Kahn-Allen Pty Ltd v Weatherbeeta Pty Ltd

[2023] ATMO 151

TRADE MARKS ACT 1995

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

Re:Opposition by Kahn-Allen Pty Ltd to registration of trade mark application number 2115208 - JOHN J WIENEKE (stylised) - in class 18 - in the name of Weatherbeeta Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Buller McLeod Lawyers

Applicant: Cornwalls

Decision:

2023 ATMO 151

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 43, 44, 58, 58A, 60 and 62A considered – s44 established – trade mark refused

Background

1. This decision is in respect of an opposition by Kahn-Allen Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark detailed below in the name of Weatherbeeta Pty Ltd (‘Applicant’):

[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Number	Filing Date	Trade Mark	Goods
2115208 (‘Application’)	27 August 2020	saddles; saddle bags; animal harnesses; blinkers; whips; animal clothing; animal protective equipment; animal collars; animal leashes; animal leads; animal covers; animal rugs; parts, fittings and accessories for the aforementioned goods (‘Applicant’s Goods’)

2.     Following the advertisement of acceptance of the Application for possible registration, the Opponent filed a Notice of Intention to Oppose on 26 March 2021 followed by a Statement of Grounds and Particulars (‘SGP’) on 26 April 2021. The Applicant filed a Notice of Intention to Defend on 24 June 2021.

3. The parties then proceeded to file their evidence in accordance with the Regulations. The Opponent’s evidence in support (‘EIS’) was filed on 23 September 2021. After a cooling-off period, the Applicant filed its evidence in answer on 23 September 2022. No evidence in reply was filed.

4.     Following the conclusion of the evidence stage, the parties were given the opportunity to a request a hearing.  Neither party requested a hearing and the Applicant requested a decision without a hearing.  This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks based on the aforementioned materials.

Grounds, Onus and Relevant Date

5.     In the SGP, the Opponent particularised grounds of opposition under ss 43, 44, 58, 58A, 60 and 62A. 

6.     The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

7.     The date at which the rights of the parties are to be determined is 27 August 2020 being both the filing and priority date of the Trade Mark.

Opponent’s Evidence

8.     The EIS consists of:

·     Declaration of Jacqueline Kahn, director of the Opponent, made on 23 September 2021 with Annexures AA, B, C1-C4, D1-D4 and E (‘Kahn Declaration’); and

·     Declaration of Tony Allen, partner of Jacqueline Kahn, made on 23 September 2021 with Annexures E, F1-F4 and G1-G2.

9.     Ms Kahn attests that in June 2015 the Opponent purchased Australian trade mark registration 73983 detailed below from C.A. Stephan Pty Ltd (‘Assignor’):

Number	Trade Mark	Filing Date	Goods	Endorsement
73983	(‘Earlier Mark’)	23 Jan 1939	Saddles	The signature appearing in the Mark is that of the applicant

10.   All of the Assignor’s rights, title and interest in the Earlier Mark was assigned to the Opponent by a Deed of Assignment dated 30 June 2015 (‘Assignment’).  The Opponent applied to record the Assignment on 23 October 2015.  Due to an oversight by this office, the Opponent was not recorded as the owner of the Earlier Mark on the Register until 23 January 2018.  A file note of the conversation between the Opponent’s solicitor and the IP Australia employee dated 5 December 2018 following up on recordal of the Assignment is provided.  

11.   The Kahn Declaration claims that the Assignor acquired the Earlier Mark “some time in the 1970s” and used the Earlier Mark for saddles until it was assigned to the Opponent.  When purchasing the Earlier Mark, the Opponent also acquired various original ‘Jack Wieneke’ metal stamps (‘Stamps’), including one for the Earlier Mark, for embossing on saddles.  Photos of the Stamps are annexed to the Kahn Declaration.

12.   The Earlier Mark refers to John Wieneke (known as Jack Wieneke), a Queensland saddle maker in the early 20^th century of considerable repute within the Australian horse-riding community for the design and quality of his saddles. 

13.   Since mid-2015, the Opponent has sold saddles embossed with the Earlier Mark in its store in Bulla, Victoria and since 2019 in its Riddells Creek, Victoria store.  In April 2021, the Opponent also sold a saddle bearing the Earlier Mark to the Australian Stock Saddle Museum.  In addition, saddles bearing the Earlier Mark have been available for sale at various events including the Yaloak Polo Club corporate event in 2019.

