Karl David Turkovic v Triple Three Leisure Limited

[1993] ATMO 31

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by TRIPLE THREE LEISURE LIMITED to the registration of Trade Mark application number 541849 in the name of KARL DAVID TURKOVIC

Trade mark application 541849 in the name of Karl David Turkovic (the applicant) was lodged on 12 September 1990.  The mark, which is shown below was advertised accepted on 22 August 1991 for "ladies' and men's and children's clothing including shoes and headgear" in class 25.

As allowed by sub-section 49(1), registration has been opposed.  The opponent, Triple Three Leisure Limited, relied on various grounds not all of which were pursued at the hearing.  As allowed by the Regulations, the opponent lodged its evidence in support, but the applicant did not serve any evidence in answer.  A hearing was set down for 18 March 1993 in Canberra.  The opponent was represented by Mr Raymond Walton, patent attorney, of the firm Griffith Hack & Co.  The applicant was not represented and made no submissions.

Grounds and evidence
Mr Walton indicated he did not intend to address all of the grounds of opposition separately since many were interrelated. The broad issues he said were that the applicant had no intention of using the mark on his own goods; the applicant was not the proprietor of the mark; the mark was not distinctive of the applicant's goods; any rights given to the applicant by registration would be in conflict with rights under the Copyright Act; that use of the trade mark would infringe copyright and the conflict of rights would give rise to deception and confusion so that the mark would offend against the provisions of section 28.

The Opponent's evidence is comprised of statutory declarations from Mr Laurence Butler, Licensed Inquiry Agent; Mr Raymond Walton (first Walton declaration), attorney for the opponent; Mr Clive King, Director of Triple Three Leisure Limited, and Mr Michael Rhodes, previously employed by the opponent to do artwork and design.  Annexures to Mr King's declaration include another declaration by Mr Walton (second Walton declaration).

Decision
For convenience I will deal, in turn, with the grounds on which Mr Walton made submissions.

Absence of intention to use
Mr Walton submitted that the applicant had no intention of using the mark on his own goods.  Mr Walton acknowledged that there is case law which establishes the presumption of intention to use: Aston v Harlee Manufacturing Co. (1960) 103 CLR 391 at 401 but submitted that the evidence shows that the applicant's application does not comply with the requirements of the definition of a trade mark set out in section 6 and that the presumption of intention to use should be set aside.

In this regard, Mr Walton referred to annexures E, G and I of the second Walton declaration which are letters from the applicant to the opponent.  In Annexure E, Mr Turkovic says he has become aware of the opponent's later application and advises that he has already gained acceptance for the SPX logo.  He goes on to say he would like to discuss the opponent's plans for marketing their goods in Australia; he refers to the style and quality of their goods which he considers is unrivalled in Australia and indicates that he would be happy to discuss any plans they may have regarding the manufacturing or marketing of their goods by himself.  He concludes by saying that he will begin manufacturing and distributing garments using the logo in the near future.  A second letter, (Annexure G), of very similar content, followed in November, and a third letter was sent to Griffith Hack & Co in December (Annexure I).  This letter again refers to the quality of the opponent's products and to Mr Turkovic's readiness to act as the opponent's agent in manufacturing and marketing the opponent's merchandise.

Mr Walton drew attention to Mr Butler's declaration.  Mr Butler had conducted investigations into the various addresses that could be found for Mr Turkovic as well as into any business activities in which Mr Turkovic might have been engaged.  Mr Walton submitted that Mr Butler's findings established that Mr Turkovic was not engaged in any business and it did not appear from the addresses that he had any capacity or premises from which he could manufacture or sell goods.

In concluding this point, Mr Walton submitted that it was clear the applicant had no intention of using the mark, other than in relation to the opponent's goods.  The applicant had no intention of using it on his own goods nor did he have the capacity to manufacture or sell the goods in question.  Mr Walton pointed out that the applicant had not refuted this.

In sub-section 6(1) of the Act, a trade mark is defined, essentially, as a mark used or proposed to be used in connection with goods or services with which the proprietor or a registered user is connected in the course of trade.  The nature of the requirement, "used or proposed to be used" was considered by Lord Hanworth M.R in Ducker's Trade Mark (1928) 45 RPC 397 at 402:

I agree that the goods need not be in being at the moment, and that there is a futurity indicated in the definition; but the mark is to be a mark which is to be definitely used or in respect of which there is a resolve to use it in the immediate future upon or in connection with goods.  I think that the words "proposed to be used" mean a real intention to use, not a mere problematical intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered.

It should be noted that, under the provisions of sub-section 53(2), a mark, once registered, is registered from the date of application.

To support the application, the applicant provided a statement of user as required by regulation 8.  It states:

I am currently using the trade mark for ladies', men's and children's clothing and intend using it in relation to other goods specified in 1.3.

