John Dimtsis and Aklis Konstantellos v the Agricultural Diary Industry Authority of Epirus, Dodoni S.A

[1991] ATMO 38

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by THE AGRICULTURAL DAIRY INDUSTRY AUTHORITY OF EPIRUS, DODONI S.A. to Application No 434469 in the Names of JOHN DIMTSIS and ALKIS KONSTANTELLOS

Trade mark application No 434469 was lodged on 10 October 1985 in the names of JOHN DIMTSIS and ALKIS KONSTANTELLOS of 384 Bridge Road, Richmond, Victoria ("the applicants").  It sought registration of the word DODONI in Part A of the Register in respect of "Dairy products and in particular cheeses", being goods in International Class 29.  The application was advertised accepted on 22 September 1988.
          On 6 December 1988 notice of opposition was lodged in the name of AGRICULTURAL DAIRY INDUSTRY AUTHORITY OF EPIRUS, DODONI S.A., ("the opponent"), this being an English translation of the Greek AGROTIKI VIOMICHANIA GALAKTOS IPIROU DODONI.  No further description of the opponent is given in the notice.  The grounds of opposition set out in the notice are as follows:

(a)That the Applicants' trade mark is not qualified for registration under the Trade Marks Act 1955-1956.

(b)That the Opponent is the proprietor of the trade mark and of the following trade mark application under the Trade Marks Act of the Commonwealth of Australia - 484062.

(c)That by reason of the Opponent's aforementioned trade mark application and their use of the mark in Australia the Applicants' trade mark is neither distinctive nor capable of becoming distinctive of the Applicant's goods.

(d)That the Applicants' trade mark application is in respect of a trade mark which is identical or substantially identical with or deceptively similar to the Opponent's aforestated trade mark application and is in respect of goods which are the same or the same description as those the subject of the aforestated trade mark application.

(e)That use by the Applicants of their trade mark for goods on which registration is sought would be likely to cause deception and/or confusion in the trade having regard to the Opponent's aforementioned trade mark application and use and the reputation of the Opponent's trade mark.

(f)That use by the Applicants of their trade mark for use on goods for which registration is sought would be likely to lead to passing off having regard to the Opponent's aforementioned trade mark application and use and the reputation of the Opponent's trade mark.

The opponent's evidence in support of its opposition, consisting of statutory declarations of ALEXANDROS RAGOS and EMMANUEL KOTIS together with exhibits EK1-EK8, was served on the applicants on 3 March 1989. 
          The applicants' evidence in answer was served on the opponent on 4 October 1989.  It comprised declarations by PAUL EGONIDIS, NICK KONSTANDELLOS, JOHN DIMTSIS, NICK VOSSOS, VICTOR SAPKIN and ALKIS KONSTANTELLOS.  The opponent completed service of its evidence in reply on 19 December 1990.  That evidence consisted of declarations of the following people:
               Rei Adameitz              Andrew Arvanitakis
               Jack Con                  Aristomenis Diamantopoulos
               Frank G. Di Virgilio Amileas Filokostas
               Theo Filokostas     Paul Gaganis
               Nick Kamdouropoulos       Anastasios Kardaras
               Fotis Kapotis             George Kardaras
               Michael Pantoleon         Evangelos Panayotakos
               James Phillips            George Vasili
               Emmanuel Kotis            Nicholas Zervoulias.
          The matter came on for hearing before me in Melbourne on 7 February 1991.  Mr Peter Nicholls of Callinan Lawrie, patent attorneys, appeared for the applicants.  The opponent was represented
by Ms Michelle Unsworth of Minter Ellison, barristers and solicitors.
          Mr Nicholls made a viva voce application for special leave to adduce further evidence in accordance with reg 47(1)(b) of the Trade Marks Regulations which was opposed by Ms Unsworth.  I allowed him one week to lodge the statutory declaration required by reg 47(3) setting out the grounds on which the application was made and the nature of the further evidence which it was desired to lodge.  On 14 February there was lodged at the Trade Marks Office a statutory declaration of the same date made by NIKOLAOS KONSTANTELLOS, who describes himself as a "mesne proprietor" of the mark referred to in a purported assignment of the mark dated 20 August 1988, and a director of the "assignee", DODONI DAIRY PRODUCTS PTY LTD, referred to in that document.  Leaving aside the question of the standing of Mr Konstantellos in these opposition proceedings the grounds of the application and the nature of the evidence is set out as follows:

1. Accordingly the grounds on which the application is made are:

(i)Despite continued efforts by me and Paul Egonidis we have still not been able to obtain from Dimtsis the material referred to in paragraph 6 of his declaration in answer;

(ii)We believe this has been due to Dimtsis having lost interest and motivation in the present case, and has further been due to his other commitments including long-standing presidency or vice-presidency of the Soccer Federation of Australia, and to a divorce or marriage separation inhibiting his access to records in premises occupied by (former) spouse;

