Jolly Swagmen Pty Ltd v Brenda Mauriceen Lomas

[2002] ATMO 19

TRADE MARKS ACT 1995

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

Re:Opposition by Jolly Swagmen Pty Ltd to registration of trade mark 749100(29, 30, 31, 35, 42) – WALTZING MATILDA – in the name of Brenda Mauriceen Lomas.

Background

This issue arises out of the filing, on 20 November 1997, by Brenda Mauriceen Lomas, (‘the applicant’) of Castle Hill, New South Wales, of application 749100 in Classes 29, 30, 31, 35, 42 of the International (Nice) Classification of Goods and Services to register the words WALTZING MATILDA in plain script in respect of the goods, below:

Class 29

Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats; foodstuffs and prepared foods included in this class;

Class 30 

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery; biscuits and cakes; ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice; foodstuffs and prepared foods included in this class;

Class 31

Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt;

Class 35

Services in class 35 namely, advertising; business management and administration; accountancy; franchising and licensing services including the appointment of franchises and licensees and the conduct and management of same; retail and wholesale services relating to acquisition, supply and sale of foodstuffs, beverages and groceries; statistical analysis; information surveys and marketing research; publicity press releases and supervision of promotional campaigns; consultancy services in regard to the above services;

Class 42

Services in class 42 namely, the establishment, operation and conduct of outlets, venues and facilities for the supplying and provision of meals and refreshments, including restaurants, cafes, food outlets, meal rooms, dining venues, eateries, cafeterias, canteens, snack bars, takeaway stores and fast-food outlets; providing foodstuffs and beverages to the said outlets, venues and facilities; catering services; advisory and consultancy services pertaining to the said services.

Following examination of the application, it was accepted for registration and advertised as such in the Australian Official Journal of Trade Marks on 1 July 1999.

On 24 December 1999, after seeking and receiving an extension of time in which to do so, Jolly Swagmen Pty Limited (‘Jolly Swagmen’) of Kangaroo Point, Queensland, filed Notice of Opposition to the registration of the trade mark.  The Notice of Opposition states several grounds of opposition and it is convenient to state those now.

The applicant is not the owner of the opposed trade mark and is not entitled to apply as owner or to be registered as owner of the opposed trade mark in relation to the goods and services;

The opposed trade mark was not distinctive of the applicant's goods and services at the date of application and is not capable of distinguishing the applicant's goods and services from the goods and services of other persons;

Use of the opposed trade mark in relation to the specified goods and/or services would be likely to deceive or cause confusion;

The opposed trade mark is substantially identical with, or deceptively similar to the opponent's trade marks that have acquired a reputation, and because of the acquired reputation, use of the opposed trade mark by the applicant in relation to the goods and services would be likely to deceive or cause confusion;

The applicant has not in good faith used or authorised the use of the opposed trade mark in Australia in relation to the goods and services and at the date of the application did not in good faith intend to use or authorise the use of the opposed trade mark in relation to the goods and services;

Use by the applicant of the opposed trade mark would be contrary to law;

Registration of the opposed trade mark would prejudice the Opponent in the conduct of the Opponent's business;

Such other grounds as the Registrar of Trade Marks or the Court; on appeal may see fit to follow; and,

By reason of the matters set forth in any one or more of the foregoing paragraphs or otherwise in the special circumstances of the case, the registration of the opposed trade mark ought to be refused in the exercise of the Registrar’s discretion.

Jolly Swagmen has served and filed evidence in support of its opposition.  Ms Lomas has not served and filed evidence in answer. 

Neither has either party requested a hearing in this matter. Section 55 of the Trade Marks Act 1995 (‘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.

The issue has therefore come to me, a delegate of the Registrar of Trade Marks to decide on the written record, based on the material on file.

The Evidence

The evidence in support comprises two statutory declarations: the first by Robert Eric Michael Raymond who says that Jolly Swagmen, at the time that the evidence was served and filed, was producing a motion picture called Waltzing Matilda.  The story is a fictional account of the events that formed the backdrop for the composition of the words and lyrics of the song, Waltzing Matilda – the shearers’ strikes of the 1890s.  It is the tale of a strong but reluctant shearers’ union organiser and his romantic attachment to the daughter of a wealthy and antagonistic squatter.

