Jonglea Pty Ltd v Pharaoh Partners Pty Ltd

[2015] ATMO 16

TRADE MARKS ACT 1995

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

Re:Opposition by Jonglea Pty Ltd to registration of trade mark application 1453654(14) - CRISTIANA and UNICORN DEVICES - filed in the name of Pharaoh Partners Pty Ltd.

Delegate:

Claudia Murray

Representation:

Opponent: Ms Beth Oliak of Counsel, instructed by Gregory J Goold, Solicitors.

Applicant: Not represented at hearing, no written submissions.

Decision:

2015 ATMO 16

Section 52 opposition – section 58A ground pressed – opponent’s earlier use of deceptively similar trade mark established – opposition successful - registration refused.

Background

1. Trade mark application number 1453654 was filed by Pharaoh Partners Pty Ltd, (‘the applicant’) on 13 October 2011, for the trade mark:

1. The application covers the following goods in class 14 of the Nice Classification of Goods and Services:

   Articles of imitation jewellery; articles of jewellery; artificial jewellery; beads for making jewellery; boxes for jewellery; brooches (jewellery); cases adapted to contain items of jewellery; chains (jewellery); charms (jewellery); collets being parts of jewellery; containers especially adapted for presentation and display of jewellery or watches; costume jewellery; custom jewellery; decorative articles (trinkets or jewellery) for personal use; decorative brooches (jewellery); decorative pins (jewellery); dress ornaments in the nature of jewellery; ear ornaments in the nature of jewellery; fake jewellery; fashion jewellery; gold jewellery; hair ornaments of precious metal (jewellery); imitation jewellery; imitation jewellery ornaments; items of jewellery; ivory (jewellery); jewellery; jewellery articles; jewellery boxes; jewellery cases (caskets); jewellery cases made of paper coated wood; jewellery chain; jewellery chain of precious metal for anklets; jewellery chain of precious metal for bracelets; jewellery chain of precious metal for necklaces; jewellery coated with precious metal alloys; jewellery coated with precious metals; jewellery containing gold; jewellery fashioned from bronze; jewellery fashioned from non-precious metals; jewellery fashioned of cultured pearls; jewellery fashioned of precious metals; jewellery fashioned of semi-precious stones; jewellery for personal adornment; jewellery for personal wear; jewellery in non-precious metals; jewellery in precious metals; jewellery in semi-precious metals; jewellery in the form of beads; jewellery incorporating diamonds; jewellery incorporating pearls; jewellery incorporating precious stones; jewellery items; jewellery made from gold; jewellery made from silver; jewellery made of bronze; jewellery made of crystal; jewellery made of crystal coated with precious metals; jewellery made of glass; jewellery made of non-precious metal; jewellery made of plated precious metals; jewellery made of precious metals; jewellery made of precious stones; jewellery made of semi-precious materials; jewellery of yellow amber; jewellery ornaments; jewellery plated with precious metals; jewellery products; jewellery rope chain for anklets; jewellery rope chain for bracelets; jewellery rope chain for necklaces; jewellery stones; medallions (jewellery); necklaces (jewellery); ornaments (jewellery); pearls (jewellery); pendants (jewellery); personal jewellery; pewter jewellery; pins (jewellery); pins being jewellery; precious jewellery; ring bands (jewellery); rings (jewellery); semi-finished articles of precious metals for use in the manufacture of jewellery; semi-finished articles of precious stones for use in the manufacture of jewellery; sterling silver jewellery; synthetic stones (jewellery); threads of precious metal (jewellery); trinkets (jewellery); wire of precious metal (jewellery); wrist bands (charity, jewellery); wristlets (jewellery)

2. A ground for rejection under section 44 of the Trade Marks Act 1995 (‘the Act’) was raised against the application during examination. It was based on an earlier trade mark, registration number 1303615, owned by Jonglea Pty Ltd. The applicant’s trade mark was found to be deceptively similar to the earlier trade mark, in respect of the same or similar goods. However, the applicant provided evidence of prior use of its trade mark, in terms of subsection 44(4), which provides an exception to a ground for rejection taken under subsection 44(1). The trade mark was eventually advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 2 May 2013. It was subject to the following endorsement:

   Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

3. Jonglea Pty Ltd (‘the opponent’) filed notice of intention to oppose registration on 26 June 2013. Three grounds of opposition were listed in its statement of grounds and particulars, filed on 25 July 2013. The applicant’s notice of intention to defend was filed on 1 August 2013.

