Just Foods Australia Pty Ltd v Just Foods Limited
[2017] ATMO 159
•15 December 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Just Foods Australia Pty Ltd to registration of trade mark application 1753914 in the name of Just Foods Limited
Delegate: | Michael Kirov |
Representation: | Opponent: Simon Casinader of K&L Gates Applicant: No attendance or written submissions |
Decision: | [2017] ATMO 159 Opposition under s 52 of the Trade Marks Act 1995 – s 42(b) considered – use of the trade mark would be contrary to law because it would be in breach of the Copyright Act 1968 – opposition established and registration refused. |
Background
This is an opposition brought by Just Foods Australia Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Just Foods Limited (“the Applicant”):
Application Number: 1753914
Priority Date: 22 January 2016 (based on NZ Application 1035974)
Goods:Class 29: Crushed garlic; garlic paste; preserved garlic; garlic preserves; crushed ginger; preserved ginger; chilli; crushed chilli; preserved vegetables
Class 30: Garlic puree; ginger puree; dressings for food; food dressings (sauces); salad dressings; instant noodles; noodles; simmer sauces; cooking sauces; sauces; breadcrumbs; food pastes; spices
(“the Applicant’s Goods”)
Trade Mark:
(“the Opposed Mark”)
Acceptance of the Opposed Mark for possible registration was advertised in the Australian Official Journal of Trade Marks on 16 June 2016. The Opponent filed a Notice of Intention to Oppose on 16 August 2016, followed by a Statement of Grounds and Particulars (“SGP”) on 16 September 2016. The Applicant filed a Notice of Intention to Defend the application on 18 October 2016.
I heard the matter as a delegate of the Registrar of Trade Marks on 17 October 2017 in Canberra. Simon Casinader of K&L Gates appeared for the Opponent via video link from Melbourne. Mr Casinader’s oral submissions were supplemented by written submissions filed prior to the hearing in accordance with my directions. Peter Allen of Pipers Intellectual Property, the firm representing the Applicant, had earlier advised that the Applicant would not be attending, or be represented at, the hearing and would not be filing any written submissions.
Grounds of Opposition, Onus and Standard of Proof
The SGP lists grounds corresponding to ss 42(b), 58, 60 and 62A of the Act and all were pressed at the hearing. To succeed the Opponent bears the onus of establishing at least one of these four grounds, with the standard of proof required being the ordinary civil standard based on the balance of probabilities.[1] That said, I have only found it necessary to address the s 42(b) ground in this decision, specifically the Opponent’s claim that the Applicant’s use of the Opposed Mark would be in breach of the Copyright Act 1968. Of course should the decision be appealed, it would remain open to the Opponent to plead any ground it considered relevant before the Court.
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26], affirmed by the Full Federal Court (Besanko, Jagot & Edelman JJ) in Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133].
The Relevant Date
The opposed application was filed on 22 February 2016, but claims priority under the Paris Convention from an earlier application filed in New Zealand on 22 January 2016. In Apple Inc. v Registrar of Trade Marks[2] Yates J considered in some detail whether the relevant date for assessing a mark under s 41 of the Act where Convention priority is claimed is the filing date of the application[3] or its earlier priority date.[4] Given s 41(6) as it then stood[5] explicitly specified “the filing date” as the relevant date he concluded that this date must also apply to s 41 generally (and in particular to making assessments under ss 41(3) and 41(5) as they then stood). He was reinforced in that view by the fact that ss 44 and 60, for their part, explicitly specify “the priority date” as the relevant date, concluding (at [50]):
It can be seen from these provisions that when regard is to be had to priority dates for the purpose of determining registrability, the Act expressly says so. The adherence of s 41(6) to the “filing date” shows that it was parliament’s intention that that date be the date for determining factual distinctiveness under that provision.
[2] (2014) 109 IPR 187 at [32]-[59].
[3] As defined in s 6 of the Act.
[4] As defined in s 12 of the Act.