The release of the film was timed for 2001, the celebration of Australia’s Centenary of Federation. However, it does not emerge from the evidence whether this film was ever made and released. The evidence discussed in the Reasons of Deputy Registrar Hardie, as yet unpublished, in relation to the opposition by The Waltzing Matilda Centre Limited to application 768214 which is in the name of Jolly Swagmen shows that the film project was unsuccessful as Jolly Swagmen became insolvent and administrators were appointed. The assets and undertakings of Jolly Swagmen was sold to WM Productions Pty Ltd. While this might raise questions as to Jolly Swagmen’s locus in the proceedings before me, I am required, in terms of section 55, to decide this matter, whether the or not the opponent is correctly named as Jolly Swagmen or WM Productions Pty Ltd.

Mr Raymond attests to the considerable effort in raising finance for this project, developing business plans and marketing strategies to capitalise on the Waltzing Matilda theme – including attempting to secure trade mark rights in the words.

Jolly Swagmen has, states Mr Raymond, filed a number of trade mark applications; however, these have no direct bearing on these proceedings as the priority dates are subsequent to this one. 

Mr Raymond then attests to a number of businesses operating under the name WALTZING MATILDA: a tea-house at Anna Bay in New South Wales; a hotel in Springvale Victoria; a motel in Margate, Queensland, and a motor inn in Charleville, Queensland.  Mr Raymond also appends an Australian Securities Investment Commission extract for the business at Springvale, Yellow Pages entries for the business at Springvale and a business name registration for the tea-house at Anna Bay. 

Mr Raymond concludes by drawing attention to two trade marks assigned to Jolly Swagmen; these are:

Number  218783
Priority date                 29 April 1968
Goods  All goods in class 32
Trade Mark                 WALTZING MATILDA

Number  228232
Priority date                 23 April 1969
Goods  Wines, spirits and liqueurs
Trade Mark                 WALTZING MATILDA

The second declaration filed by Jolly Swagmen is by Khrystyna Halyna Misko of Fisher & Kelly, patent & trade mark attorneys.  This declaration brings into evidence a menu and brochure of the Waltzing Matilda Motel of Margate, Queensland.  

Other

The popular, although debated, story of the creation of the ballad Waltzing Matilda is that the music to the ballad Waltzing Matilda was written by Christina Rutherford McPherson, of Winton; the tune draws heavily on a Scots folk ballad Thou Bonnie Wood of Craigielea, written by James Barr in 1805.  The words were written by Banjo Paterson after he heard Miss McPherson playing the tune on the autoharp.  The first public performance of Waltzing Matilda was at the North Gregory Hotel in Winton.  The words were popularised amongst diggers during World War 1 by their inclusion on packets of tea.

Reasons

For convenience, I will deal with the grounds of opposition in the order in which they are raised in the Notice.  I note, before giving my reasons that in terms of the judgment of French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999), at paragraph 44, ‘the position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.’ In order to accept that an opponent has established a ground of opposition, I need to be satisfied that the evidence supports that ground.

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.

For the purposes of the Trade Marks Act 1995, the meaning of the word 'owner' is identical to the meaning of the word 'proprietor' contained in the Trade Marks Act 1955.  As observed in re Hicks' Case (1897) 22 VLR 636, by Holroyd J:

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.

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.

The first user of a trade mark in Australia becomes the owner of the mark at common law, and may become the owner of the registered trade mark: Shell Co. of Australia Ltd. v. Rohm and Haas Co (1949) 78 CLR 601 at 627.

For an opponent to succeed on a section 58 ground, it bears the onus of establishing that it (or another party) has a superior proprietary claim to the applied for trade mark: Tourism Queensland v Dectar Pty Ltd [2001] ATMO 66 (27 July 2001).

Jolly Swagmen points in its evidence to instances of the use, by several persons other than Ms Lomas, of the words Waltzing Matilda, before the priority date of this application.  However, the evidence is not explicit that these uses are as a trade mark.  Ownership of a trade mark does not stem from the registration of a company name, per se.  Similarly, the registration of a business name does not give a right in a trade mark: Lone Star Steakhouse & Saloon v Zurcas [2000] FCA 29 (21 January 2000). Similar observations apply to listings in telephone directories.

