Jurgen August Robert Oehlschlager v Landcare Australia Limited

[1993] ATMO 64

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by JURGEN AUGUST ROBERT OEHLSCHLAGER to Applications under s23 to Remove Registered Trade Marks Nos A389815, A430752 and A450560

Applications to remove registered trade marks A389815, A430752 and A450560 from the Register pursuant to the provisions of s23 of the Act were lodged on 13 February 1992 in the name of LANDCARE AUSTRALIA LIMITED ("the applicant"). These applications were opposed by the registered proprietor of the trade marks JURGEN AUGUST ROBERT OEHLSCHLAGER ("the opponent"), as provided by reg 22, by notice of opposition given on 9 June 1992.

Trade marks A389815 and A430752 are registered in respect of all of the goods formerly included in Class 16 of the Fourth Schedule to the Trade Marks Regulations, namely:

Paper and paper articles, cardboard and cardboard articles; printed matter, newspapers and periodicals, books; bookbinding material; photographs; stationery, adhesive materials (stationery); artists' materials, paint brushes; typewriters and office requisites (other than furniture); instructional and teaching material (other than apparatus); playing cards; (printers') type and cliches (stereotype)

Trade mark A450560 is registered in respect of Class 16 as presently specified in the Schedule, that is:

Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks

A representation of the three trade marks is included at Annexure 1.

The applications for removal recited the following provisions of s23(1) of the Act:

(a) that the trade mark was registered without an intention in good faith on the part of the applicant for registration that it should be used in relation to those goods or services by him... and that there has, in fact, been no use in good faith of the trade mark in relation to those goods or services by the registered proprietor or a registered user of the trade mark for the time being earlier than 1 month before the application;

(b) that, up to 1 month before the date of the application, a continuous period of not less than 3 years had elapsed during which the trade mark was a registered trade mark and during which there was no use in good faith of the trade mark in relation to those goods or services by the registered proprietor or a registered user of the trade mark for the time being.

"Those goods" refers to all the goods in respect of which the trade marks are registered. The relevant three-year period for the purposes of  para (b) above is 13 January 1989 to 13 January 1992.

Mr Oehlschlager lodged notices of opposition to all three of the applications on 9 June 1992. The grounds of opposition were the same, namely:

The Mark has been constantly in use by me since I designed it. I have never stopped using the Mark. Landcare Australia Limited has no permission from me to use my Mark.

My mark is and has always been in use in respect of all goods under which it is registered.

Service of evidence by the parties was completed on 30 December 1992 and on the same date the agents for the applicant requested that the matters be set down for hearing which took place in Canberra on 25 March 1993. Mrs Annette Freeman, legal practitioner, of Spruson & Ferguson, patent attorneys, appeared for the applicant. The opponent was not represented.

the evidence

At this point I will summarise the evidence of the parties.

The applicant submitted 25 declarations from persons in the stationery and related trades, in questionnaire form, in which after establishing their occupations and length of experience the declarants went on to answer a number of questions dealing with their familiarity with the trade marks in suit. All of the declarants answered "no" to the question "Have you ever seen any of these three trade marks in use in relation to such goods in Australia?" (The goods in question, being those in respect of which the marks are registered, had been listed previously and the question was followed by a representation of the three trade marks.)

Mr Oehlschlager submitted a statutory declaration made by himself together with a number of invoices and copies of correspondence with various public figures, including the Prime Minister and Leader of the Opposition at the time, and with community groups. Mr Oehlschlager states that he is the sole proprietor and manager of a business known as Harry Sign and Design in Gawler, South Australia, that he is accredited as a master signcraftsman, screen printer, signwriter and advertising designer and that he has been continuously associated with the above trade since 1962, a period of 30 years.