(iii)The OUTLINE OF THE OPPONENTS SUBMISSIONS lodged at the hearing of 7th February, 1991 has raised serious questions concerning the Opponent's identity and ownership and its name and use of DODONI, including the characterization, connection and status they allege for that name;

(iv)One such matter is the statement in pages 5 and 6 that "the Opponent is the registered proprietor of the Trade Mark in the following countries:

Greece:No. 97977

16/11/87

(Stat Dec: Kotis 18/12/90 exhibit

3)

West Germany:   1153586

U.S.A.:721820"

(v)Enquiries indicate that Greek trade mark 97977 DODONI was not yet registered but was only a pending application at the date 18/12/90 of Kotis' declaration in reply.  Now produced and shown to me marked NI 1 is a copy of Callinan Lawrie's facsimile transmission of 8th February to the Law Offices of Thanos Masoulas, Athens, and of their response of 11th February, 1991;

(vi)Enquiries also indicate, contrary to the Opponent's statement, that they are not the registered proprietor of the trade mark in the United States of America.  Now produced and shown to me marked NK 2 is a copy of Callinan Lawrie's facsimile transmission of 8th February to Fleit Jacobson of Washington D.C. and of their response, indicating that 73/721820 is pending and suspended as of 21st September, 1990;

(vii)It occurs to me that such errors may be due to mistranslation, and I consider that at all events the matters need further investigation.  I understand that my Patent Attorney is similarly checking the status of the German trade mark;

(viii)Another such matter arises from item 2.1(b) of their Outline of Submissions.  I do not believe it is true to say that the Opponent is 60% government-owned, and I do not believe it was even an "Authority" in the usual sense of that word.  Exhibit EK 1 to Kotis' declaration in support indicates the relevant shareholder to be not the government but the Agricultural Bank of Greece which I verily believe to be only 40% government-owned; I do not believe there was ever any legal entity in Greece having the name Agricultural Dairy Industry Authority etc., and I note that references to "Authority" by which the Opponent was formerly described have been dropped;

(ix)I verily believe that when the Opponent ("ADIE" = Agricultural Dairy Industry of Epirus) was formed, its name did not include the word Dodoni, and that prompted by the present Applicants' interest in the mark the Opponents introduced the word subsequently.  In this regard I note "Amendments" in the English version of the certificate shown in Kotis' EK 1 in reply.  In regard to these matters I note from EK 6 (reply) that in 1982 the Opponent's name is simply AGRACULTURAL (sic) DAIRY INDUSTRY.

(x)Further to (ix) I believe that at no relevant time has Dodoni been the Opponent's domicile, but rather Eleousa.  Now produced and shown to me marked NK 3 is a "Catalogue of Greek Food and Beverage Export Companies" c.1987.  Page 49 shows the Opponents to be domiciled in Eleousa.  I again refer to EK 1 (reply).  I see in the certificate of incorporation, immediately under the date "28.12.67", certain Greek words which I understand to mean: "Address: Eleousa, Ioannina".  Thereunder are Greek words referring to the object of the business.  However reference to the address has been completely omitted from the English "translation".

(xi)The Opponent has queried the assignment from me and Egonidis to Dodoni Dairy Products Pty. Ltd. and correctly points out that the company was not incorporated until 1989.  In fact it was intended that the assignment should have been to the firm DODONIS DAIRY PRODUCTS which is the "DODONIS DAIRY PRODUCT" referred to in the first paragraph of John Dimtsis' declaration in answer.  Now produced and shown to me marked

NK 4 is a copy of the Certificate of Registration (8th October, 1985) of that business.  I have at all material times been proprietor of that business and duly authorized to make this declaration on its behalf and on behalf of the company Dodonis Dairy Products Pty. Ltd.

1. Accordingly, the nature of the further evidence which it is desired to adduce is as follows i.e. statutory declarations by:

(i)Me, of investigations relating to the status etc. of the Opponent and related matters arising from the Outline of the Opponents' Submissions;

(ii)John Dimtsis as to the matters adverted to in paragraph 6 of his declaration in answer;

and, related to the foregoing, by

(iii)John Archer, now or formerly of Petersville, relating to matters referred to in Dimtsis' paragraph 2;

(iv)The original applicant Alkis Konstantellos and shopkeepers whom he supplied with DODONI cheese in the period 1975-1977, and

(v)Persons concerned with the production of our DODONI packaging tins and labels.

The matters set out in sub-paras 5(iii)-(xi) are largely inrrelevant to these opposition proceedings and in any case were not "raised" in Ms Unsworth's submissions but in the opponent's evidence in support and in reply.  As to the declaration of John Dimtsis in answer this was as far as relevant as follows:

1. THAT during the period 8th October 1985 and the 19th August 1988, I was in partnership with one Alkis Konstantellos (also known as Alkiviadis Konstandellos) of 42 Arunta Crescent, Clayton in the said State, and operating under the business name of DODONIS DAIRY PRODUCT pursuant to certificate of registration of business number 659243 U of the Business Names Act 1962.