[5] As from 15 October 2013 amendments to s 41 came into force which, inter alia, effectively renumbered its various subsections. Yates J’s reasoning would nevertheless be equally applicable to s 41 as it is now worded.
In the case of s 42(b) neither the filing date nor the priority date is mentioned. While arguably not conforming to Yates J’s analysis, I have nevertheless concluded that the Convention priority date of 22 January 2016 should apply to the Opponent’s s 42(b) ground in the present matter (“the Relevant Date”). As his Honour explains (at [37]-[38]) it is the earlier priority date, rather than the filing date, which becomes “the date of registration,” being the date from which the trade mark owner is able to enjoy and enforce exclusive rights in its mark. It appears to me unlikely parliament would have contemplated the owner being able to enforce such rights at a time when the owner’s own use of the mark might have been “contrary to law.” I note Wilcox J took this view in Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd:[6]
I think that [Counsel] is correct to say that the application of s 42(b) of the Act should be considered as at the priority date, although looking forward to prospective conduct after registration was effected.
[6] (2004) 59 IPR 343 at [47].
I would just add that in the present matter the one month difference between the filing date and the priority date of the opposed application would not have been critical to my below decision on the s 42(b) ground in any event.
The Evidence
Only the Opponent filed evidence, this consisting of a Statutory Declaration by:
▪ Adam Denis Myhal made 11 November 2016, with Annexures AM-1 to AM-8.
Mr Myhal had been the Opponent’s General Manager for around two years at the time of his declaration. He describes the Opponent as “a manufacturer and distributor of premium quality food products in Australia (Opponent’s Goods),” which it sells “through wholesaling…to third party retailers such as Woolworths.” He provides the following evidence of how the Opposed Mark was originally created:
12. In August 2015, the Opponent engaged Eva Marton trading as George is Creative to create a logo for its JUST FOODS brand and Ms Marton created the [Opposed Mark]. Attached and marked AM-1 are copies of emails between Ms Marton and the Opponent regarding the creation of the [Opposed Mark] and Ms Marton’s invoice to the Opponent for this work.
13. It was always the intention of the Opponent and Ms Marton that the Opponent would own copyright in the [Opposed Mark]. On 23 August 2016, Ms Marton executed a deed of assignment of copyright in the [Opposed Mark] in favour of the Opponent. As a result, the Opponent is the owner of copyright in the [Opposed Mark]. Attached and marked AM-2 is a copy of this deed.
I note in passing that clause 2 of the assignment deed shown in attachment AM-2 states, “As and from the date of this deed [23 August 2016], the Assignor [Eva Marton] assigns, transfers, and sets over to the Assignee [the Opponent] any rights she has to damages or injunctive relief that she has as a result of any infringement of her intellectual property rights in the [Opposed Mark] prior to the date of this deed.”
Mr Myhal describes the Opponent’s use of the Opposed Mark as follows:
14. The Opponent’s first incidence of use of the [Opposed Mark] in Australia for the Opponent’s Goods was in Sydney, Australia on 17 November 2015 when the [Opposed Mark] was used in a sales presentation pitch to Woolworths for an instant noodle product on the packaging of the product and throughout the presentation slides.
15. Since 17 November 2015, the Opponent has continuously used the [Opposed Mark] for the Opponent’s Goods throughout Australia by way of the following examples:
(a) on the Opponent’s Goods since at least 13 September 2015. Attached and marked AM-3 are photographs of the Opponent’s Goods featuring the [Opposed Mark] prominently;
(b) on the Opponent’s website located at domain name just-foods.com.au since at least April 2016. Attached and marked AM-4 is a current printout from the Opponent’s Website featuring the [Opposed Mark] prominently;
(c) on the Opponent’s Facebook page located at website Just-Foods-Australia-36357 4590400924/ since at least 4 May 2016. Attached and marked AM-5 is a current printout from the Opponent’s Facebook Page featuring the [Opposed Mark] prominently; and on the Opponent’s invoices for the Opponent’s Goods since at least April 2016. Attached and marked AM-6 is a redacted version of one such invoice.