4. Evidence in support and answer was duly filed. On 22 May 2014, the opponent requested a hearing on the matter. I heard the opposition, as a delegate of the Registrar of Trade Marks, on 15 October 2014 in Sydney. Ms Beth Oliak of Counsel, instructed by Gregory J Goold, Solicitors, represented the opponent. Mr Lee Ting, solicitor, from Gregory J Goold and Mr Huai Li, Managing Director of the opponent, were also present. The applicant elected not to provide written submissions, or to be represented at the hearing.

Evidence

1. The evidence in relation to this opposition comprises:

Evidence in support

ØStatutory declaration of Huai Li, with Exhibits HL-1 to HL-12, and Confidential Exhibit HL-1, dated 6 December 2013.

Evidence in answer

ØStatutory declaration of Dawn Kingsbury, with Annexures A to D, dated 1 April 2013.

1. Mr Huai Li is one of the opponent’s two Managing Directors. He explains in his declaration that his company was registered in 1992, and since that time has been engaged in the importation and wholesale of ‘jewellery, homewares and giftwares’. Confidential Exhibit HL-1 to Mr Li’s declaration provides substantial and increasing profit figures for the opponent, over the period 2003 to 2012. Mr Li declares that, as his company has only sold goods marked with the name ‘CHRISTIANA’ since 1998, all of his company’s revenue since that date can be attributed to sales under that trade mark, and all its advertising expenses may be similarly attributed to advertising associated with the trade mark.[1] He declares that the name was originally conceived by him in 1998, and that the scrolls logo used with it was designed by their in-house designer, in January 2004.

   [1] Statutory declaration of Huai Li, dated 6 December 2013, paras 26 and 28.

2. Mr Li also explains in his declaration that, as his company is a wholesaler of imported jewellery and giftware, the overseas manufacturers of its goods attaches the trade mark to those goods and the opponent imports them into this country and sells them on to retailers. It has more than 11,000 customers currently on its database. The evidence demonstrates that the opponent advertises its products in magazines such as ‘Australian Country’, online through its website and by regular attendance at trade fairs. The examples provided of these types of advertising date from September 2004 to November 2013.[2]

   [2] Ibid, Exhibits HL-7 to HL-11.

3. Mr Li gives details of two trade marks applied for by his company. He explains that the first application lapsed because an employee ‘failed to attend to the payment of the registration fee’. The second trade mark went on to registration and is the trade mark that was raised during examination as a citation in terms of section 44 against the trade mark under opposition here. Details of the trade marks are as follows:

TM No.	Filing Date	Class	Status	Trade Mark
989281	12 Feb 2004	14, 20, 35	Lapsed
1303615	11 June 2009	14, 20, 21, 24	Registered

1. When a trade mark is accepted under the provisions of subsection 44(4), as was the case here, a courtesy letter is sent by the examiner to the owner of the cited trade mark, advising them of the acceptance. Mr Li refers to that letter, and the subsequent opposition proceedings commenced by his company, and makes the following observations about the opposed trade mark:

   ·     the registered word is “C Cristiana”, although the letter “C” in the image. is barely visible and is located separately from the word “Cristiana”; and

   ·     the goods and services are in Class 14 and, as described, cover a wide range of different types of jewellery.[3]

   [3] Statutory declaration of Huai Li, dated 6 December 2013, para 10.

2. Ms Dawn Kingsbury is a Director of the applicant. She declares that the name ‘CRISTIANA’ was chosen by her in 2006, being a variation of her mother’s name. She also declares that the opposed trade mark has been used continuously by the applicant since ‘about September 2006’, ‘in connection with jewellery design, manufacturing, marketing and sales’.[4]

   [4] Statutory declaration of Dawn Kingsbury, dated 1 April 2013, paras 2-6.

3. Ms Kingsbury’s declaration provides sales and advertising figures, dating from 2006, relating to ‘products in connection with the trade mark’ and ‘services using the trade mark’.[5] Annexed to the declaration, at Annexure A, are examples of pages from the applicant’s website, which was established in 2006. These show the trade mark in use in conjunction with various items of jewellery. Annexure D shows some examples of newspaper advertising, one of which is dated 30 September 2007.

   [5] Ibid, paras 10-11.

Onus and Grounds of Opposition

1. The onus is upon an opponent to establish one or more grounds of opposition, according to the balance of probabilities.[6]

   [6] Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32]; Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12].

2. In her written submissions and at the hearing, Ms Oliak pressed all three grounds listed in the statement of grounds and particulars. These were: section 44, section 58A and section 60. However, an opponent’s success in relation to a single ground of opposition usually renders unnecessary any further consideration of other grounds pressed, although all grounds of opposition are available to an opponent in the event of an appeal from a delegate’s decision. For reasons that will soon become apparent, I will confine my deliberations to the ground of opposition under section 58A.

Section 58A - opponent’s earlier use of similar trade mark

1. Section 58A provides:

   (1)      This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

   (a)      subsection 44(4); or

   (b)      a similar provision of the regulations made for the purposes of Part 17A.

