Jon Simikic and Alfred Axisa v RLC Investments Pty Ltd

[1999] ATMO 85

TRADE MARKS ACT 1995

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

Re:Opposition by JON SIMIKIC and ALFRED AXISA to registration of trade mark application No. 723534 in the name of RLC INVESTMENTS PTY. LTD. for the mark EAGLE MOTORSPORTS and device

Background

On 9 December 1996, RLC Investments Pty Ltd (the applicant) filed an application, to which was allocated number 723534, for registration of the trade mark -

 

It was filed in class 42 in respect of services which were subsequently amended to read:

"Retail services, wholesale services and distribution services in relation to motor vehicle components and motor vehicle accessories excluding compression ignition internal combustion engines for land vehicles, tyres, goods manufactured from india-rubber and gutta-percha, vehicle batteries and vehicle ignition components; and consulting services in relation to motor vehicle components and motor vehicle accessories excluding compression ignition internal combustion engines for land vehicles, tyres, goods manufactured from india-rubber and gutta-percha, vehicle batteries and vehicle ignition components".

Following examination of the application, the mark was accepted for registration, the acceptance having been advertised in the Australian Official Journal of Trade Marks of 31 July 1997. 

On 2 February 1998, Jon Simikic and Alfred Axisa (the opponents) opposed registration of the mark by filing a notice of opposition stating the following grounds upon which the opposition is to be based:

• The applicant is not the owner of the opposed trade mark - s.58

• The opponents rely on the provisions of s.60

• The opposed mark is not capable of distinguishing the applicant's services from those of other persons.  

The hearing on the opposition was held in Canberra.  Mr Wayne Willis, of F B Rice & Co, patent and trade mark attorneys of Sydney, represented the opponent by telephone.  The applicant's attorney, Mr Greg Bartlett, of the Adelaide Office of Phillips Ormonde & Fitzpatrick, filed written submissions.

The Evidence
Evidence in support consists of two statutory declarations, with exhibits.  The first declaration is by Graeme Kirk, a director and shareholder of a company trading under the names Eagle Auto Spares and Eagle Performance Wholesale.  These businesses, the declarant states, advertise locally as well as Australia-wide via a mail order system.  He claims that the applicant is not the owner of the word "Eagle", or the device of an eagle, for motor vehicle spare parts, because the businesses operated by him were the first users of these features. 

The second declaration is from Jon Simikic who, with his partner Alfred Axisa, operates a business trading under the name 'Eagle Motorsport We Build Excitement',  registered as a business name in the State of New South Wales.  Mr Simikic provides brief history of the activities of the business which had involved the construction of high performance racing cars and also the retail sale of motor vehicle components, accessories and spare parts.  In an exhibit to his declaration, Mr Simikic shows a trade mark adopted by the business.  In a further exhibit, that mark is purported to be displayed on a sign painted onto a vehicle.  As evidence of advertising under the adopted mark, Mr Simikic shows mail order advertisements from two magazines.  He lists the names of a number of magazines, which, he says, carry similar advertisements and are circulated throughout Australia.  He also provides approximate sales and advertising figures for the years 1995 to 1997 relating to the mark used by the partners' business. 

The evidence in answer comprises one statutory declaration by Paul Pasquale Cannata, a director of the applicant company.  From the declarant's statements, supported by exhibits, it appears that the applicant, trading as 'Eagle Auto Parts' had been engaged in the wholesale and retail of parts and accessories for motor vehicles from 16 June 1989 to about 30 May 1994.  Subsequently, the applicant had changed its name and continued to trade under the name 'Eagle Motorsports'.  The declarant refers to a copy of an invoice for acquiring new business cards bearing the new mark.  To support its use, Mr Cannata has annexed to the declaration various exhibits.  Relying on his company's financial statements, Mr Cannata has summarised the approximate annual retail sales value, and also approximate advertising and promotional expenditure since 1989.  

Submissions and analysis
At the outset of the hearing, Mr Willis stated that the opponents intended to rely upon the grounds of opposition concerning ss.58 and 57.  They had decided not to pursue the s.60 ground because of difficulties in obtaining the appropriate evidence to substantiate it. 

Applicant not owner of trade mark - s.58
This ground of opposition stipulates that -

58.  The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

The principles concerning the acquisition of proprietorship, or ownership, of a mark have been explained in Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 at 413 and in Shell Co (Aust) Ltd v Rohm and Haas Co (1949) 78 CLR 601. Thus, a person who can demonstrate first use in Australia of a mark for the purposes of trade, or has applied for its registration, is entitled to claim proprietorship rights of the mark. The proprietorship claim, however, is limited to "the same kind of thing", as pronounced by Holroyd J in Re Hicks' Trade Mark (1897) 22 VLR 636, which approach has been adopted by the High Court, meaning, in essence, that the mark upon which such a claim is based must be the same or substantially identical to the opposed mark and that it has been used for the "same kind "of goods or services.