14.   Mr Allen assists Ms Kahn in the operation of the Opponent and its stores.  He attests that he is responsible for sourcing all equipment and materials required for making the Opponent’s saddles and confirms the Opponent’s continued use of the Earlier Mark since 2015.

15.   Mr Allen declares that on about 15 January 2020, an employee in the Opponent’s Bulla store received a telephone call from Mr Brett Watson, the original owner of the Application, who is connected to the Applicant.  In about late January 2020, Mr Allen claims that he spoke to Mr Watson who asked him if he owned and used the Earlier Mark previously owned by the Assignor.  Mr Allen attests that he confirmed to Mr Watson that the Opponent had acquired the Earlier Mark and was using it commercially.  Mr Watson advised that he was involved in ‘John Brush Saddlery’ which believed it owned the legal rights to the Jack Wieneke brand.  Mr Allen informed Mr Watson that he understood that only the Opponent owned the rights to the Jack Wieneke brand and would seek to enforce those rights if necessary. 

16.   In around March 2021, Mr Allen was contacted by Mr Christopher Ian Pitt Lancaster, a saddle maker, who advised Mr Allen that in early 2019 he had approached Mr Watson about entering into a business arrangement to make saddles embossed with a ‘Genuine Wieneke’ stamp that Mr Watson had in his possession.  Mr Lancaster made and sold two saddles embossed with that stamp in exchange for a royalty from Mr Watson. 

17.   Mr Lancaster has provided a letter confirming the business arrangement with Mr Watson described above.  Mr Lancaster states that Mr Watson told him about the telephone conversation with Mr Allen set out at [15] and then ceased his arrangement with Mr Watson to provide saddles embossed with the ‘Genuine Wieneke’ stamp.

Applicant’s Evidence

18.   The Applicant’s evidence consists of a declaration of Roger Jackson, Director International Business of the Applicant, made on 23 September 2022 with Exhibits 1-7 (‘Jackson Declaration’).

19.   The Jackson Declaration refers to earlier proceedings between the parties whereby the Applicant applied to remove the Earlier Mark from the Register on the grounds of non-use,[4] which proceedings had not been determined at the time of the Jackson Declaration (‘Non-use Proceedings’). 

[4] Kahn-Allen Pty Ltd v Weatherbeeta Pty Ltd [2022] ATMO 184 (Hearing Officer N. Smith).

20.   Mr Jackson declares that since 1976, the Applicant has operated a business in the design, manufacture and sale of equestrian products including saddles, which are sold online and in numerous physical stores.

21.   Mr Jackson declares that he was trained as a saddle maker to make the specific style of stock saddle for which John Wieneke is ‘famous’ and that he has made many saddles in this style.  Further, Mr Jackson has conducted extensive research into the history of John Wieneke and the ‘Wieneke’ brands.  Some of these research documents are annexed to his declaration.  Mr Jackson claims that his research reveals that there has been “2 parallel but distinct usages of the Wieneke brands over many years’, one by Edward Butler & Co Pty Ltd (and subsequently by Mr Watson trading as Front Row Saddlery Pty Ltd) and the other by John Wieneke himself.  In 1938, these separate uses of the Wieneke brands were the subject of a legal dispute between Edward Butler & Co and Mr Wieneke (‘Historical Proceedings’).

22.   Mr Jackson declares that the Applicant was unaware of the Opponent’s business as a saddle manufacturer until the Non-use Proceedings and that the Applicant honestly adopted the Trade Mark.

23.   Exhibit 2 to the Jackson Declaration is a declaration of Brett Phillip Watson, sole proprietor of Front Row Saddlery, made on 4 August 2021 with Exhibit A (‘Watson Declaration’) that was filed in the Non-use Proceedings.

24.   Mr Watson declares that he has operated Front Row Saddlery Pty Ltd since 1978.  This company was incorporated in 1935 as Edward Butler & Co Pty Ltd (‘Edward Butler’)[5] and owned Australian trade mark registration 73388 for the mark shown below for ‘saddles’:

(‘Genuine Wieneke Mark’)

[5] Edward Butler changed its company name to John Brush Pty Ltd in 1978 before changing its name in 1991 to Front Row Saddlery Pty Ltd.  Any reference to Edward Butler includes a reference to John Brush Pty Ltd.

