Jolly Swagman Pty Ltd v the Waltzing Matilda Centre Limited

[2002] ATMO 17

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

Re:Oppositions by Jolly Swagmen Pty Ltd to applications by The Waltzing Matilda Centre Limited to remove trade mark numbers 218783(32) and 228232(33) from the Register

Trade marks number 218783 and 228232 are registered trade marks. Both registrations are for the words waltzing matilda. 218783 is registered as of 29 April 1968 for all goods in class 32. As per Schedule 1 of the Trade Marks Regulations 1995, this class comprehends:

Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Trade mark number 228232 is registered as of 23 April 1969 and extends to

Wines, spirits and liqueurs.

Both trade marks have been through a number of assignments.   Millers Hotels Pty Ltd, a New South Wales company of Sydney, filed the trade mark applications. On 11 September 1969, a certificate of registration was issued for 218783 in the name of Millers Hotels Pty Ltd; and on 17 September 1970, a similar certificate was issued for 228232.  In 1978, Millers Hotels Pty Ltd assigned the trade marks to Tooth & Co Limited. In 1987 Tooth  & Co assigned them to Lindemans Wines Pty Limited. Tooth & Co and Lindemans Wines are both New South Wales companies with Sydney addresses.   In 1995, Lindemans assigned both marks to the Winton Shire Council, a local authority constituted under the Queensland Local Government Act.   Winton Shire Council was the registered owner until July 1996, when it assigned the marks to Southcorp Wines Pty Ltd.  Southcorp remained the registered owner until April 2000, when Jolly Swagmen Pty Ltd, of 10/46 Rotherham Street, Kangaroo Point, Queensland, was entered as the new owner

Jolly Swagmen Pty Ltd (hereafter Jolly Swagmen) is the current registered owner of both 218783 and 228232.

On 19 July 2000, the Waltzing Matilda Centre of Winton, Queensland, applied under section 92 of the Trade Marks Act 1995 to remove trade marks numbers 218783 and 228232, from the Register, for non-use.  Removal is sought for all of goods for which the marks are registered. In making the applications Waltzing Matilda Centre describes itself as a person aggrieved by the fact that 218783 and 228232 are registered trade marks. Its grounds for the non-use applications are:

92 (4)(a)on the day on which the application for the registration of the Trade Mark was filed, the applicant for registration had no intention in good faith:

(i)to use the Trade Mark in Australia;

(ii)to authorise the use of the Trade Mark in Australia; or

(iii)to assign the Trade Mark to a body corporate for use by the body corporate in Australia,

in relation to all of the goods in respect of which the Trade Mark is registered and that the registered owner:

(iv)has not used the Trade Mark in Australia; or

(v)has not used the Trade Mark in good faith in Australia;

in relation to those goods at any time before the period of 1 month ending on the day on which this application is filed; and

92 (4)(b)the Trade Mark has remained registered for a continuous period of 3 years ending 1 month before the day on which the application is filed, and at no time during that period, the person who was then the registered owner;

(i)used the Trade Mark in Australia, or

(ii)used the Trade Mark in good faith,

in relation to the goods in respect of which the Trade Mark is registered.

For the purposes of the 92(4)(b) ground, the three year period for 218783 and for 228232 runs from 19 June 1997 to 19 June 2000. 

In accordance with subsection 95(2) of the Act, the Waltzing Matilda Centre removal applications were advertised in the Australian Official Journal of Trade Marks and, within the time allowed, Jolly Swagmen opposed them both.

Jolly Swagmen relies on eight grounds of opposition which, briefly stated, are:

1. Waltzing Matilda Centre is not a person aggrieved within the meaning of s92.

2. The burden of proof required by s92 (4) is not fulfilled.

3. The trade marks were applied for with a bona fide intention of use.

4. Jolly Swagmen purchased the trade marks with a bona fide intention of use.

5. The trade marks have been used by or on behalf of Jolly Swagmen within the relevant three year periods.

6. Any failure to use is through circumstances that were an obstacle to the use of the trade mark during that period.

7. Jolly Swagmen has never abandoned these trade marks.

8. The discretion of the Registrar should be exercised in favour of Jolly Swagmen by virtue of circumstances surrounding the use and registration of these marks.

Jolly Swagmen served and filed evidence to support its opposition.  This consisted of a statutory declaration by Robert Eric Michael Raymond.  Waltzing Matilda Centre did not serve any evidence in answer. 

A hearing of the opposition matter took place in Canberra, before me, on 11 December 2001. Mr Peter Fisher of Fisher Adams Kelly, patent and trade mark attorneys of Brisbane, appeared on behalf of the trade mark owner.   Waltzing Matilda Centre was represented by Mr Andrew Musgrave of Counsel briefed by Mr Matthew Hall of Phillips Fox, lawyers of Sydney.