The applicant's evidence-in-reply consists of a declaration by William Charles Fairbanks, secretary of LANDCARE AUSTRALIA LIMITED, stating that that company is the applicant for registration of a trade mark consisting of the word LANDCARE and device in Class 16 for "all goods in this class" numbered 569862 and lodged on 24 December 1991.

submissions

Mr Oehlschlager's declaration contained a certain amount of argument as well as statement of fact. Mrs Freeman addressed those arguments in her submissions. The declaration made the following assertions in answer to the applicant's trade declarations:

1. That there was no evidence to support the applicant's claim to be a person aggrieved nor any reference in the 25 declarations to such a claim.

1. That there was no reference in the declarations in support to the relevant three-year period of 13 January 1989-13 January 1992.

1. That all the declarations relied on by the applicant should have been made before 13 January 1992, that is, before the end of the non-use period, in order to be considered as declarations that the applicant "relied on" (reg 53(2)) as at the date of application.

1. That the s23 applications refer to "goods" only.

1. That the question contained in the questionnaires/declarations "Do you regard yourself as reasonably familiar with brands and trade marks used in the marketing of the following goods?" gave the false impression that the opponent's trade marks were registered in respect of a service called "marketing" and were misleading the declarants into believing that the trade marks should have appeared on the goods listed in the declarations in Australian retail outlets (the goods listed are those in respect of which the trade marks are registered). Therefore the answers given in the declarations were false and misleading.

1. That since the marks are not registered in respect of any service listed in Schedule 4, Part II of the Trade Mark Regulations the marks need not appear in any particular geographical area of Australia. This is said to be in accordance with Regulation 8(1) and (2) of the Regulations. Therefore the random selection of witnesses from all States of Australia is said to be meaningless and to prove nothing except that the applicant has not "adhered to the very specific reference of "goods" stated in their original applications".

1. That the applicant "is infringing my copyright of my trade marks".

Mrs Freeman's submissions in response to these assertions were as follows:

1. The applicant is a person aggrieved by virtue of the fact that trade marks nos. 430752 and 450560 had been cited as objections to the applicant's applications nos. 568630 and 568636. Also, the three registrations have been used as a basis of opposition to the applicant's application no. 537068.

1. All the declarations comprising the applicant's evidence-in-support are from persons who attest to at least four years' continuous knowledge of the trade up until the time the declarations were signed. In all cases this covers the relevant three-year non-use period.

1. There is nothing in the Act or Regulations which requires that declarations should be dated on or before the end of the relevant non-use period.

1. This does not seem to be making a point which needs to be answered by the s23 applicant.

1. The declarations simply request the declarants to state factually whether they have ever seen the trade marks on certain goods in Australian retail outlets. The questions and answers are not "false and misleading".

1. The purpose of seeking evidence from throughout Australia is simply because if the registered proprietor is able to show use in a restricted geographical area the Registrar has a discretion to limit the registration to that area.

1. The present s23 applications are not the correct forum for the assertion of a copyright claim nor is the hearing officer in a position to make any decision on that aspect.

Mr Oehlschlager also states in his declaration that during the period 13/1/89 to 13/1/92 he used the trade marks on "drawings, bromides, signs, posters, photocopies, knitted jumpers, T-shirts, stickers, letterheads, envelope stickers and a number of Flags and on my vehicle. Also on Christmas cards and silkscreens."

In response to this Mrs Freeman submitted that there was no evidence that the trade marks had been used by the opponent in connection with any of those goods in the course of trade and that in making that assertion the opponent was not aware of the meaning of "use" in relation to Class 16 goods required to support his trade marks.

decision

The applicant has a number of applications for the registration of a trade mark in various classes against which the opponent's trade marks nos. 430752 and 450560 have been cited as objections under s33 of the Act on the grounds that the applicant's trade mark is substantially identical with or deceptively similar to the opponent's trade marks. This in itself would make the applicant for removal a person aggrieved by the registration of those two trade marks at least. Thus, in Continental Liqueurs Proprietary Limited v G.F.Heublein and Bro. Incorporated 103 CLR 422 Kitto J. said, at 428:

The applicant has applied for registration of three trade marks consisting of or containing the word "Smirnoff" and the examiner has made adverse reports under s33(2) on the ground, amongst others, that each of the three proposed marks so closely resembles the respondent's mark as to be likely to deceive. This would suffice even by itself to give the applicant a locus standi: cf. Batt's Case.