Attached to the Misko declaration there is a menu and brochure of a motel in Margate.  These show the words WALTZING MATILDA at the top of each item.  However, this material is not dated and it appears that it was contemporaneously obtained from the motel in support of the opposition: Ms Misko says, “our firm has now obtained the following materials from the Waltzing Matilda Motel …”. [Stress added]  In other words, the material has apparently been obtained after the priority date of the opposed application at the time the evidence in support of the opposition was being prepared.  This was after the priority date of the opposed application.  As such, if the words WALTZING MATILDA are being used by the motel as a trade mark, the material does not discharge the onus on Jolly Swagmen to show that the use was before the priority date of the opposed application.  Although the material, in combination with the ASIC information, is suggestive, it does not, I consider, in the absence of material showing trade mark usage which is obviously from before the priority date, have the forensic force referred to in Dectar, above. 

The Yellow Pages entries in the evidence are simple listings and small block entries within a column of listings – they are not advertisement entries that expressly show use of a trade mark.

Accordingly, Jolly Swagmen has not established its ground in terms of section 58 of the Act.

Section 41

Section 41 provides guidelines for the assessment of whether a trade mark is capable of distinguishing goods or services. As a minimum, to be prima facie qualified for inclusion on the Register of Trade Marks, a trade mark should be capable of distinguishing the applicant’s goods or services. 

Subsection 41(3) provides:

(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

The assessment of whether a trade mark is capable of distinguishing goods or services is to be undertaken with reference to whether, without improper motive, other traders would require to use the sign, on similar goods or services, in a manner which would infringe.  In Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514, Kitto J put the test under the 1955 Act as follows:

[T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

The assessment is governed by the structure of subsections 44(3) to (6) of the Act. In Blount Inc v Registrar of Trade Marks [1998] 440 FCA (1 May 1998), Branson J said:

Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered ("the designated goods or services"). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to "take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons". Having taken such matter into account, it is theoretically open to the Registrar to conclude:

(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

On the face of it, the expression WALTZING MATILDA has no signification that would disqualify it from registration as a trade mark and there is nothing in the evidence that would suggest this.  However, I gather from the evidence that one leg of the Jolly Swagmen proposition is that since other people use the expression in relation to the similar goods or services as those of the applicant, the expression is not capable of distinguishing the applicant’s goods and services.

I am not satisfied that the evidence establishes that the expression WALTZING MATILDA is in any way common to the trade.  As I have discussed above under the heading Section 58, the evidence does not establish use of the expression as a trade mark before the priority date of this application; however, had the evidence established trade mark usage by another person, that would only establish that the words can function as a trade mark.  When the evidence is scrutinised closely, all that it establishes is that there is a motel in Queensland that has used the expression WALTZING MATILDA as the name of the establishment at some time after these proceedings were commenced and that there is a telephone listing for another hotel in Springvale, Victoria called the WALTZING MATILDA and that there is a tea house elsewhere that is called the WALTZING MATILDA.  Two or three such occurrences do not, in my consideration, establish that the expression is common to the trade or that it lacks inherent capacity to distinguish – in fact, the opponent’s other proposition (that these traders use the expression as a trade mark) mitigates against this. 

I am not satisfied that Jolly Swagmen has established its ground in terms of section 41 of the Act.

Section 43

Section 43 of the Act provides:

43  Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

I gather that this ground is predicated on the use by either Jolly Swagmen or others of a name, which is the same as the opposed trade mark.

In T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720, Wilcox, Kiefel & Emmett JJ stated:

It is important to note that the right to apply for rectification of the register which is conferred by paragraph (c) is excluded only in relation to deception or confusion that arises for a particular reason specified in section 43 or 44. The paragraph does not exclude a claim for rectification that arises for some other reason. The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in those sections. It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others. So the alleged deception or confusion is not for a reason covered by section 43.

As the case on deception or confusion sought to be established by Jolly Swagmen depends on comparison to the name used by some other person, it is not a case covered by section 43. The opponent has thus not established its ground under section 43 of the Act.

Section 44

Ms Lomas has not submitted evidence of use of the opposed trademark. Insofar as it is relevant to these proceedings, section 44 provides:

44  Identical etc. trade marks

(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(2).

Note 3:For priority date see section 12.

