John Favaro John Housden v Michael Spiby - [2016] ATMO 122

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by John Favaro & John Housden to registration of trade mark application 1659034(41) - BADLOVES - filed in the name of Michael Spiby.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Bird & Bird – written submissions by Edward Muston, SC. Applicant: Self represented – written submissions
Decision:	2016 ATMO 122 *Trade Marks Act 1995* s52 opposition to registration - s58 contention that Applicant is not owner of the Trade Mark - evidence establishes that the Trade Mark is owned by the individuals or partnership that constituted the Group. Opposition to registration established.

Background

In these proceedings under the Trade Marks Act 1995 (‘the Act’) Michael Spiby (‘the Applicant’) has applied to register the trade mark which appears below:

Application No:         1659034
Priority Date:             19 November 2014
Services:  Class 41: Live band performances
Trade Mark:               BADLOVES

(‘the Trade Mark’)

The Trade Mark was examined as mandated by section 31 of the Act and subsequently advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 16 April 2015.
On 15 May 2015, John Favaro & John Housden (‘the Opponents’) filed Notice of Intention to Oppose the registration of the Trade Mark, followed, on 12 June 2015, by a Statement of Grounds and Particulars (‘the SGP’). The SGP details grounds under sections 58, 60 and 42 of the Act.
On 5 August 2015, the Applicant filed a Notice of Intention to Defend.
Since then, the parties have filed Evidence in Support, Evidence in Answer, and Evidence in Reply as is further discussed below.
On 3 August 2016, the Applicant filed additional information which he wishes the Registrar to consider under the provisions of regulation 21.19 of the Trade Mark Regulations 1995 (‘the Regulations’). I do not consider that it is appropriate that the Registrar consider this information for the reasons discussed under the heading Information, below.
Both the Applicant and the Opponents have been advised of their right to be heard or to make written submissions. Neither party has requested to be heard; both parties have filed written submissions.
In order that the Registrar may discharge her obligation under section 55 of the Act to decide this matter, it has been allocated to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned within paragraphs [1] to [7], above.

Onus

The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].
The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application[2].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

