
25. The Band performed 3 shows in 2018 and 2019 with the Opponent participating in two of the three shows and the third show being performed by the Applicants.
26. Mr Watson attests that the reason the Second Registered Partnership was receiving income and filing tax returns was because Warner Music Australia (‘Warner’) owns copyright in the first two albums and was paying royalties to the Original Band Members for revenue generated from those recordings.
27. In relation to the Initial TM Registration, Mr Watson declares that Mandarin Music Pty Ltd was deregistered on 6 June 2010 and no action was taken to assign or transfer the rights in the Trade Mark prior to deregistration of that company.
28. Mr Watson states that on 14 October 2021, in anticipation of live music events restarting as Covid-19 restrictions lifted, he had a telephone conversation with the Opponent to ascertain the Opponent’s plans because the Band would not be able to accept bookings if the Opponent was not regularly available for performances. As a result of that conversation, Mr Watson concluded that the Opponent had no ongoing interest in being involved in the Band and therefore, Mr Watson intended that the Band would thereafter consist of the Applicants, Mr McLeod and Mr McIvor. After consulting Mr Wild, Mr Watson sought legal advice and was advised to file the Application.
29. In the Wild Declaration, Mr Wild declares that the song GET SET was written and composed solely by him and that he owns copyright in the musical composition. Warner owns copyright in the sound recording and the Original Band Members receive a share of revenue generated by use of the sound recording of GET SET. Mr Wild attests that his lawyer negotiated use of the musical composition in the Visit Victoria campaign and advised Visit Victoria to negotiate use of the sound recording with Warner. Mr Wild received 100% of the fee for use of the GET SET musical composition and Warner received 100% of the fee for use of the sound recording from which it paid the Original Band Members. Mr Wild concurs with Mr Watson that this payment is not evidence that a partnership between the Applicants and Opponent still existed and notes that Mr Hall received payment even though he was not a party to the Second Registered Partnership.
30. The McLeod and McIvor Declarations are substantially identical. Both Mr McLeod and Mr McIvor attest that they have been part of the Band since before the release of the first album. Both offer their opinions that the Opponent is no longer interested in performing in the Band and that in 2021 (presumably at the Relevant Date), audiences and fans understand the Band to consist of the Applicants, Mr McIvor and Mr McLeod.
31. Mr Stivala attests to his experience in the Australian music industry and hence his familiarity with the Band including having booked the Band for numerous shows over the years. Mr Stivala declares that the Band is of a type where fans do not have an affiliation with its members but rather with the Band’s music and that he considers the Applicants, Mr McIvor and Mr McLeod to be an acceptable configuration of the Band to audiences.
EIR
32. As evidence in reply, the Opponent filed the following evidence:
· Declaration of Jason Mahendra Singh made on 1 March 2023 with Annexures JS-36 to JS-41 (‘Singh 2’);
· Declaration of Neala Johnson, journalist and content writer, made on 28 February 2023 with Annexure NJ-1;
· Declaration of Toni Tenaglia, radio announcer, made on 27 February 2023 with Annexure TT-1; and
· Declaration of Danny Keenan, former Editor of The Music Network and former National Australian Artists Promotions Manager of Warner Music Australia, made on 28 February 2023 with Annexure DK-1.
33. In Singh 2, the Opponent disputes much of Mr Watson’s evidence on the basis that Mr Watson was not part of the Band from 2003-2015. Whilst the Opponent does not dispute that the Applicants met with Mr Dacy in November 1995 to discuss the concept of a new band, he disagrees that the Band was founded at that time. Mr Singh attests that Mr Dacy conceived the idea of the Band but the Band did not adopt the Trade Mark until 1999 shortly before the release of the first album. Until that time, the Band had several names including JOON and TAXI but changed its name to Taxiride because of other bands named TAXI.
34. The Opponent explains that he did not accept the non-compete clause in the Second Partnership Agreement because of concerns that it would prevent him from pursuing his solo career and other ventures including The Voices Supergroup, a group of lead singers coming together to perform their hits which Mr Watson also performed in on multiple occasions.
35. Mr Singh declares that the reason the Applicants and Opponent have not performed as the Band since 2019 was because of the pandemic and that in October 2022, despite the current dispute, the three of them agreed to and released a previously unrelated song NEVERMIND on digital platforms as part of the 20th Anniversary of the second album.
36. Ms Johnston, Ms Tenaglia and Mr Keenan all attest to the prominence of the Opponent in the marketing of the Band.
Discussion
Section 58
37. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
38. In order to establish a ground of opposition under section 58, an opponent must establish that:
i.the respective trade marks of the applicant and opponent are identical or substantially identical;[4]
ii.the respective goods and services on which the trade marks have been or are to be used are the ‘same kind of thing’;[5] and
iii.the opponent (or another party) has the earlier claim to ownership based on authorship and use of its trade mark prior to both the filing of the application and any actual use of the opposed trade mark by the applicant.[6]
[4] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936 (Gummow J).
[5] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636 (Holroyd J).
[6] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J) (‘Settef’).
39. Authorship refers to an applicant’s adoption of a trade mark with the intention of using it in Australia.[7] The use must be ‘public use in Australia of the mark as a trade mark’.[8]
[7] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [48] (Nicholas, Yates and Beach JJ).
[8] Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73, [21] (Deane J).
40. The parties are not in dispute about the first two requirements outlined at [42].
41. As noted in John Favaro John Housden v Michael Spiby,[9] a decision heavily relied on by the Opponent in its submissions, ‘the function of the Registrar is not to determine the current ownership of the Trade Mark but to assess whether, at the relevant date, the Applicant was the owner of the Trade Mark’.