Standing

Before turning to the opposition grounds, there an issue concerning Mr Fisher’s right to make representations.  Mr Fisher said he was not party to proceedings as an agent of Jolly Swagmen but of a company called WM Productions Pty Ltd.   This company came to light in the course of an earlier hearing I conducted in respect of opposition between the same parties on trade mark application number 768214.  My findings are set down in separate decisions issued 3 October 2001 and 24 January 2002.  The facts, briefly, are that in June 2001, Cole Downey, chartered accountants and insolvency specialists, advised Fisher Adams Kelly that it was appointed as administrators for Jolly Swagmen and in July, notified Fisher Adams Kelly of the proposed disposition of Jolly Swagmen’s assets to a creditor, WM Productions Pty Ltd. In August 2001 Fisher Adams Kelly was told that WM Productions Pty Ltd had purchased all of the assets and undertakings belonging to Jolly Swagmen.   Fisher Adams Kelly has since acted for WM Productions Pty Ltd. 

The issue of ownership of the Jolly Swagmen assets and undertakings has apparently been before the Court and, for this reason, I understand, as at the time of the hearing, assignment documents in favour of WM Productions Pty Ltd had not been filed.

Mr Musgrave contends, as he contended at earlier hearings in matters between these parties, that WM Productions Pty Ltd has no standing and no right to be represented. My view, however, remains in line with my finding in October 2001 and January 2002. Furthermore, section 99 of the Act allows any person to oppose an application under section 92, and section 96A[1]provides that these oppositions may proceed in the name of a person other than the person who filed the notice. These circumstances, I think, enable me to hear, not just Jolly Swagmen, the person in whose name the trade marks are currently registered, but the party who lays claim as successor to the registrations, and is intent on protecting those registrations from removal.

[1] see Trade Marks and Other Legislation Amendment Act 2001

Accordingly, I agree with Mr Fisher that it is appropriate to hear him as the agent for WM Productions Pty Ltd, in the matter of Jolly Swagmen’s opposition to the removal of trade mark registrations numbers 218783 and 228232.

The law

Section 92(1) of the Act reads:

92. (1) A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

The status of aggrieved is a requirement and when the removal applicant’s claim that it is aggrieved is brought into question, this generally will need to be resolved before the removal action can proceed further.  

The question of whether a person is aggrieved for the purposes of section 92 (and similarly for the purposes of section 23 ¾ the non-use removal provisions of the Trade Marks Act 1955) has been the subject of considerable case law. In the recent Woolly Bull Enterprises Pty Ltd and Another v Reynolds[2] his Honour Justice Drummond addresses the question person aggrieved as follows: 

[2] (2001) 51 IPR 149 at 151

Person Aggrieved

Though the public and not just the applicant for removal of a mark has an interest in non-used marks not being allowed to remain on the register, the right to apply for removal created by s 92 is not given to “any person”, only to “a person aggrieved”.

...

In The Ritz Hotel Ltd[3], it was said at 454 that a “person aggrieved” in the present context:

[3] (1988) 12 IPR 417

... would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the register remaining unrectified...

To be capable of registration as a trade mark, a sign must be “used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person” from the goods or services of others: s 17. Only a person so using or intending to use a sign is entitled to apply for its registration as a trade mark: s 27. It is a ground of opposition to registration of a trade mark that the applicant does not intend to use the mark “in relation to the goods and/or services” specified in the application. An object of the 1995 Act is to create, by registration of trade marks, a species of tradeable property - see ss 21 and 22 - but only where such marks are connected with actual or contemplated trade in goods or services. It would be contrary to this object of the 1995 Act to accord standing to a person to attack a registered mark on the ground that that person had made his own application for registration of a conflicting mark where there was no proof that the person either had a trade in goods marked with the mark the subject of his registration application or had a bona fide intention to trade in such goods. Such a person cannot be said to be “appreciably disadvantaged in a legal or practical sense” by a mark he wishes to attack remaining on the register, though he might wish to traffick in marks as distinct from to trade in marked goods.

Justice Drummond also refers to Kraft Foods Inc v Gaines Pet Foods Corp[4] and New South Wales Dairy Corp v Murray Goulburn Co-Op Co Ltd (1989)[5].