Evidence

The evidence establishes that the Applicant and the Opponents were members of an Australian musical group (‘the Group’) called ‘The Badloves’ who enjoyed a measure of success in the 1990s. This dispute is whether the Applicant owns the Trade Mark or if the Trade Mark is jointly owned with others, in particular jointly by the Applicant and Opponents either as individuals or as a partnership.
For the sake of clarity and brevity, I observe that the musical undertakings (and personal or professional situations) of the parties after the priority date of the Trade Mark are not relevant to my decision which is one under section 58 of the Act. Section 58 is focused on the authorship and use of the Trade Mark before the filing date of the application; thus the parties’ recounts of their current personal situations and musical undertakings (or assertions about the other party’s current personal situations and musical undertakings) do not bear on the issue. Although events after the relevant date may shine a light on the situation at the relevant date, in my view of the evidence those activities referred to therein do not. Accordingly, although these activities are extensively referred to in the evidence, I will not discuss them.
The Evidence in Support of this matter is a declaration by John Paul Housden, musician, made on 18 November 2015 with exhibits JPH-1 to JPH-9 (‘the first Housden declaration’).
The first Housden declaration establishes:
1.   The Badloves was a blues and soul-based rock band formed in Melbourne in or about 1990[3] by Michael Spiby, John Spiby, Christopher Tabone, Stephen O’Prey and John Housden.
[3] While the Applicant disputes this date as the genesis of the Group, it is corroborated by his manager, Ms Catherine Hutchinson, in her letter to the trade mark examiner dated 10 March 2015 which formed the basis of the acceptance of the Trade Mark for registration.
2.   The Group’s debut album, released in 1993, reached number 5 in the Australian Record Industry Association charts.
3.   Two legal entities were incorporated for the Group’s business:
3.1The Badloves Pty Ltd ACN 066 600 815 which was registered on 16 November 1994;[4]
[4] Anthony Michael Featherstone, John Paul Housden, John Favaro, Christopher Paul Tabone, and Michael John Spiby (the then members of the Group) each held one share of the five shares in this entity.
3.2The Badloves Touring Company Pty Ltd ACN 066 600 860 which was registered on 27 September 1994.[5]
[5] Anthony Michael Featherstone, John Paul Housden, John Favaro, Christopher Paul Tabone, and Michael John Spiby (the then members of the Group) each held one share of the five shares in this entity.
4.   Various personnel have either joined or left the Group since its inception – notably: On 1 April 1994, bass player Stephen O’Prey was replaced by John Favaro. A copy of a Deed of Termination and Release[6] dated 1 November 1994 relating to Mr O’Prey is exhibited to the first Housden declaration.
5.   The Group ceased performing for the first time on or about 26 January 1997. Mr Housden states that the Applicant “informed me and the other members of the band that he intended to pursue a “solo career” and that the band would be “put on hold”.
6.   In or about 1998, The Badloves performed a one-off gig at the Melbourne Cricket Ground for Mushroom Records’ 25th Anniversary.
7.   The legal entities Badloves Pty Ltd and The Badloves Touring Company Pty Ltd (referred to at 14.3.1 and 14.3.2, above) were deregistered on or about 10 May 2000 and 10 July 1999 respectively.
8.   In or about mid-2000, The Badloves reformed to perform at the Queenscliff Music Festival;
9.   Consequent upon this, the business name ‘The Badloves’[7] (B1558898W)[8] was registered on 13 February 2001; and, an ABN[9] (no. 31 697 216 029)[10] was registered on or about 14 September 2001.
10. A Memorandum of Understanding[11] on the winding up of the Group was prepared in September 2003 for Michael Spiby, John Favaro, Chris Tabone, John Housden, and Tony Featherstone, but never executed.
11. A further ABN[12] (no. 86 568 087113)[13] was registered on 15 July 2010. I note that this ABN has the status ‘Cancelled from 03 Feb 2015’ (ie after the priority date of the Trade Mark). It is my understanding that it was the Applicant who cancelled this ABN.
12. A partnership tax return for JP Favaro & JP Housden & MJ Spiby, referring to ABN no. 86 568 087113, for the year 2010 constitutes exhibit JPH-7.
13. The Opponents allege that a reason that they have not performed recently with the Group is that their role they are offered is effectively as session musicians.
[6] Exhibit JPH-2
[7] Held by John Paul Housden, Michael John Spiby, and John Favaro (Partners) with former partners Anthony Michael Featherstone and Christopher Paul Tabone.
[8] JPH-3.
[9] With an entity name, ‘JP Favaro & JP Housden & MJ Spiby & CP Tabone’ and entity type ‘Other partnership’.
[10] JPH-4.
[11] JPH-5.
[12] JPH-6.
[13] With the entity name ‘JP Favaro & JP Housden & MJ Spiby’.
The Evidence in Answer is a declaration by the Applicant, made on 26 February 2016, with exhibits MS-1 to MS-4.
Mr Spiby’s declaration makes many assertions but these either lack corroboration or do not go to the nub of the issue which is the ownership of the Trade Mark. Relevantly:
1.   Mr Spiby states he was the ‘leading’ light or ‘front man’ of the Group and that he coined the Trade Mark.
2.   Mr Spiby claims to be the one member of the Group who has always performed in its various iterations.
3.   Mr Spiby was responsible for the composition of most of the Group’s music although other members of the Group are also credited as composers of some of the music.
4.   Mr Spiby still performs under the name of the Group albeit, in my understanding, with other musicians who are effectively session musicians. An alternative viewpoint of this situation is that Mr Spiby now functions as the lead performer in his own tribute group.
Otherwise, Mr Spiby’s declaration does not directly address the Opponents’ concerns or the thrust of their evidence. Specifically this evidence includes:
Exhibit MS-1 is an email exchange between Catherine Hatchison and John Housden dated 3 August 2010 concerning the split of funds from a bank account. While Mr Spiby presents this as evidence of Mr Housden’s termination with the Group, and loss of ownership of the Trade Mark, it is not obvious why this should be so. I also note that the partnership inferred by JPH-6 existed until after the priority date.
Exhibit MS-2 is an email dated 23 July 2010 from Mr Favaro to both Mr Housden and the Applicant in which he discusses the demise of the Group. Significantly, Mr Favaro does not address the issue of assets such as the Trade Mark.
Exhibit MS-3 is mis-identified as MS-4 and is the letter sent to the examiner referred to in footnote 3 of this decision.
Exhibit MS-4 is a bunch of material which refers to the Group and their performances. In my view of the evidence, this material does not shine any light on the question of the ownership of the Trade Mark at the filing date of the application.
The Evidence in Reply is a further declaration by Mr Housden, made on 2 May 2016 with exhibits JPH-11 to JPH-16. While much of this declaration challenges Mr Spiby’s assertions made in his declaration, many of these issues are peripheral to the central question of the ownership of the Trade Mark.