The opponent's three trade marks have also been used as the basis of opposition to application no. 537068 in the name of the applicant for removal. This, together with the s23 applicant's applications for the registration of a deceptively similar mark in various Classes would seem to give the removal applicant a "real interest" in having the opponent's mark removed from the Register, in the words of McLelland J in Ritz Hotel Ltd v Charles of the Ritz & Anor (1988) 12 IPR 417, where he said, at 454:

Meaning of "person aggrieved"

"The meaning of the expression "person aggrieved" in legislation cognate with ss 22(1) and 23(1) of the Act has been the subject of consideration in numerous cases, the reconciliation of which I do not propose to attempt, even if it were thought possible.  Decisions of high authority appear to me to establish that the expression has no special or technical meaning and is to be liberally construed:  see Attorney-General (NSW) v Brewery Employes Union of NSW (1908) 6 CLR 469; WilliamPowell (trading as Goodall, Backhouse & Co) v Birmingham Vinegar Brewery Co Ltd [1894] AC 8; "Daiquiri Rum" Trade Mark [1969] RPC 600; Crean & Co v Dobbs & CO [1930] 3 DLR 22. It is sufficient for present purposes to hold that the expression would embrace any person having a real interest in having the register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus 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, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed. In my opinion the concept does not admit of further refinement. In deference to a submission by the defendants based on, inter alia, "Consort" Trade Mark [1980] RPC 160 at 166, I would merely add that in my view there is no legitimate basis for introducing into the concept of "person aggrieved" for the purposes of ss 22(1) or 23(1) any restriction based on the conditions required to be fulfilled by an applicant for registration of a trade mark. I reject the defendants' submission that "the plaintiff must show a trade rivalry by demonstrating that it is either in trade or has a fixed and present intention to enter trade in Australia in goods sufficiently similar to those covered in Classes 3 and 26 as to be likely to cause confusion". In the present case the question whether the plaintiff is a person aggrieved in relation to any of the claims made in the proceedings has no necessary relationship to the question whether the plaintiff could itself successfully apply for registration of any of the subject marks: for example, see Re Riviere's Trade Mark (1884) 26 Ch D 48; Re Trade Mark of La Societe Anonyme des Verreries de L'Etoile (1984) 11 RPC 142; Pink v J A Sharwood & Co Ltd (1913) 30 RPC 725.

It is well established that the onus of proof of the non-use of a trade mark rests with the applicant for removal: Estex Clothing Manufacturers Pty Limited v Ellis & Goldstein Limited (1967) 116 CLR 254 per Windeyer J at 258:

"It is for the applicant who seeks to have a mark removed to prove his case. The onus is on him to show an absence of use in good faith during the period. ...slight evidence may suffice at this stage, for the applicant has the task of proving a negative ...but ...when all the evidence is complete, the question is still, has the applicant proved his case?"

The applicant's evidence in support of its application for removal consists of 25 declarations from persons in trades related to the relevant goods, such as wholesale and retail stationery, bookselling and publishing and art supplies and framing. They are persons with experience ranging from 4 to 32 years in their respective trades with an average length of experience of more than 14 years and holding responsible positions in those trades. The evidence is drawn from all six States  and both territories of Australia. Although the declarations do not refer specifically to the relevant three-year period all the declarants held their positions during the whole of that period and declare that they had never seen the trade marks in use in relation to any Class 16 goods. This is just the sort of evidence referred to by Windeyer J in the Estex case supra:           

It is for the applicant who seeks to have a mark removed to prove his case.  The onus is on him to show an absence of use in good faith during the period.  If persons who, by reason of their connexion with the relevant trade, might be expected to have seen or heard of the mark if it were used as a trade mark upon goods for which it is registered, swear that they had not seen or heard of it in use as a trade mark at any time during the relevant period, that is prima facie evidence of the fact which the applicant must prove.  Slight evidence may suffice at this stage, for the applicant has the task of proving a negative and the registered proprietor is probably in a better position to prove user than is the applicant to prove non‑user.

