John Trippet Pty Ltd v Comserve Pty Ltd

[2001] ATMO 98

TRADE MARKS ACT 1995

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

Re:Opposition by John Trippett Pty Ltd to registration of trade mark application 768465(9,16,42) - THEMAP- filed in the name of Comserve Australia Pty Ltd.

Background

On 27 July 1998, Comserve Australia Pty Ltd (‘Comserve’) filed application to register the trade mark THEMAP in respect of:

Scientific, electromagnetic, nautical, photographical, optical, weighing and measuring apparatus, images, measures and electronic data files; apparatus for recording, transmission and reproduction of images and measures; images and measures that have been recorded, transmitted or reproduced; magnetic data carriers; recording discs

Operational and procedural manuals; documentation, reports, datasheets and other printed matter associated with the creation, production, delivery, function and maintenance of a product or service; photographs; images printed on paper, plastic, cardboard and all other types of printable materials; instructional and teaching material

Scientific and industrial research; computer programming; compilation of maps and measures utilising remote sensing.

The above goods and services are in Classes 9, 16 and 42 of the International (Nice) Classification of Goods and Services.  Following examination of the application, the application was accepted for registration and advertised in the Australian Official Journal of Trade Marks on 26 November 1998.

On 26 February 1999, John Trippett Pty Limited (‘the opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice now cites two grounds of opposition, one other ground has been withdrawn by amendment of the Notice. The grounds cited are under section 58 and section 62 of the Trade Marks Act 1995. Both grounds rely on the opponent’s establishing that the applicant is not the owner of the trade mark.

The issue was set down to be heard by me as a delegate of the Registrar of Trade Marks on 31 August 2001 in Brisbane.  However, on that day, I received a facsimile letter from the legal representatives for the opponent advising me that their client, John Trippett Pty Limited had been deregistered.  The solicitors for Comserve received a similar letter.  Subsequently, there was no hearing.  Nonetheless, section 55 of the Act provides:

55  Decision

Unless the proceedings are discontinued or dismissed, 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.

As the opponent has not discontinued, and indeed, cannot, discontinue the proceedings I must decide the issue and now do so on the written record.

Evidence

The opponent’s evidence in support of the opposition comprises a statutory declaration and attachments by John Trippett.  The evidence in answer is a statutory declaration by Geoffrey Thwaites.  There is a further declaration by John Trippett as evidence in reply.

The declarants compendiously attest to a course of dealings between companies with which the declarants are or were associated and between Mr Trippett and the companies, including the applicant, associated with Mr Thwaites.  The goal in these negotiations was to establish a company or joint venture to which Mr Trippett would bring various mapping technologies and his expertise in this field; the companies associated with Thwaites were to provide some finance, and, I consider, some business infrastructure and management expertise.  The company, or companies, to be formed were to exploit proprietary mapping technology in Australia and Indonesia.  Many of the documents in evidence mention intellectual property rights in the technologies or business plans associated with the trade marks THEMAC and THEMAP; however, property rights in the trade mark THEMAP itself, as opposed to any technologies associated with it, are never expressly stated.  The negotiations were not completed and it is apparent that Mr Trippett later worked as an employee of Comserve – a position from which he subsequently resigned. 

Following the collapse of the negotiations, the applicant, Comserve, with Trippett as an employee, licensed the technology from the CSIRO and accepted mapping contracts with reference to the trade mark.  Later, Comserve filed this application.

I believe that the following relevant conclusions can be drawn from the evidence:

• Neither John Trippett nor John Trippett Pty Limited had public use of the trade mark in a commercial sense before the priority date of this application.
• Much of the opposition relies on the similarity of the trade mark THEMAP to the trade mark THEMAC which was used by John Trippett or companies associated with him in a commercial sense before the priority date of this application.
• The term THEMAP is derived from the expression ‘thematic aerial surveying’ and it is not expressly obvious from the evidence who coined the expression although I prefer the evidence of Mr Thwaites who says that he coined the term.

I prefer the evidence of Mr Thwaites for the following reasons:

• The opponent confuses, in its evidence, the intellectual property rights in the technology and the intellectual property rights in the trade mark.
• The declarations of John Trippett misunderstand or misrepresent the import of various documents appended to it: for example, at paragraph 47 of his first declaration Mr Trippett brings into evidence a declaration made on 9 September 1996 by Mr Thwaites.  Mr Trippett’s interpretation of this document is that Mr Thwaites claimed intellectual property rights in various properties which allegedly belonged to Mr Trippett.  However, what the declaration avers to is ownership of the intellectual property by Trippett and companies associated with both Trippett and Thwaites and that no other person (other than these entities) had an interest in the intellectual property.
• Mr Trippett appears to confuse the acronyms THEOS and THEMAC with products, installations associated with certain places, business proposals and operating systems.  Although various forms of intellectual property are claimed to reside in whatever these systems actually are, there is no detail of what this intellectual property actually is. 
• Mr Trippett, in his evidence, presents himself as being essential to the joint venture on the basis that only he had the requisite expertise in mapping and that the applicant had no expertise in this area.  However, the applicant had earlier developed proprietary mapping systems which were used to map the Papua New Guinea border.  The applicant had also provided services to the Australian Army Mapping Unit.  Mr Trippett was aware of this expertise since he had been offered a consultancy by the applicant in 1990 which did not proceed.
• Mr Trippett, in his evidence, presents the technology to be used as relying on “specific processes, practices, procedures and algorithms developed by the opponent incorporating hyperspectral airborne measurement calculations and technologies.”  However, in reality, the technology to be used by the proposed joint venture, or by the applicant, was developed by the CSIRO and was licensed by the applicant from the CSIRO.