[9] [2016] ATMO 122, [42] (Hearing Officer I. Thompson).
42. On my assessment of the evidence, the Applicants are not the owners of the Trade Mark. I consider that the Trade Mark was first used in 1999 by the the Original Band Members as demonstrated by documentary evidence including the Initial TM Registration, Wikipedia extracts,[10] statement of Mr Dacy,[11] YouTube extract from the 1999 ARIA Awards ceremony,[12] and four album covers.[13] Although Mr Watson claims that the Band was founded in November 1995, there is no documentary evidence that the Trade Mark was used by the Applicants or any other person before 1999. The Original Band Members were the owners of the Trade Mark in 1999 until 2010 when the registered owner of the Initial TM Registration was deregistered.
[10] Singh 1, Annexures JS-1 and JS-4.
[11] Ibid Annexure JS-2.
[12] Ibid Annexure JS-3
[13] Ibid Annexure JS-5.
43. After predominantly taking a break from around the mid-2000s, the Original Band Members re-formed the Band in 2015, established the First Registered Partnership, registered the Trade Mark as a business name and performed together under the Trade Mark. In my view, the Original Band Members owned the Trade Mark in 2015.
44. After, Mr Hall left the Band in 2017, the Second Registered Partnership formed comprising the Opponent and Applicants. It is apparent that at that time, the Opponent and Applicants were in agreement that the Trade Mark was jointly owned by the three of them as a partnership. Around this time, the parties entered into the 2017 Agreement which provided that no partner could use the Trade Mark if performing outside the partnership but could use descriptions such as ‘Partner name from Taxiride’ or ‘Taxiride’s Partner name’. Although the term of the 2017 Agreement ended in December 2017, this does not mean that the Trade Mark was no longer jointly owned by the Opponent and Applicants. In particular, the non-compete clause continued to have effect after December 2017 as the purpose of such a clause is to protect the Intellectual Property (and other assets) of the business or partnership once the contractual obligations are no longer applicable. Moreover, even after the 2017 Agreement had expired, the Applicants and Opponent continued to perform as the Band and in August 2019, the Second Registered Partnership registered the Trade Mark as a business name. The Applicants and Opponent operated as a partnership and continued to perform under the Trade Mark from 2017 to 2019.
45. Based on the evidence, it appears that the Band was on a break during most of 2019 and 2020 due at least in part to the Covid-19 pandemic. In mid-2020, the Opponent was still expressing his willingness to perform with the Band although he advised that he would be pursuing his solo career in accordance with the previous partnership terms (presumably those of the 2017 Agreement and in particular the non-compete clause). The Opponent and the Applicants appeared to still be in agreement that they jointly owned the Trade Mark, exchanging emails until 7 October 2021 about re-registering the Trade Mark in their joint names. It is not until the alleged telephone conversation of 14 October 2021, when the Opponent indicated that he was not interested in performing as the Band that any question as to the ownership of the Trade Mark arose.
46. The Applicants argue that the Opponent’s decision not to continue performing as the Band amounts to abandonment of the Trade Mark whereas the Opponent contends that the Opponent simply had no interest in being a session musician in the Band as compared to being a partner or otherwise involved in decisions and the direction of the Band.
47. In Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA,[14] the Full Federal Court affirmed McGarvie J’s finding at first instance[15] that once ownership of a trade mark is established it may be lost by intentional abandonment, estoppel or acquiescence. Abandonment cannot be inferred simply from disuse of a trade mark, there must be ‘some evidence indicating an intention to abandon the trade mark to result in the right to proprietorship being lost…’. [16]
[14] [1988] FCA 553, [8] (Bowen CJ, Northrop and Lockhart JJ) (‘Riv-Oland’).
[15] Settef (n 6) 420.
[16] Riv-Oland (n 15) [9].
48. The Applicants note that ‘abandonment is a question of fact; and, inferences as to fact (concerning an intention to abandon) might be capable of being drawn from primary facts.’[17] However, I do not believe that the facts of this case fall in the Applicants’ favour. There is clear evidence that the Opponent and the Applicants jointly owned and used the Trade Mark for many years, and I do not consider that the 2 hour phone conversation between the Opponent and Mr Watson erases that long history. In my opinion, the Opponent’s lack of interest in performing with the Applicants does not amount to an abandonment of the Trade Mark, a mark which he jointly owned with others for many years, nor does it amount to consent to the Applicants performing under the Trade Mark. Whether or not a partnership between the Applicants and Opponent still existed at the Relevant Date, the Trade Mark and any other assets of the partnership are still jointly held by the individuals and cannot simply be seized by the Applicants.
[17] Settef (n 6) 421.
49. I find that the Applicants are not the owners of the Trade Mark.
Decision
50. The Opponent has established a ground of opposition under s 58. The evidence of both parties with respect to the class 25 goods is sparse. However, in circumstances where an opposition has been established in respect of some, but not all of the goods and services claimed, the Registrar may proceed to reject the application in its entirety.[18] I consider this to be a case where it is appropriate to reject the Application in its entirety. Accordingly, I refuse to register the Trade Mark.
[18] Apple Inc v Registrar of Trade Marks [2014] FCA 1304, [232] (Yates J).
51. Both parties requested their costs and therefore, I award costs against the Applicants under s 221 in line with the amounts specified in Schedule 8 of the Regulations.
Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
22 February 2024
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