The trade marks of the parties are identical.  The priority dates of the Jolly Swagmen registrations are earlier than that of this application.  The remaining considerations are whether the goods and services of the opposed application are closely related to those of the opponent.  The goods and services of the opposed application are:

Class 29

Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats; foodstuffs and prepared foods included in this class

Class 30 

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery; biscuits and cakes; ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice; foodstuffs and prepared foods included in this class

Class 31

Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt

Class 35

Services in class 35 namely, advertising; business management and administration; accountancy; franchising and licensing services including the appointment of franchises and licensees and the conduct and management of same; retail and wholesale services relating to acquisition, supply and sale of foodstuffs, beverages and groceries; statistical analysis; information surveys and marketing research; publicity press releases and supervision of promotional campaigns; consultancy services in regard to the above services

Class 42

Services in class 42 namely, the establishment, operation and conduct of outlets, venues and facilities for the supplying and provision of meals and refreshments, including restaurants, cafes, food outlets, meal rooms, dining venues, eateries, cafeterias, canteens, snack bars, takeaway stores and fast-food outlets; providing foodstuffs and beverages to the said outlets, venues and facilities; catering services; advisory and consultancy services pertaining to the said services

The goods of Jolly Swagmen are: All goods in class 32, Wines, spirits and liqueurs.  (Class 32 contains such goods as beers, ales and porters).

I will consider first whether the goods of the parties are closely related. The expressions ‘similar goods’ and ‘similar services’ are defined by section 14 of the Act:

14  Definition of similar goods and similar services

(1)For the purposes of this Act, goods are similar to other goods:

(a)if they are the same as the other goods; or

(b)if they are of the same description as that of the other goods.

(2)For the purposes of this Act, services are similar to other services:

(a)if they are the same as the other services; or

(b)if they are of the same description as that of the other services.

In Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592, at 607, Dixon C.J, McTiernan J said of the expression, ‘goods of the same description’:

The fact that examination of the nature of the applicant's goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant's goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd. (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd. v. Boden per Latham C.J. (1945) 70 CLR 84, at p 90 . There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek's Application (1946) 63 RPC 59. Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's Case (1946) 63 RPC 59 the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: "In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (1946) 63 RPC 59, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are 'of the same description'": In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden (1945) 70 CLR 84 when he said:

"What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments".

The Jolly Swagmen goods can be generally categorised as being alcoholic beverages.  Such goods are not made by the same traders as those who make the meat, fish, poultry and game, etc products as those in Class 29 of the opposed application.  Neither are what could be categorised as general groceries in Class 30 normally made in the same places as the alcoholic beverages of Jolly Swagmen.  The same can be said of the Class 31 goods of the opposed application which, by and large, have their origins in plant nurseries, market gardens and the like whereas alcoholic beverages look to their genesis in distilleries, breweries or at a winery.   Alcoholic beverages are sold over different counters to the opposed goods: indeed, in some Australian Sates, they cannot legally be sold through the same premises.

Turning to the services of the opposed application, it is difficult to view the services performed in cafes and the like as being usually viewed as being seen by the normal person as directly connected with, or as a trade source for, alcoholic beverages. Whilst it is true that eateries such as cafes might provide alcoholic beverages with a meal, such establishments do not, normally, function as a source for such goods. Were it to be argued that a person might well view a wine bearing the trade mark WALTZING MATILDA as being the house-wine of an eatery called WALTZING MATILDA, such argument could be countered with the observation that it is not normal for eateries and cafes to present house-wines for consumption in the establishment in labelled bottles nor to have wines made for them. The logic of such argument appears to be more appropriate to section 60 of the Act and to depend in large part on the reputation of the wine or the eatery in question. Thus, the goods of the opponent and the services of the applicant are not closely related.

Jolly Swagmen has not, therefore, established its ground of opposition in relation to section 60 of the Act.

Section 59

Section 59 of the Act provides:

59  Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a)to use, or authorise the use of, the trade mark in Australia; or

(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:For applicant see section 6.

Jolly Swagmen has not led any evidence concerning Ms Lomas’ intention to use the trade mark in Australia.

Accordingly, Jolly Swagmen has not established this ground of opposition.

Section 42

Section 42 of the Act provides:

42  Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a)the trade mark contains or consists of scandalous matter; or

(b)its use would be contrary to law.

Jolly Swagmen has not led any evidence in support of this ground of opposition.

Thus, Jolly Swagmen has not established this ground of opposition.

Decision

I am not satisfied that the evidence supports any of the grounds nominated in the Notice and the opposed trade mark may proceed to registration.

Costs

There has been no submission as to costs in this matter.  I make no award.

Ian Thompson
Hearing Officer

25 February 2002