Mr Myhal also provides confidential figures for the value of the Opponent’s sales of goods “under or by reference to the [Opposed Mark] from 7 April 2016 until 3 November 2016.” While not relevant to my decision, I note that, as with the Opponent’s website and Facebook page mentioned above, these figures post-date the Relevant Date.
As to the relationship between the Applicant and the Opponent, Mr Myhal says:
17. The Applicant and the Opponent have previously been involved in a business arrangement but this has since concluded.
18. At the time the [Opposed Mark] was commissioned and adopted by the Opponent, the Opponent had no knowledge of the Applicant selling the Applicant’s Goods in Australia. To date, I am still unaware of instances where the Applicant has sold the Applicant’s Goods in Australia.
19. The Opponent commenced use of the [Opposed Mark] on 17 November 2015, which predates the [Relevant] Date. The Opponent has continuously used the [Opposed Mark] in Australia since this time.
Mr Myhal concludes by referring to an exchange of correspondence in September 2016 between the parties’ solicitors. This commences with an open letter of demand from K&L Gates setting out details of the Opponent’s claim to ownership of the copyright in the Opposed Mark and requesting, inter alia, that the opposed application be withdrawn (“the Letter”). Mr Myhal attaches copies of the Letter, of the Applicant’s attorneys’ response (“the Response”) and of a second letter then sent by K&L Gates (“the Second Letter”). In brief, the Response on the face of it concedes that the Opponent is the legal owner of the copyright in the Opposed Mark because it requests, inter alia, that the Opponent assign it to the Applicant. While the Response also canvasses various other issues between the parties, these are not relevant to my decision and it is not necessary to detail them here. I would only add that the claims made on the Applicant’s behalf in the Response are not supported by any evidence before me and that they are denied by the Opponent in the Second Letter.
I move on now to discuss the s 42(b) ground of opposition.
Discussion
Section 42(b)
Section 42(b) is set out below:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(b) its use would be contrary to law.
The ground based on s 42(b) is particularised in the SGP as follows:
The use of the [Opposed] Mark by the [A]pplicant is contrary to law as it constitutes breaches of ss 36, 37 and 38 of the Copyright Act 1968 (Cth) and ss 18 & 29(1)(a) of the [Australian Consumer Law (“the ACL”)]. The Opponent is the owner of copyright in the [Opposed Mark] and has used [it] in Australia with respect of [sic] a range of its food products since September 2015 such that use of the [Opposed] Mark amounts to copyright infringement and breaches of the ACL.
While the s 42(b) ground thus has two bases, I will only address the stronger of the two here, being the claim that use of the Opposed Mark would be in breach of the Copyright Act 1968 (“the CA”). The SGP alleges ss 36, 37 and 38 of the CA would all be breached but it is sufficient in this case to concentrate on s 36 in particular,[7] this being set out below:
[7] As s 36(2) indicates, s 36 is of more generality than the following three sections of the CA.
Infringement by doing acts comprised in the copyright
(1) Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright.
(1A) In determining, for the purposes of subsection (1), whether or not a person has authorised the doing in Australia of any act comprised in the copyright in a work, without the licence of the owner of the copyright, the matters that must be taken into account include the following:
(a) the extent (if any) of the person's power to prevent the doing of the act concerned;
(b) the nature of any relationship existing between the person and the person who did the act concerned;
(c) whether the person took any reasonable steps to prevent or avoid the doing of the act, including whether the person complied with any relevant industry codes of practice.
(2) The next three succeeding sections do not affect the generality of this section.
