Kiztax Pty Ltd v Connor
[1999] FCA 1520
•13 OCTOBER 1999
FEDERAL COURT OF AUSTRALIA
Kiztax Pty Ltd v Connor [1999] FCA 1520
INTELLECTUAL PROPERTY – trade marks and trade names – whether the use of mark would be likely to deceive or cause confusion – registration refused.
Trade Marks Act 1995, s 60(b)
KIZTAX PTY LIMITED V BRADLEY BUCHANAN CONNOR
N 10 OF 1999
JUDGE: BEAUMONT J.
DATE: 13 OCTOBER 1999
PLACE: SYDNEY
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N 10 OF 1999
BETWEEN:
KIZTAX PTY LIMITED
ApplicantAND:
BRADLEY BUCHANAN CONNOR
RespondentJUDGE:
BEAUMONT J.
DATE OF ORDER:
13 OCTOBER 1999
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.The registration of the respondent’s mark “Score Sports” be refused.
2. The respondent pay the applicant’s costs of the proceedings.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N 10 OF 1999
BETWEEN:
KIZTAX PTY LIMITED
ApplicantAND:
BRADLEY BUCHANAN CONNOR
Respondent
JUDGE:
BEAUMONT J.
DATE:
13 OCTOBER 1999
PLACE:
SYDNEY
REASONS FOR JUDGMENT
BEAUMONT J:
This is an appeal from a decision of the delegate of the Registrar of Trade Marks deciding that the respondent’s application to register the trade mark, “Score Sports”, should proceed to registration. In the appeal the applicant seeks an order that the registration of the mark be refused and other alternative relief.
The grounds of the appeal are, in essence, based upon the applicant’s prior and continued extensive use of the word “Score” as its unregistered trade mark since 1988; that the respondent’s trade mark relates to the provision of similar goods, being sporting equipment and apparel and is therefore misleading, deceptive and likely to cause confusion in the minds of the public; that the applicant’s trade mark “Peter Wynn’s Score” has acquired a reputation in respect of the provision of sporting equipment and apparel such that registration of the respondent’s trade mark “Score Sports” would also be likely to deceive or cause confusion; that the respondent has not taken any steps to distinguish his trade mark “Score Sports” from the applicant’s trade mark “Peter Wynn’s Score”; and that the respondent’s trade mark is not capable of distinguishing his goods and services from those of the applicant.
The applicant relies primarily upon the provisions of s 60 of the Trade Marks Act 1995 (“the Act”).
The matter has come before the Court in somewhat unusual circumstances, although the case has been the subject of the usual case management procedures and has, in that connection, been before the Court on a number of occasions; yet, the matter has always proceeded ex parte. However, I am satisfied that the respondent has not only been served with the process, but was subsequently informed by registered post of today’s hearing. Naturally, the Registrar does not wish to play any contentious role in the proceeding.
I have read the reasons of the delegate dated 16 December 1998. I will not attempt to summarise the process of reasoning but it will suffice, for present purposes, to say that there was no evidence before the delegate of actual confusion.
This is not, however, the position so far as this Court is concerned. A director of the applicant, Mark Asef, by his affidavit sworn 11 October 1999, describes the respective business activities of the parties and provides evidence of confusion in the use of their respective names and marks, in that behalf, to be mentioned below. From Mr Asef’s affidavit evidence the following appears:
·The applicant’s business involves conducting a retail and wholesale sporting goods store from business premises in Parramatta. The store trades under the name and style “Peter Wynn’s Score”. The business commenced trading in February 1988. He and his co-director, Mr Peter Wynn, are both engaged in retail sales within the store and each has extensive contact with customers of the business. Mr Wynn is a well known sports identity having represented the country in Rugby League in the 1980s.
·The applicant’s business is a substantial one. Retail sales in the financial years ended June 1997 and June 1998 each approached $5 million and it is estimated that annual sales in the year ended 30 June 1999 will be in that order. The applicant has also incurred substantial expenditure on advertising and promotion in the financial year ended June 1997, totalling almost $200,000. In the following years amounts approximating $140,000 were spent.
·The applicant has advertised its business in a range of newspapers in the western suburbs of Sydney and in the major State newspapers.
·In addition to advertisements in the printed media, the applicant has conducted extensive advertising campaigns on radio. Since the commencement of its business in 1988 it has used the slogan “If you don’t score here, you will never score”.
I am satisfied that the applicant has established a substantial reputation and goodwill in the mark and name “Peter Wynn’s Score”.
The affidavit of Mr Asef also provides evidence of the nature of the respondent’s business. The respondent, under the name “Score Sports”, sells gymnastic and sporting articles as well as sports clothing, footwear and headgear. The respondent’s store is based in Regents Park, also in the western suburbs of Sydney. As has been mentioned, there is evidence in Mr Asef’s affidavit of actual confusion as follows:
“9.In the period from mid 1997 through to the present time, I have had numerous conversations with customers (I would estimate dozens of conversations annually) concerning ‘Score Sports’. The text of those conversations consistently involved customers enquiring whether ‘Score Sports’ was a part of the business ‘Peter Wynn’s Score’.
10.On the advice of my solicitor and barrister, it became my practice from 1988 to note the details of the type of conversation which I have referred to in preceding paragraphs in my personal journal. The journal was in my brief case which was stolen from my motor vehicle in November 1998. As a consequence of the loss of that journal I no longer have the details which I recorded regarding ‘Score Sports’.
11.I estimate that in the period mid-1997 to date that there have been conversations of the type to which I have referred in paragraph 8 above.
12.One such episode occurred in about April 1999. I was serving a young fellow who identified himself as ‘Tony’ and who was a member of a local soccer club. Tony’s enquiry concerned placing an order for 40 soccer balls. To the best of my recollection the conversation with Tony went as follows:
Tony said:‘I already have a quote for the 40 balls from your other store. I have previously dealt with you and Peter and thought that I would see you personally, as I am hoping to get a better price.’
I said:‘What other store are you talking about? We do not have another store.’
Tony said: ‘I thought that you were ‘Score Sports’.’
13.One comment which is often made to me by customers is along the following lines:
‘We have been to your warehouse out there.’
It has become my practice to enquire from customers the details of the warehouse to which they have referred.
The responses typically fall into two categories. The customers either mention ‘Score Sports’ or make reference [to] the Warehouse at Regents Park. The business which is conducted by the Respondent is situated at premises in Regents Park.
14.I say that the other conversations with customers noted in my journal involved comments being made by customers concerning their understanding of our business being connected with ‘Score Sports’.”
By contrast, as has been said previously, there was no evidence of confusion presented to the delegate.
Given the use of the same name “Score” by both parties and given the same, or at least similar, business carried on by each of the parties, and given also their virtual common location, I am of the opinion that the provisions of par (b) of s 60 of the Act are made out in the present case; that is to say, the use of the mark by the respondent would be likely to deceive or cause confusion because of the reputation of the applicant’s unregistered mark.
In those circumstances, noting that the matter has proceeded ex parte, I propose to allow the appeal.
I therefore make the following orders:
1.Order 2(a) as sought in the notice of appeal dated 6 January 1999, that is to say, that the registration of the respondent’s mark “Score Sports” be refused.
2. I order that the respondent pay the applicant’s costs of the proceedings.
I certify that the preceding twelve (12) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Beaumont. Associate:
Dated: 12 November 1999
Counsel for the Applicant: Mr M J Ward Solicitor for the Applicant: Ward Maxwell & Co Solicitor for the Respondent: No appearance Date of Hearing: 13 October 1999 Date of Judgment: 13 October 1999
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