On the basis of the evidence submitted in this case it seems to me that the applicant for removal has at least made out a prima facie case of non-use of the trade marks during the relevant period and has therfore shifted the onus of proving use onto the opponent. Mr Oehlschlager's criticisms of the evidence appear to be based on a misunderstanding of the issues involved. As I have already said, the entire three-year period is covered by all the declarations. There is no requirement that the declarations relied on by a s23 applicant should contain a claim to be a person aggrieved. That is something the applicant must establish to the tribunal's satisfaction. Nor is there any requirement that declarations relied on by a s23 applicant should predate the lodgment of the application. I do not believe that the question "Do you regard yourself as reasonably familiar with the brands and trade marks used in the marketing of any of the following goods" gives the false impression that the trade marks are registered in respect of a service called "marketing". As to the questions "misleading" the declarants "into believing my trade marks should appear on the goods listed from (a) to (f) in Australian outlets", that the trade marks were or were not used in the course of trade in relation to those particular goods is precisely the point at issue in these proceedings and the question therefore quite legitimate. Mr Oehlschlager's submission numbered 4) above appears to be related to that numbered 6) and to be a reference to the fact that whereas reg 8(2) requires an applicant for registration of a trade mark in respect of services to furnish to the Registrar a statement that the applicant uses or proposes to use the mark in relation to the specified services and the geographical area in which he proposes to use the trade mark there is no mention of the geographical area of use in reg8(1) in relation to an application for registration in respect of goods. But the reason for requiring such a statement in relation to services is that services are commonly restricted to local geographical areas and it may therefore be appropriate to limit the registration of a trade mark in respect of services to a geographical area rather than grant registration for the whole of Australia thereby depriving traders in other parts of Australia of the use of the same or a similar mark. Such a limitation is not often appropriate in respect of goods which may be readily dispatched to any part of the country. The purpose of drawing evidence from all over Australia is, as Mrs Freeman pointed out, that in order to remove the mark entirely it is necessary for the applicant to show non-use throughout Australia and not only in certain parts because the Registrar has a discretion to partially remove the mark in respect of certain geographical areas. The selection of witnesses from around Australia was not therefore meaningless but designed to show non-use throughout Australia.

I have said that, the applicant for removal having made out a prima facie case of non-use of the trade marks the evidentiary onus of proving use shifted to the opponent. There is no evidence whatever that Mr Oehlschlager has ever carried on a trade in any of the goods in respect of which the trade marks are registered. Section 23(1)(b) refers to a continuous period of not less than three years "during which there was no use in good faith of the trade mark in relation to those goods or services by the registered proprietor...". Section 6(1) defines "trade mark" as:

"... a mark used or proposed to be used in relation to goods or services for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods or services and a person who has the right, either as proprietor or as registered user, to use the mark..."

It is clear from this definition that a trade mark must be used "in the course of trade", that is, there must be some form of commercial dealing in relation to goods or services in respect of which the trade mark is registered. As Lord Wright said, in Aristoc Ltd. v Rysta Ltd (1945) 62 RPC 65, at 83: "The proprietor is required to be a trader who places the goods before the public as being his goods".

What constitutes a connection in the course of trade for establishing use of a mark in Australia was discussed by the High Court in Moorgate Tobacco v Philip Morris 3 IPR 545 at 557:

The court was referred to a large number of cases and to some administrative decisions in which consideration has been given to what constitutes a use or user of a trade mark for the purposes of the statutory notion of proprietorship of the mark before registration.  The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark.  It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark (Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd, supra, at 204‑5) or that the mark has been used in an advertisement of the goods in the course of trade (Shell Co of Australia v Esso Standard Oil (Australia) Ltd, supra, at 422).  In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade.