The goods specified in 1.3 were "ladies, men's and children's clothing including shoes and headgear".  Prima facie, there is, as Mr Walton acknowledged, evidence of intention to use the mark on the goods specified and the onus of establishing absence of intention rests with the opponent: Aston v Harlee supra.

The application was made on 12 September 1990.  From the applicant's first letter to the opponent dated 9 September 1991, it is clear, that use of the mark on goods described as "garments" had not commenced at that time, although the applicant said it would do so in the near future.  Since a "garment" may be defined as any article of clothing it would appear that the information in the letter concerning use of the mark is not in accord with the applicant's regulation 8 statement.  Although many inferences as to the applicant's intentions may be drawn from the other matters raised in this and subsequent letters, I believe it would not be unreasonable to conclude that the applicant was using the acceptance of his trade mark application as a means of securing discussions, at the very least, on his agency for the opponent's products in Australia.  The letters do raise doubts in my mind as to whether the use of the mark that the applicant had claimed in the statement under regulation 8 had occurred and also as to whether it was his intention to use the mark on his own goods.

These doubts are reinforced by the investigations undertaken by Mr Butler who concluded from them that Mr Turkovic was not engaged in the conduct of any business in the State of Western Australia involving the manufacture and/or sale of clothing articles.  The investigations established that no business of that sort was being conducted from either of the applicant's addresses, one being described as a block of residential units and the other as a dwelling.  Mr Butler attested to these matters on 28 May 1992.  Therefore it would appear that 20 months after the applicant had said he was using the mark and had the intention of using the mark, there had been no use of the mark and it appeared that the applicant had not had, and did not have, the capacity either to produce or market the goods in question.  The applicant, however, had an obvious interest in acting as the Australian agent for the opponent.

Similar doubts concerning an applicant's intentions and capacity to use a mark on goods or services specified were raised in Rolewa Rentals Pty Ltd v Champagne Moet et Chandon (1985) AIPC 90-238 and in Michael Sharwood & Partners Pty Ltd & Ors v Fuddruckers Inc (1989) AIPC 90-596. In these cases the Registrar's delegates were not satisfied that the applicants' original statements were sufficient to discharge the onus placed on them. I consider the opponent's evidence here has also established sufficient doubt as to the applicant's real intention to use the mark notwithstanding the regulation 8 statement. It appears, from the material put forward by the opponent, that the applicant's stated intention to use the mark falls short of the "resolve or settled purpose" to which Lord Hanworth referred. The applicant has had the opportunity to refute the opponent's material under regulation 44 by way of evidence in answer, but has not done so. Given these circumstances, I find the opposition succeeds on this ground.

Proprietorship
Mr Walton drew my attention to Annexure C of the King declaration which depicts the mark created by the opponent on a swing ticket.  He pointed to the absolute identity of the swing ticket to the applicant's mark, even to the swing ticket hole.  Mr Walton submitted that this was evidence that the applicant was not the proprietor of the mark and that a different situation now applies to that in Yanx Trade Mark (1951) 82 CLR 199 and Seven Up Co. v O.T. Ltd (1947) 75 CLR 203. In this regard Mr Walton cited Anheuser-Busch Inc v Castlebrae Pty Ltd and Ors (1991) AIPC 90-840 at 37,959. Mr Walton submitted that the circumstances of the present case were quite different to those in Yanx and Seven Up supra which had dealt with situations where persons in Australia, who, becoming aware of a mark being used elsewhere, decided they could use it here in Australia.  In this case, Mr Walton said, the trade mark has simply been lifted off an opponent's garment and made the subject of an application.

The King and Rhodes declarations describe how the idea of the mark was conceived and artistically created for use by the opponent as early as 1988.  The goods bearing the mark were promoted internationally at exhibitions - in Munich twice each year from 1989, in the United Kingdom three times a year and in the United States in 1991.  Mr King attests to the fact that on those occasions he was approached by, and spoke to, people from Australia about his products.  Mr Walton submitted that there was an international awareness of the existence of the trade mark prior to the applicant making his application.

Mr King declared that the catalogue annexed to the second Walton declaration was the opponent's 1991 catalogue which was distributed in Australia in late 1990 but he cannot say exactly when.  Mr Walton acknowledged that the actual swing ticket did not feature in this brochure but that all of the elements that make up the applicant's mark do.

The question of proprietorship of a trade mark must be decided under the provisions of section 40 of the Act.  Sub-section 40(1) provides that:

A person who claims to be the proprietor of a trade mark may make application to the Registrar for the registration of that trade mark in Part a or Part B of the Register.

The use of the words "trade mark" in sub-section 40(1) implies, by virtue of the definition of "trade mark" in section 6, that an application may only be made by a person who either uses or proposes presently to use the mark applied for in respect of the goods specified in the application.

With regard to use of the mark, it would appear from the previous discussion of the evidence in relation to that point, that the applicant, at the time of its application, did not use the mark on the goods specified in the application.  However, this, of itself, will not prove fatal to the applicant's claim to proprietorship unless prior user of the mark in Australia with respect to the goods in question can be established: Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413.