Information

As mentioned above, Mr Spiby filed a declaration on 3 August 2016 which he wishes the Registrar to consider as relevant information in terms of regulation 21.19 of the Regulations.
Regulation 21.19 of the Regulations provides:

21.19Registrar may use information available
(1)If:
(a)information that is available to the Registrar is relevant to proceedings before the Registrar; and
(b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and
(c)the Registrar proposes to take the information into account in making a decision in the proceedings;

before making the decision the Registrar must:
(d)provide the information to the party; and
(e)give the party a reasonable opportunity to make representations about the information.

(2)For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

The key requirement within regulation 21.19 is that the information is relevant to the proceedings before the Registrar.
In my consideration, the information does not address the main ground of opposition under section 58 as it does not bear on the ownership of the Trade Mark.
The information comprises:
·    a number of statements by individuals associated with the Applicant/Group concerning their understanding of the Applicant’s role in both the Group and its genesis;
·    materials which establish the Applicant’s history prior to the formation of the Group;
·    a time line of the various iterations of the Group; and,
·    emails between the parties to this dispute which are capable of various interpretations.
However I do not consider, in my view of the evidence already under consideration, that the information alters the outcome of these proceedings.
The information is therefore not relevant to these proceedings and it is not appropriate that the Registrar consider them.

Considerations

The Opponents’ grounds under sections 60 and 42, as outlined in the Statement of Grounds and Particulars, stand or fall on the question of the ownership of the Trade Mark which is to be determined in terms of the ground under section 58 of the Act. If the Applicant is the owner of the Trade Mark, the use of it by him is neither deceptive or confusing in terms of section 60 of the Act nor deceptive or misleading in terms of section 18 and the parts of section 29 of schedule 2 to the Competition and Consumer Act 2010 on which the ground under section 42 is based. The situation may, of course, be otherwise if the Applicant is not the owner of the Trade Mark.
It is therefore necessary only to determine the matter under section 58 of the Act and, indeed, only one ground need be founded by an opponent for an opposition to registration to be established.