While, in making the submissions, both parties in the proceedings recognised these well established concepts relating to ownership of a trade mark, obvious differences emerged between their interpretation and application to the trade marks under consideration of what constitutes "the same kind of thing".  Referring to the hearing officer's discussion of the proprietorship question in MPH Publishing (S) Pte Ltd v Ladybird Books Ltd (1997) AIPC 91-316 at 39,282 and his statement that "s.40 [the equivalent under the Trade Marks Act 1955 to s.58 of the present Act] only applies when the trade marks are identical or so similar as to be virtually the same trade mark", Mr Willis said that, in the present case, it was necessary to focus on the core material of the marks and the way the marks would be referred to and recollected by the consumers.  The opponents conceded that they had used a number of different forms of the marks, as had the applicant.  It was the opponents' position, Mr Willis continued, that the only distinctive element in the trade marks was the word "eagle", the other elements being of no substance, i.e. the eagle device was considered not to add anything in particular to the meaning of the mark, but was merely a recapitulation of the word "eagle" and the words "Motorsports" and "Performance" were simply non-distinctive additions to the marks.  The consumers would simply refer to these marks as the "eagle" trade marks.  If consideration was given to what was clearly non-distinctive material, Mr Willis submitted, it would mean a blatant misappropriation of trade marks by others, just by embellishing them with non-substantial material.  The opponent believed that nothing could be deduced from the inconsistent usage of the various marks.  There were some trade mark users who did not have a particularly clear concept of what a trade mark was, as a matter of law, and therefore they did not ensure totally uniform modes of its use.  If the evidence showed use of a consistent form of a trade mark over a certain period of time, it did not matter if the mark was changed over the period, Mr Willis said. 

Mr Willis also made the comment that the present dispute was between two parties using exactly the same trade mark and, while one was attempting to resolve that dispute in its favour by obtaining registration of the mark, the other one, presumably, intended to use the registration as means of deciding the dispute between the parties.  It was the fundamental position of the opponent that no one should be registered as the mark's owner in Australia. 

With reference to the various forms of use of the opponents' marks, Mr Bartlett submitted that, according to the evidence, there were as many as nine different marks used by the opponents.  On careful analysis of these marks, he had come to the conclusion that, although two of those marks were close to the opposed mark and could almost be substantially identical in comparison, those marks were not "the same kind of thing", as per Holroyd J.  In this regard, he relied on Innes v Lincoln Motor Co (1921) 29 CLR 277 at 281, where the High Court had stated that "nearly identical" meant that the parties were claiming " the same thing or things so alike they may rightly be called the same thing". Pointing to and discussing what he saw as the many inconsistencies and, largely, lack of factual material in Mr Simikic's declaration in relation to use of these marks, Mr Bartlett asserted that the evidence was completely unreliable.

Turning first to Mr Kirk's statutory declaration for verification of the applicant's assertions, I note the declarant's business has traded under four various names, none of which is the same or even very closely resembling the applicant's mark.  Three of these comprise the words 'Eagle Spares', 'Eagle Auto Spares', 'Eagle Performance Wholesale', while the mark displayed in the advertisement, annexed to his declaration as an exhibit, is a device mark embodying the words "Eagle Performance Wholesale" and what appears to be head of an eagle against portion of the national flag of the United States of America.  No evidence has been made available as to first use of any  of these marks.  Mr Kirk's declaration therefore may assist in showing that a person, who is not here the opponent, has used the word "eagle" and a device of eagle's head in the course of selling motor vehicle spare parts, but it does not establish use by him of any mark which is the same or virtually the same as that of the applicant.  

Although the opponents' business, as stated in Mr Simikic's declaration, was involved in the trading of motor vehicle parts from early 1990's, the opponents have not been able to substantiate these sales by providing documentary evidence.  Mr Simikic makes reference to first major promotion of a device mark comprising head of an eagle with the words "Eagle Motorsport" in a border resembling a parallelogram with rounded top left hand corner.  As the copy of the photograph, which is said to illustrate this mark painted on a vehicle, is of such poor quality that it is impossible to detect the mark thereon, no weight can be appropriated to this evidence.  Moreover, corroborating evidence would be required to support the statement that the photograph dates back to "approximately March 1989". 

Moving on to the opponents' other evidence, nothing conclusive as to use of the mark or marks can be gleaned from the exhibit containing an article on the opening of the opponents' new store in Minto, New South Wales, in April 1995, which, inter alia, informs the public that the opponent offers mail order parts of motor vehicles.  The only evidence which assists the opponents' allegation relating to any use of marks, which may be relevant for the purpose, is found in copies of two magazine advertisements inviting mail orders for various vehicle parts.