25.   Registration 73388 was not renewed, for reasons that Mr Watson cannot recall, but Edward Butler continued to use the Genuine Wieneke Mark.

26.   The Watson Declaration includes an Australian Securities and Investments Commission extract for Edward Butler which shows that Mr Watson was a director and secretary of Edward Butler from 1985 until the company was deregistered in 2006.  Mr Watson was appointed as the sole liquidator of Edward Butler from 9 July 2005 until 23 February 2006 to “liquidate [Edward Butler's] assets pursuant to a members voluntary winding [up]”.  Mr Jackson declares that Mr Watson informed him that most of the assets of Edward Butler were transferred to Mr Watson for his continued use.

27. Mr Watson confirms that he gave Mr Lancaster the ‘Genuine Wieneke’ stamp for embossing, under licence from Mr Watson, the Genuine Wieneke Mark on saddles referred to at [17].

28.   According to Mr Watson, he only spoke to Mr Allen in late May 2020 and whilst Mr Allen confirmed that he had purchased the Earlier Mark, Mr Allen acknowledged that he was aware of other ‘Wieneke’ trade marks and the Historical Proceedings.

Discussion

Section 44

29.   Section 44 relevantly provides:

44  Identical etc. trade marks

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

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

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

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

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

Note 1:       For deceptively similar see section 10.

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

Note 3:       For priority date see section 12.

Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

…

(3)  If the Registrar in either case is satisfied:

(a)  that there has been honest concurrent use of the 2 trade marks; or

(b)  that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:          For limitations see section 6.

(4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)  beginning before the priority date for the registration of the other trade mark in respect of:

(i)  the similar goods or closely related services; or

(ii)  the similar services or closely related goods; and

(b)  ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

30.   To successfully oppose the application pursuant to s 44, the Opponent must establish that the trade mark upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

31.   In the event that each of these requirements is satisfied by the Opponent, it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark since before the priority date of the Opponent’s relied upon mark. 

32.   In support of this ground of opposition, the Opponent relies on its registration for the Earlier Mark which has a priority date earlier than the priority date of the Trade Mark and covers goods that are similar to the Applicant’s Goods.  The first and third requirements are satisfied.

33.   Turning to the second requirement, I will consider whether the Earlier Mark and the Trade Mark are substantially identical.  When considering ‘substantial identity’ in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd Windeyer J said:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[6]

[6] [1963] HCA 66, [12].

34.   The Earlier Mark and Trade Mark are set out below:

Earlier Mark Trade Mark

1. On a side-by-side comparison there are clear differences between the marks including the additional phrase ‘A TRUE TO LABEL GENUINE WIENEKE’ in the Earlier Mark.  In my view, the Trade Mark is not substantially identical to the Earlier Mark. I move then to consider whether the Trade Mark and Earlier Mark are deceptively similar.

   36.   Section 10 provides:

   10  Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

2. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[7]

   [7] Ibid [13].

   38.   The assessment of whether two marks are deceptively similar does not involve a side-by-side comparison and is instead guided by a ‘general recollection or impression’[8] of the marks.  I must consider the impression of a consumer with a so-called ‘imperfect recollection’ of the Earlier Mark who encounters use or notional use of the Trade Mark.[9]  The High Court has emphasised that ‘[i]t is important to consider what has been described as the “idea of the mark,” that is, the idea which the mark will naturally suggest to the mind of one who sees it’.[10]

   [8] Jafferjee v Scarlett (1937) 57 CLR 115, 121-22 (Latham CJ, Dixon and McTiernan JJ).

   [9] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196; (2004) 209 ALR 1, [77] (Moore, Sackville and Emmett JJ).

   [10] Jafferjee v Scarlett (n 8) at 121; see also Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156; (2015) 237 FCR 388, [209]-[219] (Besanko, Jagot and Edelman JJ); Polo/Laurent Company LP v Continental Shelf 128 Ltd (2019) 150 IPR 148 at [39]-[42] (Hearing Officer I. Thompson).