Section 58

The Opponents’ contention in the Statement of Grounds and Particulars is that:
The Application was filed on 19 November 2014.
The opponent, John Housden, collectively with others, including the Applicant, first used the trade mark “THE BADLOVES” in relation to live band performances in Australia in 1990, which is prior to the Filing Date.
In or around 1994, the opponent, John Favaro, joined “THE BADLOVES”.
The Trade Mark is substantially identical to the mark “THE BADLOVES”.
Further, the Application claims services identical to those first provided by the opponent, John Housden, collectively with others, including the Applicant, under or by reference to “THE BAD LOVES” in 1990, namely live band performances.
The Opponents, together with the Applicant, own the rights in the trade mark “THE BADLOVES”.
Accordingly, the Opponents oppose the registration of the Trade Mark under section 58 on the ground that the Applicant is not the owner of the trade mark.
Section 58 of the Act provides:
58Applicant not owner of trade mark
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.
Ownership of a trade mark may arise in two ways: firstly, by use as a trade mark in the course of trade; or, secondly, by the filing of an application for registration as a trade mark. In the case of a dispute as to the ownership of a trade mark, the first person to publically use the trade mark in the course of trade in relation to particular goods or services, or to apply to register it as a trade mark for those goods or services (whichever is the earlier) is the owner of the trade mark. In order to displace a statutory claim to ownership, an opponent must show first use of a trade mark which is at least substantially identical[14] to the impugned trade mark in relation to goods or services which are, as a minimum, ‘the same kind of thing’[15].
[14] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049 at [62].
[15] Re Hicks’ Trade Mark (1897) 22 VLR 636.
I observe that the trade mark THE BADLOVES is substantially identical[16] to the Trade Mark and that the services under consideration are the same services.
[16] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].
To support his claims to ownership, the Applicant points to his coinage of the Trade Mark. However, being the person who first thought of a trade mark is not sufficient to establish ownership. As observed by Fullagar J in Aston v. Harlee Manufacturing Co.[17]:
I do not think that an opponent of an application for registration of a trade mark could succeed by saying merely “I thought of it first”, or even “I thought of it first, and communicated it to the applicant.” It is otherwise if the opponent has used the mark in relation to goods [or services].
[17] [1960] HCA 47; (1960) 103 CLR 391 at 399.
The above is likewise true of an applicant for the registration of a trade mark: he cannot succeed by merely stating ‘The trade mark is mine because I thought of it first and communicated it to the opponent’.
Rather, ownership of a trade mark arises through the combined effects of authorship of the sign as and for a trade mark and use as a trade mark. In Television Food Network, GP v Food Channel Network Pty Ltd (No 2)[18] Collier J observed:
It is settled law in Australia that “ownership” of a trade mark, which confers the right to registration under the Act, arises because the claimant for registration is either (or both) the author of the trade mark or first user (Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 243 ALR 127 per Kenny J at [4]-[5] and Allsop J at [66]-[67]; cf Shanahan’s Australian Law of Trade Marks and Passing Off (4th ed, Lawbook Co, 2008)). As Finkelstein J observed in Malibu Boats West, Inc v Catanese [2000] FCA 1141; (2000) 180 ALR 119 at [25]:
In the case of a mark that has never been used, the proprietor is the person who is the “author” of the mark and who has applied for its registration with the intention of using the mark: In Re Hudson’s Trade Marks (1886) 32 ChD 311, 319; Seven-Up Co v OT Ltd [1947] HCA 56; (1947) 75 CLR 203; Shell Co of Australia Ltd v Rohm & Haas Co [1948] HCA 27[1948] HCA 27; (1949) 78 CLR 601, 626. Authorship in this context is not confined to the person who originated the mark. A person may be the author even if he has copied a foreign mark; he or she need only be the first person to have applied the mark in Australia: Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391 at 400 citing Re Registered Trade Mark “Yanx”; Ex parte Amalgamated Tobacco Corporation Ltd [1951] HCA 28; (1951) 82 CLR 199 at 202. A person is also the proprietor of a mark if, at the time of application for registration, he or she is entitled to the exclusive use of that mark under the common law: Shell Co of Australia, at 625, 627. At common law that is the person who first used the mark.
[18] [2009] FCA 271; (2009) 80 IPR 314; [2009] AIPC 92-339 at [39].
In the absence of any formal documentation of the ownership of the Trade Mark in 1990, my assessment of the evidence is that, while the Applicant may fairly claim to have coined the Trade Mark, he did that for and on behalf of the Group and that the Group first used the Trade Mark in respect of live band performances. It is not suggested by the Applicant that he alone first used the Trade Mark in relation to ‘live band performances’ or that he intended that he alone would use the Trade Mark as a solo artist in relation to ‘live band performances’. Rather, the Trade Mark was coined by the Applicant for the Group and first used by the Group in relation to ‘live band performances’. The Trade Mark was thus then (in 1990) owned by the Group.
This view is supported by the subsequent formation in 1994 by the Group of the legal entities The Badloves Pty Ltd and The Badloves Touring Company Pty Ltd in which each of the then original members of the Group held one share each.
As far as I understand the Applicant’s argument it is that, if he alone did not own the Trade Mark when it was first used by the Group in 1990, then those original members who have left the Group have abandoned the Trade Mark.
Concerning abandonment of a trade mark, in King Par, LLC v Brosnan Golf Pty Ltd[19] Greenwood J said:
Abandonment is not to be inferred merely from non-use: Shanahan, 5th Ed, [10.1510] at p 75, and the authorities noted at fn 77. On the other hand, a mere intention not to abandon is not enough: Shanahan, 5th Ed, [10.1510] at p 75, fn 76, and the authorities cited at fn 76. In Settef SpA v RivOland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, McGarvie J accepted that in reliance upon the principles in Mouson & Co v Boehm (1884) 26 Ch D 398, Chitty J, that mere non-use of the trade mark is not enough to give rise to abandonment; there has to be an intention to abandon; 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.
In RivOland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569 at 571-572, Bowen CJ in the Full Court of the Federal Court said this:
Once having acquired proprietorship it can only be lost upon some established general law basis such as estoppel, acquiescence or abandonment ... Counsel for the Marble Co did argue that Settef had abandoned its trade mark through disuse ... However, in my opinion, to show abandonment of the mark in circumstances such as the present it would be necessary to demonstrate more than slightness of use. There would have to be some evidence indicating an intention to abandon the trade mark to result in the right to proprietorship being lost. ...
[19] [2014] FCA 795 at [188].
[Stress added]

