Kenneth & Pauline Hope v Reme Pty Ltd

[2005] ATMO 78

TRADE MARKS ACT 1995

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

Re:Opposition by Kenneth and Pauline Hope to registration of trade mark application 975698 & 975700(42, 44) - SOILMASTER - filed in the name of Reme Pty Ltd.

Delegate:	Jock McDonagh
Representation:	Opponents:  No appearance, not represented Applicant: Mr Ian Forno as agent/advocate, and Mr Rob Cummings, Director
Decision:	Section 52 opposition - grounds under sections 43, 58 & 60 not established – registration allowed. Costs awarded against the opponent.

Background

1. The applicant, Reme Pty Ltd, filed trade mark application for the following trade mark:

Application Number:

975698 & 975700

Priority date:

 24 October 2003

Services:

975698: Class 44:  Landscaping, horticultural, gardening, forestry and agricultural services; provision of information (including online) about landscaping, horticultural, gardening, forestry and agricultural services

975700: Class 42:  Scientific research

Trade Mark:

SOILMASTER

Advertised:

 26 February 2004

1. The opponents, Kenneth and Pauline Hope, filed notice of opposition to the trade mark's registration on 18 May 2004.  That notice listed three of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act"), pursuant to sections 43, 58 and 60 of the Act.

2. The opponents duly served and filed evidence in support. The applicant likewise served and filed evidence in answer. The opponent also served and filed evidence in reply.

3. In May 2005, the applicant applied to serve further evidence in relation to the proceedings; however, this was refused in July 2005.

4. On 24 August 2005, the opponents requested permission to serve further evidence in relation to the opposition. Submissions regarding the request were heard as a preliminary issue of the hearing of the substantive issue.  I refused the request to serve further evidence.

5. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Canberra on 9 September 2005. The opponents did not appear and were unrepresented at the hearing.  Mr Ian Forno assisted the applicant by making submissions, whose director Mr Rob Cummings also made submissions.

   Evidence

6. Details of the evidence is shown in the following table:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Kenneth & Pauline Hope	16.08.04	Attachment pages 12 to 147	First Hope
Sharelle Hope	5.08.04	Sharelle Hope
Thomas William Hope	9.08.04	Thomas Hope
Evidence in Answer
Robert William Cummings	13.12.04	Annexes A to E	Cummings
Evidence in Reply
Kenneth & Pauline Hope	25.02.05	Attachment pages 1 to 24	Second Hope

1. The first Hope declaration was obviously prepared without any legal or professional assistance. The declaration is a narrative that commences with details of a business name registration for the words soil master in February 1994.  This is followed by details of telephone communications between the applicant and the opponents in 1995, with the former attempting to persuade the opponents from using the business name. 

2. The declaration then provides a general narrative regarding dealings with various government departments, a trade marks attorney, and a solicitor with respect of the opponent’s business name registration. It also annexes sundry correspondence to and from the previously mentioned organizations and people, a number of business name and company registrations, some trade declarations, copies of White Pages entries, some invoices, a few instances of trade mark use, and an interesting assortment of police statements.

3. The Sharelle and Thomas Hope declarations do little other than corroborate the details regarding telephone calls from the applicant to the opponents’ telephone number in 1995.

4. The Cummings declaration provides a history of the applicant’s business and of its registration of the trade mark.  It also details a great deal of information in respect of business name registrations of both parties and allegations, largely unhelpful, of business name misuse by the opponent.

5. The second Hope declaration was largely unhelpful, comprising mostly criticisms of the applicant’s evidence, and annexing a copy of a letter from their accountant, a copy of a certificate of incorporation of Axhall Pty Ltd (a company controlled by the opponents), and copies of correspondence between the opponent and Penrith City Council in respect of development applications by the opponents.

6. Prior to the hearing, the opponents sought to serve further evidence in the proceedings. This was opposed by the applicant.  I did not allow the opponent to serve the further evidence, for the reasons that follow.

7. For further evidence to be allowed into such a late stage of opposition proceedings, it should firstly be shown that the evidence could not have been obtained earlier in proceedings with reasonable diligence.  Secondly, it should be shown that the evidence is likely to have an important effect on the outcome of proceedings. Thirdly, as the delegate of the Registrar, I should be satisfied the evidence is credible.

8. While the opponents provided a plausible reason for the late discovery of the proposed evidence, such evidence was irrelevant to these proceedings.  Briefly the proposed evidence related to a failure to advise the then Australian Securities Commission of a change in company name, and some other documentation to corroborate business name details.

   Onus of Proof

9. It is necessary for an opponent to establish at least one of the grounds set out in its notice of opposition in order to succeed.  The Registrar is required to approach the question of registration with the presumption of registrability in mind: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, Lomas v Winton Shire Council [2003] AIPC-91-839, Kowa Company Ltd v N V Organon [2005] FCA 1282 paragraph [139].

   Grounds of opposition

   Ground 1 – Ownership of the trade mark

10. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. In order to establish this ground, it is incumbent upon an opponent to show that, in the time before filing, the applicant was not the first user in trade in Australia of the applied-for trade mark. To do so, an opponent must show, at a minimum, that not only is the applied-for trade mark substantially identical to the older trade mark, but that it is applied to the same kind of goods: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640.

11. The proper comparison for substantial identity is side by side, as described in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, per Windeyer J, at 414:

    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.

12. I am satisfied that soilmaster is substantially identical to soil master.  Authority for this can be found in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) AIPC 91-049, where Gummow J found that there was no material difference between fun ship and funship.

13. I am also satisfied that the opponents have used soil master as a trade mark, and this has been evidenced by the opponents’ business cards, and examples of correspondence in the course of trade.