In his submissions on the copyright issue Mr Casinader focused on the decision of Madgwick J in Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd[8] (“Advantage”) and my own in Warner Bros. Entertainment Inc. v Rex Dubai LLC[9] (“Central Perk”). I agree with him that Madgwick J provides particularly helpful guidance in assessing copyright claims. As I noted in Central Perk, his Honour succinctly summarized the relevant matters to be considered at [16]-[20] of Advantage:
[16] Section 32(1) of the Copyright Act provides that “copyright subsists in an original literary, dramatic, musical or artistic work that is unpublished and of which the author was a qualified person at the time when the work was made”. A qualified person is defined in s 32(4) as an Australian citizen, an Australian protected person or a person resident in Australia. …
[17] It was submitted by counsel for the applicant that the applicant’s trade mark is an “artistic work”. An artistic work is defined in s 10(1)(a) of the Copyright Act to include a drawing whether it is of artistic quality or not. Although the applicant’s trade mark is not what one would consider to be particularly artistic and uses common words, the authorities are clear that the threshold for what is an artistic work is low and, for copyright to subsist, the work does not need to be remarkably artistic: see Re Karo Step Trade Mark [1977] RPC 255 per Whitford J at 273; British Northrop Ltd v Texteam Blackburn Ltd [1974] RPC 57 per Megarry J at 68–9; Roland Corp v Lorenzo & Sons Pty Ltd (1991) 33 FCR 111 at 114 ; 22 IPR 245 at 249 per Pincus J.
[18] The next requirement for copyright to subsist in an artistic work is that the mark must be original. The concept of originality is also not a particularly rigorous one. What is required is that the creator of the work should not have copied it from some other work: see University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 608–10; (1916) 1B IPR 186 at 191, and Victoria Park Racing & Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 at 511; 1A IPR 308 at 320 per Dixon J. The evidence of Ms Kich was that she alone created the applicant’s trade mark as an original work.
[19] Although, in contested copyright cases in this court, whether or not a device such as the applicant’s mark is in fact an artistic work and original could be debated, this is not such a case and there was no evidence presented to the court to contest the applicant's claim that its trade mark is an artistic work, or the evidence of Ms Kich as to her creation of the trade mark. Accordingly, I am prepared to accept that the applicant’s trade mark is an artistic work and is original for the purposes of the Copyright Act and that, therefore, copyright subsists in the applicant’s trade mark. Whether or not the owner of the copyright is the applicant, as a result of an oral agreement between the applicant and Kich & Company (the advertising company that designed the mark), as was said to be the case by Ms Kich in her evidence, or Kich & Company, is not an issue that needs to be determined in these proceedings. Whichever of those two entities owns the copyright, the evidence is that neither has licensed the respondent to use the work.
[20] Section 36 of the Copyright Act provides that the copyright in an artistic work is infringed if a person, who is not the owner of the copyright, does any act comprised in the copyright without the licence of the owner. Section 14 deems acts done in relation to a substantial part of the work to be done in relation to the whole of the work. Section 31(1)(b) provides that copyright in an artistic work gives the owner the exclusive right, among other things, to reproduce the work in a material form (subpara (i)) and to publish the work (subpara (ii)). In my opinion, on the evidence presented, the first respondent’s mark is reproduction of a substantial part of the applicant’s trade mark, namely the use of a white five point star cut into a dark mass so as to form a stylised block letter “A”, with the word “ADVANTAGE” in bold capitals directly beneath the “A”: see the judgment of Lehane J in Australian Home Loans (t/as Aussie Home Loans) v Phillips (1998) 40 IPR 392 where a rather less similar mark was held to be a reproduction. Furthermore, as counsel for the applicant correctly submits, use by the respondent of its trade mark would necessarily involve publishing it, which is the exclusive right of the copyright owner.
[8] (2001) 52 IPR 24.
[9] [2008] ATMO 78.