1. THAT the partnership during the above period entered into various agreements with cheese processing and manufacturing concerns, such as Petersville Australia Limited, Trafalgar Dairy Products, as well as purchasing vast quantities of milk from Rodney Polkinhorn and of Charlton Feed Lot Pty. Ltd. for the purposes of manufacturing Greek type Feta cheese and other associated dairy products.

1. THAT during the period of the partnership as abovementioned, Greek type Feta cheese and other related dairy products were manufactured on our behalf and was packaged by the partnership and sold under the name and style " 'DODONI' Australia's Favourite" and "DODONIS DAIRY PRODUCTS", to various wholesalers one of which was Atlas Olive Oil Company Pty. Ltd. of 443 St. Georges Road, Thornbury in the said State.

1. THAT the attached exhibits marked with the letters "JD1" and "JD2" are the label, style and trade mark with which our Feta cheese and dairy products were packaged under.

1. THAT on or about the 19th day of August 1988, I and Alkis Konstandellos entered into an agreement to sell the business name together with assigning of the trade mark of "DODONI" the subject of application A 434469 filed on the 10th day of October, 1985 for registration under the

   Trade Marks Act 1955 in respect of "Dairy product and in particular cheeses" in class 29, to Dodoni Dairy Products Pty. Ltd. of 374 Highett Road, Highett in the said State, and for this purpose the new proprietors have requested from me that I produce various evidentiary documents to support the application for registration of the Trade Mark bearing number 434469 "DODONI" and registered Trade Mark number 434561.

1. THAT since I have been requested by the aforementioned new proprietors to produce relevant evidence to support the application for registration, I have attempted to obtain various invoices relating to purchases of materials and invoices relating to the sale of our products, as well as bank statements evidencing the operation of various bank accounts during the term of the aforementioned partnership in the name of Dodonis Dairy Products, which said documents I was unable to obtain from various sources due to the limited time available at my disposal.

   The test in determining whether leave should be granted to allow the tender of further evidence involves consideration of essentially three desiderata:

(i)it must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage;

1. the evidence must be such that, if given, it would probably have an important influence  on the result of the case; and

1. it must be credible.

Ladd v Marshall [1954] 3 ALL ER 745.
          As I have said already the status of the opponent and the "related matters" will have little if any influence on the outcome of this opposition.
          As to the evidence of Dimtsis, Nikolaos Konstantellos in para 4 of his declaration refers to his  "expectation" that Dsimtsis is "at last" able to provide the material referred to in his (Dimtsis') declaration.  He then goes on to say that he has so far failed to obtain such material because Dimtsis has lost interest and is too busy.  There is nothing before me to show that such material will be any more obtainable now than before and, if so, what bearing it would have on the case.  Mr Dimtsis came on the scene in 1985, well after, as will appear later in these reasons, the relevant dates for the determination of these proceedings.  The nature of the evidence to be provided by the persons mentioned in sub-paras 6(iii)-(v) and what bearing it would have on the opposition is not specified.  In fact, the original applicant Alkis Konstantellos made a declaration in answer dated 8 September 1989 at which time any matters relevant to the opposition should have been raised.  This seems to be no more than an attempt to cure any deficiencies of evidence already lodged.  Indeed the applicants in this case appear to be seeking to prolong the proceedings in the hope, like Mr Micawber, that something will turn up.  In my view that is not the purpose of the provisions relating to the lodgment of further evidence.  In the absence of any clear demonstration that there exists evidence which was not obtainable with reasonable diligence earlier and which would have an important bearing on the determination of the opposition the application for special leave to adduce further evidence is refused.
          Ms Unsworth in her submissions raised three issues : the likelihood of deception and confusion (s.28); proprietorship of the mark (s.40); and the registrability of the mark (s.24(1)).  It will be convenient to deal with each of these in turn.
Section 28
          Section 28 provides as follows:

28.A mark -

(a)the use of which would be likely to deceive or cause confusion;

(b)the use of which would be contrary to law;

(c)which comprises or contains scandalous matter; or

(d)which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

Ms Unsworth submitted that the use of the mark in suit by the applicants or their assignees either at the date of lodgment of the application or at the present date would be contrary to s.28 because such use would have resulted in or would result in:

(a)a passing off action being brought against them by the Opponent;

(b)an action pursuant to Section 52 of the Trade Practices Act 1974 (Cth) being brought against them by the Opponent;

(c)an action pursuant to the various state fair trading provisions being brought against them by the Opponent; and

(d)confusion and deception as to the trade origin of goods bearing the Trade Mark.