In the situation before me, when considering the original members of the Group, it may be fairly observed that at least Mr O’Prey would be prevented from claiming joint ownership of the Trade Mark by virtue of the Deed of Termination and Release which he executed on 1 November 1994. In this Deed Mr O’Prey acknowledged that:
he has no entitlement to the name “The Badloves” or any goodwill or benefit attached thereto;
Conversely, this Deed might be viewed as confirming that the remaining members of the Group who were signatories to the Deed, (Michael Spiby, John Housden, Chris Tabone and Anthony Featherstone) did have an entitlement to the name “The Badloves” as well as any goodwill or benefit attached thereto.
Absent any evidence to the contrary, it logically follows that Mr John Favaro who was Mr O’Prey’s replacement (and who had an equal share in the legal entities associated with the Group) also had ‘an entitlement to the name “The Badloves” or any goodwill or benefit attached thereto’.
The departures of Messrs Tabone and Featherstone from the Group appear to be taken as a ‘given’ by both of the parties and the ramifications of their departures as far as this matter is concerned are not clear. The absence of Messrs Tabone and Featherstone from the partnership documents mentioned at paras [14.9], [14.11] and [14.12], above, confirms the departure of those gentlemen from the Group by at least 13 February 2001. I note, however, that 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. This question is tied up with the question of whether, as the Applicant appears to assert, the Opponents have abandoned the Trade Mark.
Significantly, since the mid-2000 reformation of the Group to perform at the Queenscliff Music Festival, Messrs Spiby, Favaro, and Housden functioned as a partnership with a business name (and an ABN) which reflected this.
While the Applicant points to various emails from the Opponents stating that they were unable to perform on specific dates with him as ‘The Badloves’, I do not see these as constituting abandonments of the Trade Mark: merely these emails reflect only the Opponents’ unavailability on those dates. Both of the Opponents, for their part, appear also to have had some natural reservations about entering into contractual relations with the Applicant (or his management) which they allege would have resulted in their roles in the Group reduced, effectively, to those of session musicians. This also, in my consideration, flags their commitment to the Group and lack of abandonment of the Trade Mark. Furthermore, while the Applicant appears to place significant reliance upon these emails, one of his own email responses, dated 14 May 2012, to a request for the Group to perform at a private function appears to call into question his own commitment to the Group and consequently, the Trade Mark:
Hi John [Favaro],
The moment anybody asks me about doing badloves gigs, concept reformations, private gigs etc I just tell ‘em up front to forget it, it’s kaput.
That way there’s no ‘maybe/maybe not’ confusion. I get offers continually about it and the answer will always be the same. The Zoran gig was definitely the sole exception for me.
Michael [Spiby]
Similarly, the Applicant’s cancellation of the ABN, that was registered in 2010 and which related to both himself and the Opponents, might also be capable of more than one interpretation.
Thus, at best, these emails and other documents present in the parties’ evidence, taken as a whole, are ambiguous. For example, the Applicant’s requests to the Opponents that they perform on specific dates (which were declined owing to prior commitments) might alternatively be viewed as affirmations that the Applicant still regarded the Opponents as being members of the Group.
Having regard to all of the above considerations, I conclude that, at the relevant date, the Applicant was not the owner of the Trade Mark. Although the Opponent’s written submissions appear to request that the Registrar determine who the rightful owner(s) of the Trade Mark were at the relevant date, I do not see this as her function in this matter. The owner of the Trade Mark was, in my consideration and on the balance of probabilities, either the partnership of Messrs Spiby, Favaro and Housden or, alternatively, the individuals Messrs Spiby, Favaro and Housden jointly owned the Trade Mark. However, the Applicant was not the owner of the Trade Mark.
The ground under section 58 is established.

Decision

Section 55 of the Act relevantly provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
I refuse to register the Trade Mark.

Costs

The Opponents requested their costs in the event that the opposition to registration be established. As the Applicant was the unsuccessful party it is appropriate that costs be awarded against him at the Official Scale set out in Schedule 8 to the Regulations.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
6 December 2016