   39.   In deciding whether there is a real risk that consumers will have ‘cause to wonder’ whether the branded goods come from the same source,[11] it is sufficient in that respect if the minds of the purchasing public are simply ‘perplexed’ or ‘mixed up’.[12] The Full Court outlined the correct approach in the following terms:

   [11] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5 (Kitto J); Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 93 FCR 365, [431] (French J).

   [12] Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410, 423 as cited in Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, [39] (Black CJ, Sundberg and Finkelstein JJ).

   [T]he threshold for confusion is not high. Courts must compare the marks visually and aurally in the context of how the marks are used, and decide if there is a reasonable probability that the ordinary person to whom the marks are targeted, entertains a reasonable doubt as to the relationship between the marks.[13]

   [13] Australian Postal Corp v Digital Post Australia [2013] FCAFC 153; (2013) 308 ALR 1, [70] (North, Middleton and Barker JJ).

   40.   Visually there is similarity between the Trade Mark and Earlier Mark as a result of both containing a name featured in a similar script.  The common element ‘Wieneke’ is obviously a surname in the context in which it appears in each of the marks.  This surname is an essential element and memorable feature of both the Trade Mark and the Earlier Mark, which is reinforced in the Earlier Mark by reference to ‘GENUINE WIENEKE’.  Given the surname is identical and the names appear in very similar script, the Trade Mark and Earlier Mark convey a congruent idea and impression.  Consumers may be caused to wonder if the initial ‘J’ in the Trade Mark is a reference to ‘Jack” or (correctly) assume that the marks refer to the same person given that ‘Jack’ is a common nickname for ‘John’.[14]   

   [14] Gillie, R.  2014, ‘Jack – The Meaning, Origin and Other Facts about the Name’, Huffington Post, online 14 August 2014, updated 20 May, 2015.

   41.   I am satisfied that the Trade Mark is deceptively similar to the Earlier Mark and covers similar goods.  The s 44 ground of opposition is established.

   42.   Given that I have found that a prima facie ground of opposition exists under s 44, I must now consider whether the Applicant is entitled to registration under s 44(3) on the basis of honest concurrent use or other circumstances or under s 44(4) based on prior continuous use of the Trade Mark since before the priority date of the Earlier Mark.

   Honest Concurrent Use, Other Circumstances and Prior Continuous Use

   43.   The Applicant bears the onus of establishing that there has been honest concurrent use of the Trade Mark and that there is a case for the exercise of the discretion under s 44(3).[15]

   [15] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406, [120] (Davies J).

   44.   The principal factors to be considered in determining if there has been honest concurrent use of a mark are:

   • the degree of confusion likely between the trade marks in question;
   • whether there have been instances of actual confusion;
   • the honesty or otherwise of the concurrent use;
   • the extent of use in duration, area and volume; and
   • the relative inconvenience that would be caused to the respective parties if the Applicant’s trade mark should or should not be registered.

   45.   The Applicant claims that the Trade Mark has been used by Edward Butler “since around 1935” and subsequently by Mr Watson trading as Front Row Saddlery.  No documentary evidence establishing use of the Trade Mark by the Applicant or its predecessors since the 1930s has been provided.  Accordingly, I am not satisfied that there has been honest concurrent use of the Trade Mark nor in the absence of any supporting evidence of use of the Trade Mark by the Applicant, that there are other circumstances justifying registration of the Trade Mark.

   46.   Similarly, there is no documentary evidence that the Applicant or its predecessors have continuously used the Trade Mark for the Applicant’s Goods since before 23 January 1939 (being the priority date of the Earlier Mark).  Therefore, the Applicant has not established that it is entitled to registration of the Trade Mark under s 44(4).

   47.   The ground of opposition under s 44 has been established and hence it is not necessary to consider the other grounds of opposition claimed.

   Decision

   48.   The Opponent has met its onus in terms of the ground of opposition under s 44. Therefore, I refuse to register trade mark application 2115208.  If the Registrar is served with a notice of appeal, I direct that registration shall not occur until the appeal is withdrawn or discontinued. Otherwise the disposition of the Application should be in accordance with the Court’s order or direction.

   49. It is usual for costs to follow the event and I see no reason to depart from that principle. I award costs against the Applicant under s 221 in line with Schedule 8 of the Regulations.

   Tracey Berger

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   5 October 2023