Of these four claims the first three are relevant to s.28(b) but are not matters that are within my competence to decide and the fourth goes to s.28(a).
          The test to be applied under s.28 is the well established one of Evershed J in Smith Hayden & Co's Application (1945) 63 RPC in relation to s.11 of the UK Act.  Adapted to the case in suit that test may be stated thus:

"Having regard to the opponent's use of its mark DODONI is the tribunal satisfied that the mark applied for, DODONI, if used in a normal and fair manner in connection with any goods covered by the registration proposed will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?"

Furthermore, it is established that the rights of the parties are to be determined as at the date of the application : per Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595.
          The opponent's evidence of its use of and reputation in the mark is contained in the declarations of Alexandros Ragos, the vice-president of the opponent, of Emmanuel Kotis, sales director of ELCO FOOD CO PTY LTD, the opponent's Australian licensee, and of 16 persons engaged in the trade in dairy products, especially cheese.  Mr Ragos states that the opponent began to export cheese bearing the mark DODONI to Australia in 1978 and that since then "substantial" quantities of cheese have been sold throughout Australia.  Until 1983 the cheese was distributed by a company called Spartan Spices (Australia) Pty Ltd.  In 1983 Elco Food Company Pty Ltd became the Australian distributor.  Mr Kotis, sales director of the latter company, states that since 1983 Elco has effected sales of between three and four million dollars Australian per annum of cheese bearing the mark at a wholesale level and that in the same period that Company has expended approximately $30,000 per year on advertising and promotion of cheese bearing the trade mark.  Further, he says that from his knowledge and experience in the trade he is aware that members of the trade including other wholesalers do not use the word "Dodoni" except as identification of the goods of the opponent.  Mr Kotis made a further declaration in reply dated 18 December 1990 by which time he had become a director of Elco.  In this declaration Mr Kotis states that cheese bearing the DODONI trade mark has been sold throughout Australia since 1983 in a variety of types of outlets including all major retail outlets, for example: Coles New World supermarkets, Safeway supermarkets, Tuckerbag, Cut-Price Delis, Snow Delis, David Jones, Myer Stores, Rite-Way supermarkets, Foodtown supermarkets, SSW supermarkets and in smaller delicatessens, boutique food shops and markets.  Since 1983 he believes that 4,800 tonnes of cheese bearing the mark DODONI have been sold to wholesalers in Australia with a dollar value of $45,000,000.  Elco has spent in the vicinity of $210,000 in the seven years since 1983 advertising the goods.  Since 1986 DODONI cheese has been a major sponsor of the South Melbourne Hellas Soccer Club Ltd, giving the products a high public profile.  However, there is no evidence as to the extent of use of the mark as at the date of lodgment of the application, 10 October 1985.  The only indication of the use of the mark prior to that date is a number of copies of invoices in relation to the advertising of DODONI cheese on radio or television and in local Greek newspapers.

          The evidence in reply also includes 16 declarations from persons engaged in the retailing of foodstuffs and more particularly in retail delicatessens.  These persons have various degrees of experience in the trade ranging from three to 34 years.  Their length of knowledge of the mark DODONI also varies : seven mention no period, three claim knowledge of the mark since 1978 and two more since 1980, or the early 80's.  The other four specify three, six, eight and ten years.  All but one of the declarations were made in the course of 1990.  All 16 declarants associate the mark with cheese manufactured by the opponent while a further 14 recognise Elco as the importer and distributor.  None of the 16 declarants is aware of the use of the mark in relation to cheese by anyone else.
          On all the evidence I am prepared to find that use by the applicants of the mark DODONI in relation to cheese as at the relevant date, that is, 10 October 1985 would have been likely to lead to the deception or confusion of a substantial number of persons.
          However, this finding is not conclusive.  Section 28 has been the subject of recent decisions by the Courts and, in particular, by the High Court in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd 18 IPR 385 (the Moo case).  In that case the Court held, by a majority, that the operation of para 28(a) is limited by a requirement of blameworthy conduct on the part of the proprietor of the mark, that is, that the likelihood of deception and confusion has been brought about by the actions of the proprietor himself.  This is so whether as a result of reading para 28(a) conjunctively with para 28(d) or of construing 28(a) in the context of the Act as a whole together with general policy considerations.  The Federal Court had earlier reached the same conclusion in Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA, 12 IPR 321, also a majority decision.
          It is true that the cases mentioned above all relate to applications for the expungement of registered marks.  It is also true that of the judges of the High Court in the Moo case (supra) only Brennan J. expressly adverted to the question of applications for registration when he said, at 404:

"Paragraph (a) of s.28 prohibits the original registration of a mark the use of which would be likely to deceive or cause confusion (albeit the prohibition is qualified by the concurrent use provisions: s.34) but, after registration, para (a) operates in a different regime.  Upon registration, the proprietor acquires the statutory right to the exclusive use of the mark "subject to any conditions or limitations to which the registration is subject": s.58(2).  In that regime, to hold that a registered trade mark is "wrongly ... remaining in the Register" whenever the use of the mark becomes likely to deceive or to cause confusion would be to expose the registered proprietor's statutory right to destruction at the hands of any person who creates the likelihood of deception or confusion.  A premium would be placed on what Windeyer J. called "the assiduous efforts of an infringer": Re Bali Brassiere Co Inc's Registered Trade Mark and Berlei Ltd's Application (1968) 118 CLR 128 at 133. On the other hand, to hold that a trade mark, validly registered, can never be expunged if its use becomes likely to deceive or cause confusion by reason of circumstances occurring since registration would empower the registered proprietor himself to create that likelihood with impunity. Neither of these constructions accords with the objects of the Act which seeks both to give some protection to the public against the deceptive or confusing use of trade marks (Eno v Dunn (1890) 15 APP Cas 252 at 263-4; Radio Corp Pty Ltd v Disney (1937) 57 CLR 448 at 458-9) and to confer on a registered proprietor for the time being a species of property in a trade mark (see ss.57, 82) entitling him to the rights conferred by s.58 and allowing permitted users the derivative benefits to which s.77 refers.

In an application for original registration, there is only one object to which effect must be given but, in an application after registration, effect must be given to both objects.  The operation of s.28(a) therefore depends on whether it is applied to an application for original registration or to an application for expunction of an entry which is attacked in s.22 proceedings as wrongly remaining in the register."

How s.28(a) is to be applied differently before and after registration is not clear.  On the other hand Bowen C.J. in the Federal Court decision in the Riv-Oland case said, at 327:

"I am, I think, conscious of leaning against a construction of s.28 in regard to blameworthy conduct on the part of a proprietor which would lead to a situation described by Windeyer J. where the proprietor of a mark might be denied or lose registration by reason of 'the assiduous efforts of an infringer' ... or to adapt the words to cover the period before registration 'the assiduous efforts of a misappropriating user'."

The references to "might be denied ... registration" and "the period before registration" clearly imply that the interpretation of s.28 favoured by the Court applies just as much to applications for registration as to applications for expungement.
          In the same case, Lockhart J. said, at 350:

"If ... s.28(a) has an operation which is not restricted by reference to s.28(d), then a trader who uses the registered trade mark of another trader may exploit that infringing use of the mark in the market-place to the point where it can be said that the use of the registered mark by the proprietor of the mark would be likely to deceive or cause confusion. ... It would be an extraordinary result if this conduct, which constituted infringing conduct, could produce either the invalidity of the mark or its liability to expungement.  It is no answer to say that a court has a residual discretion to decline to order expungement even where a mark is shown to be invalid.  The fact that the infringing conduct of a rival trader, in the circumstances to which I have referred, could produce the consequence that a registered
mark becomes invalid is itself so extraordinary a result that its correctness could only be accepted as a last resort."

It would be equally extraordinary if the proprietor of the mark at law should be deprived of his rights and denied registration because use by him of his own mark would cause deception and confusion as a result of the "assiduous efforts of a misappropriating user".
          I turn therefore to the question of the proprietorship of the mark.
Proprietorship
          Section 40(1) of the Act provides as follows:

40.(1) A person who claims to be the proprietor of a trade mark may make application to the registrar for the registration of that trade mark in Part A or Part B of the Register.

The opponent alleges that the applicant was not the proprietor of the trade mark at the date of application, 7 March 1979, but that it itself was the proprietor of the mark at that date.  The concept of proprietorship of a trade mark was explained by McGarvie J. in Settef v Riv-Oland Marble 10 IPR 402 at 413:

"Acquiring proprietorship

At common law (which in the present context is treated as including the principles of equity), property in a trade mark could only be acquired by public use of the mark as a trade mark.  The right of the proprietor of a trade mark was to prevent its use as a trade mark by other persons.  The original remedy for the protection of this right was an injunction to restrain infringement.  Principles as to the way in which the discretion should be exercised to protect a trade mark by injunction were settled by the Court of Chancery.  The cases which settled these principles established the types of trade marks in which a person could be recognised as having a right of property which would be protected by injunction : G.E. Trade Mark [1973] RPC 297 at 324-7 per Lord Diplock.

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) 59 ALJR 77 at 83. A person who becomes proprietor of a trade mark in this way is entitled at common law to restrain a person who later commences to use the trade mark.

The proprietor is not entitled to restrain a later user who is an honest concurrent user of the trade mark.  For example, a person who innocently commences to use the trade mark, unaware that this infringes the proprietor's right is an honest concurrent user.  At common law neither the proprietor nor the honest concurrent user could restrict the other from using the trade mark, but each could restrain a usurper who used the mark: G.E. Trade Mark, supra, at 326.  The rights of concurrent users are discussed in more detail later.

In considering who, within s.40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 at 625 and 627. Settef claims to be the first person to have used the trade mark in Australia and therefore to have been proprietor at common law in Australia.