In order to establish use in the relevant sense then it must be possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade.  In the Moorgate case the Court found that there had been no actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade.

Shanahan in Australian Law of Trade Marks and Passing Off 2nd ed. says, at p33:

There must be trade in the particular goods or services for which the use is to be established, and indeed the inclusion of the words "in the course of trade" was recommended by the Goschen Committee to make it clear that the Register is not available to persons who "do not actually trade in or deal with goods, for example, persons concerned in the professions, headmasters or governing bodies of schools and insurance companies.

Thus, the use of a "service mark" on letterheads, bank books, menus and advertising materials has not been regarded as trade mark use in relation to those goods, there being no "trade" in the products in question. However, there may be trade in the services to which such goods are ancillary, and such a mark may now be registered in the appropriate services class.

Mr Oehlschlager carries on a business engaged in, in his own words, "Sign Manufacture and Advertising Design". These are services and use of the marks in connection with those services is not use of the marks in connection with any of the goods in respect of which the marks are registered. The marks do appear on invoices and quotations for the services provided by Mr Oehlschlager but there is no evidence that he has ever provided any goods in connection with the marks. As was said in A.D.D.-70 Trade Mark [1986] RPC 89 (UK Reg), at 91:

It is difficult to imagine that any trade or business could be conducted without some paper goods. This does not mean that such paper goods are the subject of trade between a company and its customers. A publisher may have a mark registered for a specification which includes "printed matter" and he may use his mark on his letterheads, invoices and information leaflets. The use of the mark in this way does not transform those articles into the goods he trades in... Similar articles accompanying the provision of a service cannot be regarded as the subject of trading activities.

Similarly, in AIRCO TM [1977] FSR 485 at 499:

The respondent [an insurance company] is a consumer not a purveyor of paper. The paper is used by the respondent for the purpose for which it was made. The basic process of manufacture and sale is completed when it gets to the respondent which is not purveying paper in competition with those who manufacture and sell it by way of trade any more than the firm of Cadbury when it puts its name on the wrapping round its chocolate.

Apart from the use of the marks on the opponent's letterheads in connection with the provision of signwriting and design services the only other evidence relates to the use of the mark in connection with certain community activities. None of this use is use of the marks in the required sense.

conclusion

It is clear that Mr Oehlschlager has misunderstood the requirements of the Act with regard to the use of trade marks or has been poorly advised. None of the use relied on to defend the registrations from removal for non-use in accordance with the Act is use in the course of trade in the goods in respect of which the marks are registered. Rather, they have been used if at all as ancillary to the provision of services in the course of Mr Oehlschlager's trade as a signwriter and advertising designer and in connection with certain community activities. It may well be that Mr Oehlschlager has a legitimate claim to copyright in the designs of the trade marks but that is a matter for the decision of a court of competent jurisdiction. It is not within the competence of the Registrar of Trade Marks. As the Registrar's delegate in this matter I am concerned only with whether the trade marks have been used in the manner required by the Act during the period prescribed by the Act. I have found that they have not.

As I have found that the applicant for removal has discharged the onus upon it of showing that the marks should be removed and as I have been shown no good reason why I should exercise the Registrar's discretion to refuse to remove the marks from the Register I direct that, if there is no appeal from this decision, trade marks 389815 and 450560 be removed from the Register. Trade mark no. 430752 has in fact already been removed for non-payment of renewal fees which became due on 29 July 1992. However, in accordance with s71 of the Act the mark may be restored to the Register in certain circumstances if the Registrar is satisfied that "it is just so to do". In the case of this mark I direct that if application is made to restore the mark that application is to be refused.

Mrs Freeman made no submissions as to costs and I make no award.

Michael Homann
Hearing Officer

30 July 1993