It has been established in precedent case law that, if an advertisement serves the purpose of offering to trade the goods under the mark, then that act in itself is sufficient to prove use of the mark in the course of trade - "Hermes" Trade Mark [1982] RPC 425 at 430 and Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) CLR 414 at 433-434. The advertisement in Dragster Australia of 7 July 1995 shows, in a border which could be described as a parallelogram with a rounded corner, the head of an eagle accompanied by the word EAGLE in heavy block letters and the word MOTORSPORTS rendered in much smaller letters underneath the word EAGLE.  Behind these elements in the mark is present what appears to be a partially obscured dark shape of a parallelogram containing the words WE BUILD EXCITEMENT!  The copy of the mark in the remaining exhibit from the Street Machine dated April - May 1995 displays a different mark: the parallelogram has been omitted and stylized lettering is now used to represent the word MOTORSPORTS.  It is this version of the opponent's mark which is the closest in appearance to the mark of the present application. 

In Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1995) 31 IPR 375, Gummow J, giving consideration to the meaning of substantially identical marks in relation to conflicting proprietorship claims, said at 391:

When the decision [Shell Co (Aust) Ltd v Rohm and Haas Co (1949) 78 CLR 601] 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. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.
…
In the present case there would, in my view, be no material distinction to be drawn between "Fun Ship" and "Funship" or between the addition of the definite article or the use of the plural.  However, FUN SHIP is for this purpose a substantially different trade mark to SITMAR'S FUNSHIP and FAIRSTAR THE FUNSHIP.

In light of his Honour's directives and focussing on the total impression of similarity between the opponents' mark advertised in the Street Machine magazine, supra, and the mark now being opposed, when the marks are compared side by side, I find these marks to be substantially identical.  Both marks essentially consist of the same elements: the word EAGLE in large sloping capital letters, the word MOTORSPORTS in stylized letters and an eagle's head, all enclosed in a similar border device.  I do no think the different position of the eagle's head, i.e. forming part of the letter" A" in the word EAGLE in the applicant's mark, as opposed to it being located on the left of the initial letter "E" of the word EAGLE and in contrasting colour in the opponent's mark, does in any way substantially alter the material particulars of the marks' composition.  However, if this mark has been exposed to the members of the public before its insertion as an advertisement in the April - May 1995 issue of the Street Machine magazine, then the opponents have failed to provide the relevant evidence.  While this evidence is scanty and more substantial material would be required by way of orders or invoices, at least the opponent has demonstrated first use of this mark in respect of motor vehicle part sales in April 1995.  This is further substantiated by the provided approximate amounts representing advertising and promotion of the mark, as well as estimated turnover figures for the vehicle parts since the financial year ending 1995. 

According to Mr Cannata's declaration, the applicant traded under the name 'Eagle Auto Parts' before changing it to 'Eagle Motorsports' in June 1994.  In support of its mark's use before the filing of the present application, or use of the mark by the opponents, the declarant refers to copies of the various orders and invoices concerning advertising space, advertisements of the mark, invoices of creditors, material concerning Automotive Equipment Expo in 1995 and pages from cash receipt books.  Annual retail sales figures and approximate advertising and promotional expenditure since June 1994 have also been included in his declaration.  While some material in these exhibits does not establish direct relationship with the subject mark, it appears that the mark in the form applied for was inserted in the magazine Dragster Australia of 6 January 1995 and was displayed on an invitation to the Automotive Equipment Expo held from 13 to 15 June 1995 in Adelaide.  The advertisement in the said magazine, accompanied by an invoice, clearly displays the subject mark, listing a number of motor vehicle components, which are offered for sale by the applicant.  Advertisements in Performance Street Car, dated December - January 1995, and Live to Ride of 12 December 1994, also show marks which, considering their overall similar impact, are substantially identical to the opposed mark.  Mr Cannata's claim that the copies of cash receipt books for motor vehicle parts and accessories show use of the mark is not borne out, as it is the applicant's business name stamped thereon.  The copies do not show anywhere the mark in the form the applicant has applied to register.  However, these exhibits are important in supporting the applicant's contention that it provided the relevant services under its business name 'Eagle Motor Sports' as early as June 1994.  While the copy of an invoice of 9 June 1994 in relation to the applicant's new business cards, together with the actual samples of the cards, demonstrates that such cards bearing the subject trade mark were ordered and, presumably, were supplied to the applicant, there is no indication as to how, and to what extent, these cards were utilized so as to prove use of the mark in the course of trade. 

From the applicant's evidence, it is impossible to conclude the exact date of first use of its trade mark.  However, relying on the magazine advertisements displaying the mark the applicant proposes to register, or one substantially identical to it, in relation to sales of motor vehicle parts and accessories, it can be determined that first use of the mark occurred in December 1994 or, at the latest, in January 1995.