Use of the trade mark by Settef overseas gave it no right to proprietorship in Australia.  Any use at all in

Australia gave it that proprietorship: the Thunderbird case (1974) 131 CLR 592 at 600.

The fact that a manufacturer is proprietor of a trade mark overseas and has earlier used it overseas does give it a forensic advantage in a contest between it and an Australian distributor who claims proprietorship of the trade mark.  There is authority that a court will regard slight use in Australia by the overseas proprietor as sufficient to give it proprietorship of the trade mark in Australia: The Seven Up Co v O T Ltd (1947) 75 CLR 203 at 211; Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 400; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) 59 ALJR 77 at 83."

The right to claim proprietorship of a mark within the meaning of s.40(1) therefore depends on first use of the mark in Australia.  The meaning of the word "use" in the Act (and there is no relevant difference between the concept of use at common law and that used in the Act) is to be understood in the context of the definition of "trade mar" in s.6(1) of the Act: W D & H O Wills (Australia) Ltd v Rothmans Ltd (1956) CLR 182 at 191: Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254 at 271. That definition is as follows:
          "trade mark means -

(a)except in relation to Part XI, a mark used or proposed to be used in relation to goods or services for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods or services and a person who has the right, either a proprietor or as registered user, to use the mark, whether with or without an indication of the identity of that person; ..."

The word "use" itself is defined in s.6(2) as follows:

(2)In this Act -

(a)references to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark; and

(b)references to the use of a mark in relation to goods shall be construed as references to the use of the mark upon, or in physical or other relation to, goods.

It is essential therefore that the use relied on by a person claiming proprietorship of a mark be use for the purpose of indicating or so as to indicate a connection in the course of trade between the relevant goods and that person.  As to the use of the mark by an overseas manufacturer exporting goods to Australia Windeyer J. observed in the Estex case (supra) at 271:

When an overseas manufacturer projects into the course of trade in this country, by means of sales to Australian retail houses, goods bearing his mark and the goods, bearing his mark are displayed or offered for sale or sold in this country, the use of the mark is that of the manufacturer."

What constitutes a connection in the course of trade for establishing prior use of a mark in Australia was discussed by the High Court in Moorgate Tobacco v Philip Morris 3 IPR 545 at 557:

"To establish prior use of the mark in Australia, Moorgate relies upon evidence that, during or in connection with discussions between Loew's and Philip Morris about the introduction of the low tar and nicotine cigarette in Australia, packets of cigarettes and associated advertising material displaying the name "KENT GOLDEN LIGHTS" were handed personally, or in one instance sent by mail, to representatives of Philip Morris in Australia.  That evidence indicates that there were at least three occasions on which such cigarette packets and advertising material were so delivered.  At the times when those items were so delivered, there was no intention on the part of Loew's that it would itself trade in the goods in Australia.  Nor, for that matter, had it been decided that name would be used if Philip Morris were, under licence from Loew's, to commence to manufacture and market the goods in Australia at some indefinite future time.

The court was referred to a large number of cases and to some administrative decisions in which consideration has been given to what constitutes a use or user of a trade mark for the purposes of the statutory notion of proprietorship of the mark before registration.  The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark.  It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark (Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd, supra, at 204-5) or that the mark has been used in an advertisement of the goods in the course of trade (Shell Co of Australia v Esso Standard Oil (Australia) Ltd, supra, at 422).  In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark in trade.

In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade.  There was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used.  The cigarette packets and associated advertising were delivered to Philip Morris to demonstrate what Loew's was marketing in other countries and what Philip Morris might market, under licence from Loew's, if it decided to manufacture and trade in the goods in Australia and to use the mark locally at some future time.  There was no relevant trade in the goods in Australia and the delivery of the cigarette packets and associated material to Philip Morris did not, in the circumstances, constitute a relevant user or use in Australia of the mark "KENT GOLDEN LIGHTS" for the purpose of indicating or so as to indicate a connection in the course of trade between the new cigarettes and Loew's."