14. However, I am not satisfied on the balance of probabilities that the opponents have used its soil master trade mark before the applicant’s use of the soilmaster trade mark. 

15. The applicant had declared to adopting its mark “from 1994”, and had used the mark at the 1994 Mudgee Field Day, and provided a photograph of what is said to be its stand at the 1994 Mudgee Field Day.  It is not clear on what date in 1994 the applicant commenced use of its trade mark.  It is clear, however, that the applicant was regularly using its soilmaster trade mark by 1997.

16. The opponents’ evidence is to the effect that they, through their company Axhill Pty Ltd, registered the business name “Soilmaster”, in February 1994.  The opponents had been trading as “Hope’s Soilmart” from some time before 1994.  There is evidence, being a delivery docket, to show that Axhill Pty Ltd was trading as “Soilmaster” on 17 December 1994.

17. Copies of relevant local telephone directories show the opponents’ telephone listing in 1994 and 1995 as “Hope’s Soilmart”, but as “Soil Master” in the 1996 directory. The opponents stated that they had applied for “Soil Master” to be listed in the 1995 directory, but somehow the application was lost.

18. I note that the opponents’ business cards bear a six digit telephone number.  The copies of telephone directories indicate that six digit telephone numbers in the opponent’s area were listed until 1998, when eight digit telephone numbers are shown.  Thus, I can only be satisfied that the business cards have been used before 1998.

19. In Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278, Lander J, at [73], states:

    The applicant has established that it intended to use the title ‘On the Run Convenience Store’ in its various stores. The applicant has established, in my opinion, an intention to conduct a business under the name ‘On the Run’ or ‘On the Run Convenience Store’. That intention has been established by the registration of the business names both in South Australia and in New South Wales. It has not, however, established any intention it intended to deal with or provide goods using the ‘On the Run’ mark. There is a clear distinction, in my opinion, between conducting a business under a particular name and using a mark in respect of goods or services. The intention which the applicant needed to establish was an intention to use a mark to distinguish goods or services in the course of the applicant’s trade from goods or services provided by any other person. Because it has established that it intended to use the name to brand its businesses, that does not mean, however, it has established that it has used a mark or a sign to distinguish goods or services in the course of trade

20. Similarly, while in this case I can conclude that the opponents were conducting their business under the soil master name, I cannot be satisfied of what particular time in the period 1994 – 1997 that the opponents commenced using the soil master trade mark.  Thus they fail to satisfy its onus of establishing first user in Australia of the mark.

21. Further, what goods or services, or both, to which the opponents apply the trade mark is not clear from their evidence.  The only direct description of the opponents’ business, and supported by trade declarations, is the police statement in which Mr Ken Hope makes a statement to police “I am the owner of “Soil Master” which is a sand and soil haulage business.”  While sand and soil haulage might well be related to the services of the applicant, I am not satisfied that it is the “same kind of thing “.  

22. Therefore, I am not satisfied that the opponents have established that, for the purposes of section 58, they are the owners of the trade mark.

    Ground 2 - Reputation

23. To satisfy section 60, an opponent has the burden of establishing the following elements:

    ¨   a pre-existing trade mark;

    ¨   substantial identity or deceptive similarity between the applied-for trade mark and the pre-existing trade mark;

    ¨   the acquisition of a reputation in Australia by the pre-existing trade mark; and

    ¨   a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

24. Under section 60, an opponent may rely on a trade mark which is not registered, but which has been used at common law. To establish such use, it must show that it has been used as a "badge of origin" - as confirmed by Gummow J in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd  (1991) 21 IPR 1. The requisite use must be public use: Moorgate Tobacco Co. Limited v Philip Morris Limited & Anor (1984) 156 CLR 415, per Deane J.

25. I am satisfied that the opponents have been using soil master as a trade mark since a time before 1998, which pre-dates the applicant’s priority date.  The evidence of the opponents’ business card demonstrates that soil master has been publicly used in Australia as a "badge of origin" of its services from that time.

26. It has already been established that the opponents’ common law trade mark is substantially identical to that of the applicant. 

27. The next question in respect of the section 60 ground, is whether the opponents have shown a sufficient reputation in its trade mark to satisfy the requirements of subsection 60(b), such that the reputation is such that deception and confusion is likely. The reputation must be shown to have existed at the priority date.

28. It is not necessary to prove reputation by direct evidence of consumer appreciation; it is commonplace to infer reputation from a high volume of sales, together with substantial advertising and other promotions: McCormick & Co Inc v McCormick, (2001) 51 IPR 102 at 129.

29. There is no evidence of sales, advertising or other promotions provided in these proceedings.  The various trade declarations are vague as to the trade mark user of the opponent and of the dates of such user. I cannot be satisfied that the opponents have shown a sufficient reputation in their trade mark to satisfy the requirements of subsection 60(b).

30. On the basis of the evidence before me, I am not satisfied that the requisite reputation existed at the relevant date. Accordingly this ground of opposition has not been established.

    Ground 3 – Connotation

31. As Spender J pointed out in Winton Shire Council v Lomas (2002) 56 IPR 72:

    Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s.60.

32. The opponents have not, by evidence or submissions, suggested what the connotation is upon which they rely.  It is not apparent to me what it might be.

33. There is a considerable burden of proof associated with establishing the requisite connotation, and the opponents’ evidence falls very far short of discharging that burden. I find the ground of opposition under section 43 to be unsuccessful.

    Decision

34. The opponents have not established any grounds of opposition. Therefore, the applicant's trade mark may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

    Costs

35. The applicant sought its costs.  I see no reason why costs should not follow the general rule. I award costs against the opponents and direct that the opponents pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    14 December 2005