Section 58

Section 58 of the Act provides:

58  Applicant 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.

The term ‘owner’ under the Act has the same meaning as ‘proprietor’ under the Trade Marks Act 1955, and it predecessors. In Hicks Case (1897) 22 VLR, at p 639, during the course of argument, Holroyd J said:

A person cannot be properly registered unless he is the proprietor.  Proprietor is the person who at the moment he makes application to be registered is entitled to the exclusive use of the name, whether he then or before publicly adopted it.  A man cannot be said to have adopted a name if someone else has done so before him.  Section 19 merely says that the act of applying is to be deemed equivalent to public user.   No one could otherwise be entitled to registration as proprietor unless he had publicly used the trade name before.  The section does not affect the fact that another person used the name first.  The difficulty here is that although Hicks may have by virtue of his application publicly used the name, someone else publicly used it before him.

In delivering his judgment, at page 640, His Honour said:

For the reasons given by us in the course of the argument, we think this application to expunge Hicks's name from the register of trade marks as the proprietor of the word 'Empress' as a trade mark applied to stoves ought to be granted.  In order to substantiate his application to be placed on the register for this word he must have claimed to be the proprietor, and the word 'proprietor' must be taken to mean the person entitled to the exclusive use of that name.  If there is anyone else who would be interfered with by the registration of the word 'Empress' in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the register for that trade mark, and his name will be properly removed on the application of the person whose right of user was thereby disturbed.

Ownership therefore stems either from first public use of the trade mark or from the filing of the application for registration of the trade mark, whichever is the earlier. 

As I have observed, I do not believe, on the evidence before me, that either Mr Trippett, or the opponent is the owner of the trade mark.  Mr Trippett’s recollection is that he coined the trade mark together with Mr Thwaites.  Mr Thwaites’ recollection is that he coined the trade mark in order to distinguish the goods and services from those offered under the trade mark THEMAC by Mr Trippett because Mr Trippett’s company was in financial difficulties at that time.  There are, as noted, inconsistencies and misinterpretations in Mr Trippett’s declarations and I prefer Mr Thwaites account of what happened.  I accept, therefore, that the applicant had authorship of the trade mark.

Moreover, I also note that, whatever the situation was as to who first thought of the trade mark, it is apparent from the evidence that the applicant had the first public use of the trade mark and that it is most likely that this first use of the trade mark was while Mr Trippett was an employee of the applicant.

As regards the negotiations which took place between the parties, I note that these did not culminate in a public use of the trade mark by the joint venture and that public use of the trade mark during these negotiations did not occur.  In Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414, at 432, Deane J held that the prior use which will suffice to establish ownership, “is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods [or services] for the purpose of indicating or so as to indicate a connection in the course of trade.” [Parethesis added]. At page 433, he said, with the rest of the Court concurring:

The Court was referred to a large number of cases and to some administrative decisions in which consideration has been given as 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 or that the mark has been used in an advertisement of the goods in the course of trade.  In such cases, however, it is 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 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 material were delivered to Philip Morris to demonstrate what Loew's was marketing in other countries and what Philip Morris might market, under license 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 connexion in the course of trade between the new cigarettes and Loew's.

As I have noted, the first public user of the trade mark in relation to goods [or services] for the purpose of indicating or so as to indicate a connection in the course of trade was by Comserve, the applicant.

Part of Mr Trippett’s argument apparently relies on the similarity of the trade mark THEMAP to the trade mark THEMAC.  The opponent has used this trade mark from a date which is earlier than the priority date of this application and, depending on the degree of similarity, the opponent could displace Comserves’ claims to ownership on this basis.  As to the similarity, Gummow J, in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 at 391, referring to The Shell Co of Australia Ltd v Rohm and Haas Co (1949) 78 CLR 601, said:

When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice.  The phrase “substantially identical” as it appears in s 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks.

Accordingly, the question to be resolved is whether the trade marks THEMAC and THEMAP are substantially identical.  In Shell, Windeyer J said:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

I consider that the total impression of resemblance that emerges from the trade marks is that they are, in essence, different from each other.  Both trade marks suggest to me that they have been coined with reference to different things, they bring different things to mind, and that they present on a side-by-side comparison as having their own identity.

Consequently, I find that the opposition to registration in terms of section 58 is not successful as the opponent has not established its ground.

It follows that the opposition to the registration of the trade mark must fail as, were I to consider if grounds under section 62 are relevant, these relied on establishment of grounds under section 58.

Decision

I dismiss the opposition and direct that the application proceed to registration, on payment of the appropriate fees, and if no appeal is filed against this decision within the requisite time.

Costs

I note that the opponent has been deregistered and that it is, accordingly, unrealistic to determine costs.

Ian Thompson
Hearing Officer

15 October 2001