In order to establish use in the relevant sense then it must be possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade.  In the Moorgate case the Court found that there had been no actual trade or offer to trade in the goods bearing the mark or an existing inteniton to offer or supply goods bearing the mark in trade.  There was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used.  Likewise in W.D. & H.O. Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182 cigarettes under the relevant trade mark were available in America. An Australian company having some association with the American manufacturer transmitted orders from Americans living in Australia to the American company. The cigarettes were purchased and paid for in the United States - i.e. no money was sent from Australia. The Australian company took no part in the importation but received a commission. The cigarettes were labelled as having been made in the United States for the Australian Company. The High Court held that there was no use of the trade mark in Australia because all "trade" in the goods took place in the United States. Trading ended once goods were purchased or otherwise acquired for consumption. On the other hand in the Thunderbird case (1974) 131 CLR 592 the importation of one unit as a prototype for the purpose of building and selling the goods in Australia was held to be use in Australia by the exporter. The Australian manufacturer who received the unit was not entitled to register the trade mark. Also, in Blackadder v The Good Roads Machinery Co (1926) CLR 332 an Australian company imported machinery from the United States bearing the American exporter's trade mark. The Australian company removed the American exporter's trade mark and put its own trade mark on the goods before sale. Although purchasers never saw the exporter's trade mark, the exporter was held to have used it in Australia.
          In the absence of fraud it is not unlawful for a trader to become registered proprietor of a trade mark which has been used, however extensively, by another trader as a trade mark for similar goods in a foreign country, provided there has been no use of the foreign trade mark in Australia at the date of application for registration (Williams J. in The Seven Up case).
          Regardless of use, the right to register a foreign mark is restricted to those who cannot be said to owe any duty to the proprietor of the foreign trade mark.  Thus the trade mark of a foreign company may not properly be registered in Australia by its agent or by an Australian importer of its goods or by an employee of the importer.  Any such registration will be invalid even if the agent is honestly registering to protect the principal, or if the goods have never been sold in Australia bearing the trade mark (the "Certina" case (1970) 44 ALJR 191, also Blackadder v Good Roads (supra).
          In his declaration of 26 January 1988 Alexandros Ragos, vice president of the opponent, states that by 1978 the opponent's cheese was being exported to Australia bearing the "Dodoni" mark and that since then substantial quantities of cheese have been sold throughout Australia bearing the mark.  I am unable to infer from this statement without more that the opponent first used the mark in Australia in 1978.
          Alkis Konstantellos in his evidence in answer declares, as far as is relevant, as follows:

1. THAT I was one of the proprietors of the business name "Dodonis Dairy Products" carried on in partnership with John Dimtsis.  The said business carried on by the partnership involved the wholesale of various dairy products to distributors of such products during the period October 1985 to August of 1988.  Prior to me entering into partnership with Mr John Dimtsis in October 1985, I carried on the business of selling various cheese products, including Feta Cheese under the brand name of "Dodoni" and also "Dodoni, Australia's Favourite, A' Quality Feta".  My initial involvement with the name Dodoni and or Dodonis begin in early 1974, when I begun a continental delicatessen at Oakleigh Market, Atherton Road, Oakleigh under the name of Dodoni Delicatessen.  In the business which I was involved in I realized that there was an opportunity in selling Greek style Feta cheese, which could be manufactured locally.  Being myself from a region of Greece where Feta cheese and other dairy products were produced, I had a basic knowledge in the process and begun in early 1974, to experiment with locally produced milk of various types which products I later begun selling under the brand name of ("Dodoni" Australia's Favourite Feta).

1. On or about June/July of 1975, I became acquainted with one Vic Sapkin, the then manager of Petersville Milk Products (Trafalgar) who supplied me with various types of Tasty and vintage cheeses.  Mr Sapkin also produced a Greek type Feta cheese at that time, and from our discussions we were able to enter into mutually acceptable terms whereby his company could produce a variation of his Feta cheese, and supply me various quantities, prepacked in tin containers of 14.5 kilograms nett.  These products I begun selling to the public through my continental delicatessen at Oakleigh, and also to various small manufacturers of Greek type of cheese pies, under the brand name of "Dodoni" Australia's Favourite A' Quality Feta.  Subsequently I was able to negotiate an agreement to supply Atlas Olive Oil Company Pty Ltd with Feta cheese of the same brand name together with other dairy products, which the company distributed to delicatessen outlets throughout the state of Victoria and also interstate.

   The Vic Sapkin referred to in para 2 states in his declartion of 21 September 1989:

1. THAT from a period begginign (sic) the end of 1975 to early 1976 negotiations had been made with Mr Alkiviadis Konstantellos, for the production by Petersville Milk Products (Trafalgar), of Greek style Feta Cheese.  From early 1976, and onwards various quantities of Greek style Feta Cheese, including Vintage, Tasty and Parmesan Cheeses were manufactured and sold to Mr Alkiviadis Konstantellos who sold the said products, and in particular the Greek style Feta Cheese under the style of ("DODONI" Feta, A' Quality, Australia's Favourite.)  In particular the said Greek style feta sold under the aforementioned brand name were packed in Tin containers of 14.5 nett weight at our premises.