Applying the principle expounded in Seven Up Co v O.T. Ltd 109 CLR 407, Aston v Harlee Manufacturing Co (1960) 103 CLR 391 and Moorgate Tobacco v Philip Morris, supra, that a very small amount of use of a foreign mark in Australia would suffice to establish the status of ownership of a mark in Australia, and that use has occurred before the opponents have shown to have commenced use of their mark in respect of the relevant services, I consider that the applicant's evidence, in the form of advertising the mark for the purpose of soliciting trade, establishes ownership rights in the mark of the present application.  In reaching this conclusion I have also taken into account the applicant's documentary evidence comprising the cash receipt copies which identify first sales of the motor vehicle products on 24 June 1994 under the applicant's business name 'Eagle Motor Sports'.  Put simply, it would appear that the applicant was the first to use its mark.  

Having regard to my findings then, the opponents' evidence has failed to upset the applicant's claim to ownership of the mark. 

The mark is not capable of distinguishing the applicant's services
According to Mr Willis, in opposition proceedings, the provisions of s.57 allowed a total re-examination of a mark based on information made available to the Registrar which could alter the position regarding registrability of a mark.  Pursuing the line of argument expressed under the previous ground that the mark was used by more than one party, he said that, if a mark is capable of identifying the services of a number of different persons, then it could not be capable of distinguishing the services of one of them.  In the present case, he submitted, three parties were involved in the same business.  It was reasonable to assume that consumers of the relevant products would actually be aware of the operation of their businesses, because they were advertised in the same magazines and for the same kind of services.  This situation needed an investigation to decide whether the mark was capable of distinguishing.

By referring to Anheuser-Busch Inc v Castlebrae Pty Ltd & Ors (1991) AIPC 90-840, Mr Willis submitted that the cited case would be an authority for the proposition that a trade mark is not capable of distinguishing the goods or services of one person, who claims to be the owner of the mark, if it is widely known that the trade mark distinguishes the goods or services of another. In the present case, from the factual situation it was quite impossible to conclude that the trade mark, in its essential features, was capable of distinguishing the services from the rest, except perhaps within the context of the state of origin of the traders, given each of the three traders operated in a different state. If it were possible to sequester the statutory rights obtained by each to the specific state where the persons conducted their business under a substantially identical mark, then the first to obtain registration of the mark would not be able to use infringement proceedings in an unfair way against the other two to stop their trading.

In relation to this issue, Mr Bartlett took the view that considerations of the relevant ground did not go to the prior rights of others, but only addressed the inherent registrability of the mark.  He pointed out that rights of earlier registered marks were determined under section 44 which had not been raised as a ground in the present opposition. 

Section 57 of the Act states that -

57.  The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under Division 2 of Part 4, except the ground that the trade mark cannot be represented graphically.

The section upon which the opponents have chosen to rely in this regard is section 41 which, as far as it relates to the present mark, provides that -

41.(2)   An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

41.(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.

Looking at the applicant's mark, neither the dominant and striking feature in the applicant's mark, the word EAGLE, nor the device of an eagle which is so uniquely incorporated in the letter "A" of that word, has any relation to the services as nominated in the present application.  It is only the subordinate word MOTORSPORTS to which can be ascribed a descriptive meaning in the context.  The mark, viewed as a whole, therefore is capable of distinguishing within the meaning of s.41.  No evidence has been placed before me to convince me of a contrary view.  Moreover, the evidence in these proceedings does not sustain the proposition that the same mark or one almost the same identifies the services of a number of different persons, as submitted by Mr Willis. 

I do not think the circumstances which led Davies J in Anheuser-Busch v Castlebrae, supra, to conclude that the registered marks in question were to be expunged, because they were not capable of distinguishing, could be adopted as basis for considering here the s.41 ground of opposition.  In that case, as I read it, the evidence showed that a character that had become a "cult figure", which featured in the registered marks, was recognised as having been developed and used in association with another party's product.  This product had become popular in Australia.  It was also shown that the drawings and names in the marks were in breach of copyright of which the other party was the owner.  In addition, it was apparent that, by the act of registering the marks, deliberate advantage had been taken so as to obtain benefit of the notoriety or fame the character had achieved in its country of origin.  It seems to me that none of these considerations are applicable in the present proceedings.   

Accordingly, the opponents have failed in relation to this ground of opposition. 

Conclusion
I have found that the opponents have not been successful in relation to any of the grounds upon which they  relied in the notice of opposition.  Consequently, I dismiss the opposition.  It follows that, subject to any appeal from this decision, the application should now proceed to registration. 

Costs
The applicant is the successful party.  I see no reason why costs should not follow the result.  I therefore order that the opponents pay the applicant's costs. 

Vija Zars
Hearing Officer

25 August 1999