The opponent's evidence shows that, prior to the date of the applicant's application, the opponent had used the mark, which constitutes the essential feature, as well as the background features, of the applicant's mark, on the goods for which the application was made.  Indeed, the mark would appear to be a copy of a swing ticket designed and used by the opponent.  The vital question, therefore, is, had there been use by the opponent of the mark in Australia prior to the date of the applicant's application.  Where a mark in use overseas has been made the subject of an application in Australia by a person other than the overseas proprietor, I am mindful that a very small amount of use of the foreign mark will suffice to establish proprietorship in Australia: Seven Up supra at p.211.

Mr Walton has drawn attention to the international awareness of the mark resulting from exhibitions of the goods displaying the mark since 1988.  However, given the time involved, only two years, and the specialised nature of exposure of the goods in footwear exhibitions, I do not believe there would have been a significant level of public awareness of the opponent's mark in Australia and I believe this case can be distinguished from the Anheuser-Busch case supra cited by Mr Walton.  Unlike that case, I do not believe the present one involves a question of character merchandising and thus the need to consider the effect that public awareness of a character might have on the question of proprietorship is not relevant here.

Mr Walton also drew attention to the circulation of the opponent's brochure in Australia at the end of 1990.  However, since no precise date can be given to its circulation and since there is no evidence of the results of its circulation in terms of orders placed or sales made, I cannot conclude that there was even a very small amount of use of the mark by the opponent prior to the applicant's application.

I conclude therefore, that at the time of application the mark was unused in Australia both by the applicant and the opponent.  This being the case, the applicant's claims to proprietorship must be judged on the criteria set out by Dixon J in the Shell Co. (Aust.) Ltd v Rohm and Haas Co. (1948) 78 CLR 601 at 627:

The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration.

The applicant has applied for registration and does not have to be the "first and true inventor" of the mark (Aston v Harlee supra at p. 399) to meet the requirement of authorship.  In the Yanx case supra at p. 202 Williams J. said:

To try and register in Australia a word which the applicant to the knowledge of the respondent is using elswehere on its cigarettes is sharp business practice.  But it is not in itself fraudulent or a breach of the law.

However, with regard to the third criterion, the intention to use, I have found that the opponent has established sufficient doubt as to the applicant's intention to use the mark.  Therefore, since not all of the criteria set out above have been met, the applicant's claim to proprietorship of the unused mark cannot be substantiated.

Since the applicant has not used the mark nor refuted the opponent's claim as to his lack of real intention to use the mark, the applicant cannot, in terms of the combined effect of sections 40 and 6, properly claim to be the proprietor of the mark and I find the opposition succeeds on this ground.

Distinctiveness
The opponent has claimed that the mark is not distinctive of the applicant's goods and that the evidence shows that it is distinctive of the opponent's goods.  However, the opponent had not, at the relevant date, either applied for registration or used the mark in Australia and the evidence shows it had little or no reputation in the mark in Australia at that date.  While the mark may be distinctive of the opponent's goods in other jurisdictions it was not, at the relevant date, distinctive of the opponent's goods in Australia.

The mark for which the applicant sought registration was accepted as one that was inherently distinctive under the provisions of paragraph 24(1)(e).  It met the requirements of a distinctive mark in terms of paragraph 26(2)(a), that is, it is a mark that is inherently adapted to distinguish the applicant's goods.  In the words of Gibbs J. in Burger King Corp. v Registrar of Trade Marks (1973) 128 CLR 417 at 424:

Inherent adaptability is something which depends on the nature of the trade mark itself (see Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511 at 515) and therefore is not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise.

Therefore, regardless of the applicant's use of the mark or otherwise, the mark is adapted to distinguish the goods with which the applicant is or may be connected in the course of trade and I find the opposition fails on this ground.

Copyright
Mr Walton made lengthy submissions on the gounds of opposition involving copyright.  Whether copyright is capable of subsisting in the mark, whether it does so subsist, who is the copyright owner and whether use as a trade mark would infringe copyright are questions for a court of competent jurisdiction to decide.  They are not within the jurisdiction of the Registrar of Trade Marks.  The matter of deception and confusion arising under section 28 as a result of conflicting trade mark and copyright rights could only be considered if the issues involving copyright had already been determined.  Therefore it is unnecessary for me to consider Mr Walton's submissions on this matter and consequently the opposition does not succeed on these grounds.

Conclusion
The opponent has been successful in establishing the applicant's lack of intention to use the mark and that he is not the proprietor of the mark.  The applicant has not discharged his evidentiary onus by dispelling the doubts raised by the opponent's evidence nor has he discharged his onus as the applicant to show that the mark should be registered.  As the opponent has been successful, it is entitled to its costs and I so award them in accordance with the Regulations.

Linda Sullivan
Senior Examiner

8 April 1993