[4] (1996) 34 IPR 198 at 210

[5] 14 IPR 75 at 77

Evidence and Submissions

Waltzing Matilda Centre applies to the Registrar for the subject trade marks to be removed from the Register.   It says that it is aggrieved by the fact that Australian registered Trade Mark[s] .. 218783 [and] 228262 [are] registered. Waltzing Matilda Centre filed no evidence in answer to Jolly Swagmen’s grounds of opposition, or to its evidence supporting that opposition.  There is, therefore, no evidentiary explanation of the basis of this claim.  I do note Mr Musgrave’s argument that evidence on a co-pending matter shows Waltzing Matilda is actively concerned in the restaurant and souvenir trade and this, he says, establishes its bona fides as a person aggrieved by the registration of 218783 and 228232.  First, however, that evidence is not part of the present proceedings and I have no intention of taking it into account.  Second, I will say, nevertheless, that in terms of the directives in Woolly Bull Enterprises (above) the fact that Waltzing Matilda merely has restaurant and retail interests, would not establish its standing in respect of the removal for non-use of trade mark registrations numbers 218783 and 228232.

On the other hand, Jolly Swagmen clearly identified Waltzing Matilda Centre’s standing as one of its grounds of opposition.   It is its first ground and it reads:

The applicant is not a person aggrieved within the meaning of S.92.

Mr Musgrave, at the hearing, submitted that in light of the fact that none of Jolly Swagmen’s evidence addressed the question of standing, it was not justified in pressing this ground.  He said that the onus in a removal application lies with the trade mark owner, and unless there is evidence to the contrary, the statement that Waltzing Matilda Centre is aggrieved, should stand.  In respect of the directives from Woolly Bull Enterprises (see above) he said that all that Waltzing Matilda Centre needed to show was that it was not an officious interferer, and that its objective was not simply to traffic in the trade mark waltzing matilda.

I cannot accept Mr Musgrave’s argument. 

I do not agree that because Jolly Swagmen’s evidence does not address the matter of Waltzing Matilda Centre’s standing, Jolly Swagmen is debarred from arguing the matter in the course of the hearing.  The ground is clearly stated, and with or without the benefit of supporting evidence, a party has a right to argue each nominated ground.   In this instance I am to decide this removal application not simply on the basis of an unsupported notice of opposition.  Here, the notice of opposition is supported by evidence, and both, in turn, are supported by oral submissions made in the course of a hearing.  The removal applicant had due notice of the ground and it ought to have been alert to the fact that, in the course of the scheduled hearing, Jolly Swagmen was at liberty to argue any of its grounds and to sustain its arguments with any of the available case law.  Mr Fisher has pointed to significant case law in support of Jolly Swagmen’s opposition and I believe I am bound to take that case law into account.  I do not consider that this course of events can be seen as any sort of an ambush.

In accordance with the longstanding case law of The Ritz Hotel Ltd (supra), in order to show itself aggrieved, Waltzing Matilda Centre needs to demonstrate that it would be appreciably disadvantaged in a legal or practical sense by the register remaining unrectified.

This it clearly has not done.  

It has provided nothing more than a bald statement that it is a person aggrieved by the fact that 218783 and 228232 are registered trade marks.  There is no indication, let alone evidence, that the registrations of these two trade marks appreciably disadvantage Waltzing Matilda Centre in either a legal or a practical sense or that such a condition will continue until such time as the Register is rectified by their removal.  

Mr Fisher raised the matter of prior ownership of trade mark 218783 and 228232 by the Winton Shire Council.  He wished me to consider this an element of taint.  Winton Shire Council, however, is not a party to these proceedings.  If it were, it may well have been in a position to know a good deal about the use of these trade marks and their right to remain on the Register.  In regard to Mr Fisher’s submission, however, I do not think the prior ownership has any bearing in respect of the removal applicant’s bona fides.  Nor does it lend any assistance to Waltzing Matilda Centre’s claim for standing as a person aggrieved.

In consideration of the directives of Woolly Bull Enterprises (supra) and the lack of any material evidence to support its statement, I find that the removal applicant, Waltzing Matilda Centre, has failed to establish to my satisfaction that it is a person aggrieved by the registration of trade mark numbers 218783 and 228232.  Waltzing Matilda Centre therefore has not shown that it is a person properly qualified to apply for these removal actions.

The removal applications therefore fail at the threshold, and I refuse both removal applications.

Costs

Both parties sought to have their costs.

As the opposition to this removal application has succeeded, and in accordance with the provisions of section 221 of the Act, I order that the removal applicant, Waltzing Matilda Centre, pay the costs of the other side.  However, as evidence was not prepared separately for each of the mark, the formula set out by Hearing Officer Williams in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd 704191, 704192(19)  will apply.  For convenience, I attach a copy of the relevant section of Mr Williams’ directions.   If requested to do so, the amount of costs will be taxed, allowed and certified by a trade marks officer appointed by the Registrar for that purpose (reg 21.13).

Helen R Hardie

Deputy Registrar
Trade Marks Hearings
22 February 2002