I have already described the uncontested evidence of Mr Myhal. I accept, as Mr Casander submitted, that his evidence makes out a strong prima facie case on the issue of copyright which demands a response from the Applicant. In the absence of any response I consider the Opponent’s s 42(b) ground based on potential breach of the CA is accordingly established. In particular and in terms of Madgwick J’s discussion in Advantage quoted above I am satisfied on the evidence before me that:
The Opponent engaged a graphic designer (Eva Marton trading as “George is Creative,” based in Melbourne) in August 2015 to create what is now the Opposed Mark;
Ms Marton did so and emailed the final version of the design to the Opponent on or about 31 August 2015;
Ms Marton was a “qualified person” as required by s 32(1) of the CA, bearing in mind s 32(4) defines such a person as, inter alia, a person resident in Australia;
the Opposed Mark qualifies as an “artistic work” as defined in s 10 of the CA;
the Opposed Mark is “original” (in that there is no evidence before me suggesting Ms Marton copied it from some other work) and thus copyright subsists in it pursuant to s 32(1) of the CA.
I note that Ms Marton assigned any intellectual property rights she had in the Opposed Mark to the Opponent in a deed entered on 23 August 2016, with the Opponent’s right to enforce such rights backdated as indicated in paragraph 10 above. For the sake of completeness, I mention that it is not necessary to examine this issue here. As Madgwick J points out, to find for the Opponent I need only be satisfied that a party other than the Applicant is the owner of the relevant copyright and that the owner has not consented to the Applicant’s proposed use of the Opposed Mark.
In this case I have no hesitation in finding on the balance of probabilities that a party other than the Applicant owns the copyright in the Opposed Mark. There is of course no evidence before me that the copyright owner has authorized the Applicant’s use of the opposed trade mark; indeed, the evidence is to the contrary.
Section 31(1) of the CA grants the owner of the copyright in a work such as the Opposed Mark the “exclusive right” to, inter alia, “reproduce the work in a material form” and to “publish the work”. On the face of it use of the Opposed Mark in the course of trade for any goods or services, including for the Applicant’s Goods, would necessarily involve “reproduction” (as defined in s 21 of the CA) and/or “publication” (as defined in s 29 of the CA) of the trade mark. Indeed, I believe the very filing of application 1753914 effectively amounts to publication of the Opposed Mark, given s 30 of the Act (that is the Trade Marks Act 1995) requires the Registrar to “publish particulars of the application in accordance with the regulations”. In practice, details of a newly filed application are generally available to the public within a matter of days.
For its part, as indicated in paragraph 18 above, s 36(1) of the CA states that the copyright in an artistic work “is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright.” For the reasons discussed I am satisfied then that the Applicant’s use of the Opposed Mark would be contrary to law because it would be infringing use under s 36(1).
The Opponent has accordingly established its opposition based upon s 42(b) of the Act.
While I have not found it necessary to address the Opponent’s s 58 ground in this decision, I mention finally that this ground too is made out on the evidence in my view. In this regard Mr Casinader quoted the following observation by Whitford J of the English High Court of Justice in KARO STEP Trade Mark (with Mr Casinader’s emphasis retained), whose logic seems irresistable:[10]
An applicant for registration must be in a position to claim that he is the proprietor of the mark. This does not, of course, mean that an applicant must be able to claim property in a mark to which existing goodwill attaches, for many applications are made for registration of marks new and unused. It does, however, to my mind involve this: that the applicant must be able to claim that he is entitled to be registered as proprietor of a mark in which he has a proprietary interest in the sense that he has an absolute right to use it. Any such claim must, in my view, be bad if in fact on copyright grounds some third person is going to be in a position to stop the applicant using the mark at all. The proprietors of a mark in which copyright exists can, I think, only be the owners of the copyright in the mark.
[10] [1977] RPC 255 at 274.
Decision
Section 55 of the Act provides:
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.
I have found the opposition to be successful on the ground raised pursuant to section 42(b) of the Act. I accordingly refuse to register trade mark application number 1753914.
Costs
Mr Casinader requested an award of costs in the Opponent’s favour. As the successful party, the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.
Michael Kirov
Hearing Officer
Trade Marks Hearings
15 December 2017
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