   Note:    Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

   (2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

   (a)      first used the similar trade mark in respect of:

   (i)           similar goods or closely related services; or

   (ii)          similar services or closely related goods;

   before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

   (b)      has continuously used the similar trade mark in respect of those goods or services since that first use.

   Note:    For predecessor in title see section 6.

2. Section 58A therefore enables the owner of a prior registered (or pending) trade mark to oppose registration of a substantially identical or deceptively similar mark previously accepted for possible registration under the prior use provisions of subsection 44(4). In order to succeed under this ground, the opponent needs to establish that its (continuous) use of its trade mark predates the use of the trade mark which is the subject of the accepted application.

3. Ms Oliak spent some time at the hearing arguing the opponent’s case that the two trade marks at issue were in fact deceptively similar, and also critiquing the applicant’s evidence of use. However, it is not necessary for me to address either of those issues here at any length, in terms of section 58A. It has already been determined, (and I note that this was not disputed by the applicant), by virtue of its acceptance under subsection 44(4), that the opposed trade mark is deceptively similar to the opponent’s trade mark. I agree with the determination made by the examiner. Further, for the purposes of section 58A, it is primarily the opponent’s evidence of use of its trade mark, rather than the applicant’s use of the opposed trade mark, that is to be assessed.

4. Ms Oliak submitted:

   (a) [Section 58A] is only triggered if section 44(4) is found to apply;

   (b) for the reasons set out above in relation to section 44(1), the Applicant TM is substantially identical or deceptively similar to the Opponent TM; and

   (c) for the reasons which follow, the registration of the Applicant TM must be refused under section 58A because the Opponent first used the Opponent TM on similar goods (being jewellery items) before the Applicant allegedly first used the Applicant TM, and that use has been continuous.

   Even assuming that the Applicant’s evidence shows a first and continuous use of the Applicant TM as of September 2006 (which is not admitted), the Opponent’s evidence clearly shows a continuous use of the Opponent TM in relation to jewellery items since 1998.

   More specifically, since 1998:

   (a) the Opponent has directed manufacturers to affix and prominently display the Opponent TM of all of the Opponent’s goods (exemplary photos of those goods have been provided);

   (b) the Opponent TM has been displayed on all of the Opponent’s invoices, order forms, business cards, company letterhead and packaging (examples of which have been provided);

   (c) the Opponent has regularly advertising(sic) its goods in magazines (examples of advertisements from magazines dating from 2005 have been provided);

   (d) the Opponent has operated a website regarding its goods since 2005; and

   (d) the Opponent has participated in the Gifts and Homewares Australia Trade Fair twice a year (copies of brochures from 2004 to present and photos of the stalls as set up from 2005 to present have been provided).

   It is apparent that the Opponent’s evidence is much more reliable than the Applicant’s evidence and should be accepted.

   Accordingly, as there has been earlier use of a similar trade mark on goods which are similar to the Applicant’s goods, the Opponent has established [section 58A].

5. I accept the opponent’s arguments. Mr Li has declared continuous use of the name ‘CHRISTIANA’ since 1998. He has provided income and advertising figures dating from 2003, and examples showing the registered trade mark (That is, the name ‘CHRISTIANA’ together with the scrolls logo) in use on the same, or similar goods to the applicant’s goods, dating from September 2004 to November 2013.[7] The earliest use claimed by the applicant (leaving aside the question of the extent to which that claim is supported by the evidence[8]) is September 2006. Taking all of the above into account, I am persuaded that the opponent has made its case in terms of section 58A.

   [7] Statutory declaration of Huai Li, dated 6 December 2013, Exhibits HL-8 to HL-10.

   [8] I mention here that the applicant’s declaration filed as evidence in answer was the same declaration originally provided when the opposed trade mark was under examination. It could have availed itself, at that point, of the opportunity to provide additional material to support its case under opposition.

6. The provisions of subsection 44(4), which allowed the opposed trade mark to be initially accepted for possible registration, provide a valid exception to grounds for rejection and opposition raised under subsections 44(1) and (2). However, no such exceptions apply within the wording of section 58A. The requirements of section 58A have been met, and the opposition has succeeded under this ground.

Decision and costs

1. Section 55(1) of the Act provides:

   (1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or

   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2. I find here that the opponent has met the onus upon it and has established the ground of opposition argued under section 58A. I therefore refuse to register trade mark number 1453654.

3. The opponent has requested its costs. It is usual for costs to follow the event, and the opponent has succeeded in one of its grounds of opposition. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the trade mark applicant.

Claudia Murray

Hearing Officer

Trade Marks Hearings

12 February 2015