Once again, while I have no reason to doubt the veracity of Messrs Konstantellos and Sapkin, that the facts attested to in the above declarations constitute use of the mark DODONI in relation to cheese by the applicants or one of them in 1974, 1975 or 1976 is a conclusion of law which I am unable to draw on the basis of those statements alone.  There is thus no firm evidence on the basis of which I can conclude that the applicants used the mark before the date of lodgment of their application for registration, 10 October 1985.
          Ms Unsworth referred me to the declaration in reply of Evangelos Panayotakos dated 1 June 1990.  Mr Panayotakos states that in 1973 he wrote to the opponent in Greece to enquire about the possibility of importing its cheese into Australia.  Exhibited to the declaration is a copy of the reply from the opponent dated 24 June 1973 in which the export manager of the opponent states that the opponent would be interested in exporting to Australia and quoting prices and terms.  Mr Panayotakos later decided not to pursue the matter.
          Further, exhibited to the second declaration of Emmanuel Kotis dated 18 December 1990 is a copy, together with a translation, of a "guarantee" from a body called SYNERGAL EPE CO-OPERATIVE DAIRY FACTORIES which states that that company conducted market research surveys in Australia on behalf of the opponent in 1973 and 1974 for the purpose of assessing the possibility of exporting the opponent's cheese.
          Ms Unsworth submitted that the above activities constitute use of the mark in the course of trade.  I cannot agree.  In the first case the communications between the opponent and Mr Panayotakos were nothing more than the preliminary discussions or negotiations referred to in the Moorgate case (supra).  There was no actual trade or offer to trade in the goods and no existing intention to offer or supply such goods in trade.  In the second
case the research inquiries were merely acts preparatory to the commencement of the trade in the goods.
          Also exhibited to the second Kotis declaration, however, are a number of orders and invoices relating to the placement of radio, television or newspaper advertising.  Many of these contain no reference to the word DODONI and mention only the name of the distributor, Elco Food Company.  However, several do contain an express reference to DODONI CHEESE.  The earliest of these date from late 1983 and early 1984.  There is therefore firm evidence of the use of the mark by the opponent in relation to cheese before the date of the application whereas there is no such evidence on the part of the applicant.  The consequence is that the opponent is entitled to be considered the proprietor of the mark in Australia.
Registrability
          Ms Unsworth submitted that the word DODONI is not a registrable trade mark because its primary signification is as a geographical name, being the name of a village in Greece.  She argued therefore that the word was disqualified from registration by virtue of s.24(1)(d).
          There is a small town or village in the region of Epirus where the opponent resides which was in ancient times the site of a sanctuary and oracle of the god Zeus.  In ancient times as well as modern the name of that place ended in the Greek letter eta which indicated the feminine gender.  The Romans transliterated the letter eta by the Latin equivalent "a" so that to them the place was known as DODONA.  This is still the spelling of the name of the town found in, for example, Webster's New Geographical Dictionary and The Times Atlas of the World.  Some other publishers, however, adopt the convention of transliterating eta as "i" to reflect the fact that in modern Greek the letter is pronounced as the "ee" in the word "Greek" itself.  This is true, for example, of Chambers World Gazeteer.  In this case, however, the Greek letter delta is transliterated as "dh" to reflect the fact also that that letter is pronounced in modern Greek as the "th" in "this" and "that".  The name of the village would thus be rendered as DHODHONI.  In these circumstances it may be doubted that the word DODONI is a geographical name at all.  It did not appear as such in any of the references consulted by the examiner, and it was for this reason that the objection, which had been raised in the first report, was withdrawn.  The attorney for the applicants had submitted that even if the word were the name of a place that place was only of historical or archaeological interest and was not a geographical name for trade mark purposes.  With this submission I, like the examiner, agree.
          In the declaration of Paul Egonidis for the applicants it is stated that many cheese manufacturing and processing plants are located at or near the small village of Dodoni.  He further states that it is "well known" that there are many Greek producers and manufacturers of cheese from the region of Epirus who also include the word "Dodoni" as part of their descriptive marks for feta cheese.  As evidence of this he refers to an annexure marked PN1.  This appears to be a photocopy of a photocopy of a photograph of a tin or some other container bearing the words FETA CHEESE IOANNINA GREECE in English together with a device which is indistinguishable.  A second bears an inscription in Greek letters together with the same device.  A third, in German, bears the words SCHAFSKAESE "FETA" IOANNINI GRIECHENLAND with, again, the same device.  A fourth container carries the words FÄROST "FETA" and below these, in smaller lettering, three words the first and last of which are illegible.  The first letters of the middle word appear to be DODON, the two or more remaining letters being illegible.  It is impossible to assess the significance of this evidence and there is nothing more before me to show that there are other producers of cheese who would require the use of the word DODONI to indicate the geographical origin of their goods.  In light of this and of the doubts already expressed as to whether DODONI is in fact the name of the place in question I must decline to find that the mark is not a registrable mark because it is a geographical name.
Conclusion
          In the result, then, I have found that the mark in suit is a registrable mark of which the opponent is entitled to be considered the proprietor.  Use of the mark by the applicants or their assignees would lead to the deception or confusion of the public and the mark thus offends against the provisions of s.28.  The opposition is allowed.
          The opponent having been successful is entitled to its costs to be taxed against the official scale and I so award them.

(M.A. HOMANN)
Hearing Officer
7 June 1991