Knott Investments Pty Ltd v Winnebago Industries, Inc
[2016] ATMO 15
•22 February 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Knott Investments Pty Ltd to registration of trade mark applications 1349324, 1349326, 1580489, 1619460, 1630007, 1630009, 1630023, 1637078, 1637079,1637080,1643113 & 1659113 (12, 25, 28, 37) - WINNEBAGO (VARIOUS) - in the name of Winnebago Industries, Inc.
Delegate:
Jock McDonagh
Representation:
Opponent: Patrick Flynn of counsel instructed by King & Wood Mallesons, Lawyers
Applicant: Matthew Darke of Senior Counsel and Ben Mee of counsel, instructed by Corrs Chambers Westgarth, Lawyers
Decision:
2016 ATMO 15
Section 52 opposition to registration – ss 42(b), 58, 59 and 60 grounds pressed – no ground of opposition established – application to proceed to registration
Background
Winnebago Industries, Inc (‘the Applicant’), a United States company incorporated in the State of Iowa, has filed twelve applications under the Trade Marks Act 1995 (‘the Act’) to register trade marks, details of which appear below:
Application No.
Trade Mark
Priority Date
Goods & Services
1349324
8.03.2010
Class 12: Vehicles, including motor homes and structural parts therefor
Class 37: Repair and maintenance of vehicles
1349326
WINNEBAGO
8.03.10
Class 12: Vehicles, including motor homes and structural parts therefor
Class 37: Repair and maintenance of vehicles
1580489
WINNEBAGO TOURING
29.04.13
Class 12: Recreational vehicles, class B vans; motor homes
1619460
WINNEBAGO
28.04.14
Class 25: Clothing, footwear, headgear
1630007
WINNEBAGO
23.06.14
Class 28: Model cars (toys or playthings); toy cars; toys and playthings
1630009
23.06.14
Class 28: Model cars (toys or playthings); toy cars; toys and playthings
1630023
WINNEBAGO TOURING COACH
17.04.14
Class 12: Recreational vehicles, namely, class B vans; motor homes
1637078
25.07.14
Class 12: Vehicles, including motor homes and structural parts therefor
Class 37: Repair and maintenance of vehicles
1637079
25.07.14
Class 12: Vehicles, including motor homes and structural parts therefor
Class 37: Repair and maintenance of vehicles
1637080
25.07.14
Class 12: Vehicles, including motor homes and structural parts therefor
Class 37: Repair and maintenance of vehicles
1643113
GoWinnebago
26.08.14
Class 12: Vehicles, including motor homes and structural parts therefor
Class 37: Repair and maintenance of vehicles
1659113
22.05.14
Class 12: Recreational vehicles, namely, campers, truck campers, travel trailers, fifth wheel trailers, towable trailers and toy hauler travel trailers
The applications were examined in accordance with section 31 of the Act and variously advertised as accepted for possible registration in the Australian Official Journal of Trade Marks.
Knott Investments Pty Ltd (‘the Opponent’) filed Notices of Intention to Oppose the applications and Statements of Grounds and Particulars as follows:
Application No.
Notice of Intention to Oppose
Statement of grounds and particulars
Grounds of Opposition (sections)
1349324
4.02.14
26.02.14
42(b), 58, 59, 60
1349326
4.02.14
26.02.14
42(b), 58, 59, 60
1580489
4.02.14
18.02.14
41, 42(b), 58, 60
1619460
11.11.14
11.12.14
42(b), 58, 60
1630007
13.10.15
13.02.15
41, 42(b), 58, 60
1630009
13.10.15
13.02.15
41, 42(b), 58, 60
1630023
11.11.14
11.12.14
41, 42(b), 58, 60
1637078
18.02.15
20.03.15
41, 42(b), 58, 60
1637079
18.02.15
20.03.15
41, 42(b), 58, 60
1637080
18.02.15
20.03.15
41, 42(b), 58, 60
1643113
13.03.15
10.04.15
41, 42(b), 58, 60
1659113
4.02.15
10.03.15
41, 42(b), 58, 60
Subsequently the parties have filed their evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’). As discussed below, this occurred in four groups of oppositions.
Both parties requested to be heard on application numbers 1349324, 1349326, and 1580489. That matter was set down to be heard in Sydney on 11 November 2015. For reasons I need not discuss here, the oppositions regarding the additional nine applications were also set down to be heard with the original three oppositions in a single opposition hearing.
The hearing was before me, as a delegate of the Registrar of Trade Marks, in Sydney on 11 November 2015. Patrick Flynn of counsel instructed by King & Wood Mallesons, Lawyers, appeared for the Opponent. Matthew Darke of Senior Counsel, with him Ben Mee of counsel, instructed by Corrs Chambers Westgarth, Lawyers, appeared for the Applicant.
The Opponent did not press the section 41 grounds for the applications noted above, and I formally find that that ground has not been established for any of the oppositions in which it was nominated as a ground of opposition.
Onus and Relevant Dates
The Opponent nominated the grounds of opposition detailed in the above table. The onus is upon the Opponent to establish at least one of these grounds on the ‘balance of probabilities’.[1]
[1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 (4 November 2015), following Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39], Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, (2009) 82 IPR 13 at [22] – [27] and Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599
The time at which the grounds of opposition must be established is the date of filing of the application.[2]
[2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595
Evidence
Because the oppositions to registration originally commenced in four groups, evidence in support and evidence in answer were filed as follows:
Applications Group 1: 1349324, 1349326 and 1580489:
Declarant
Position
Date Made
Annexures
Evidence in Support
Maurice Gonsalves (‘Gonsalves’)
Director of Opponent
23.05.14
MCG-1 to MCG-9
Evidence in Answer
Odette Margaret Gourley (‘Gourley 1’)
Lawyer for Applicant
28.08.14
OMG-1 to OMG-23
Applications Group 2: 1619460, 1630007 and 1630009:
Declarant
Position
Date Made
Annexures
Evidence in Support
Benjamin Bruce Binns (‘Binns 1’)
Director of Opponent
20.04.15
BBB-1 to BBB-15
Catriona Elanor Nagy (‘Nagy 1)
Lawyer for Opponent
21.04.15
CEN-1 to CEN12
Evidence in Answer
Odette Margaret Gourley (‘Gourley 2’)
Lawyer for Applicant
3.09.14
Applications Group 3: 1637078, 1637079, 1637080 and 1659113:
Declarant
Position
Date Made
Annexures
Evidence in Support
Benjamin Bruce Binns (‘Binns 2’)
Director of Opponent
11.06.15
BBB-1 to BBB-2
Catriona Elanor Nagy (‘Nagy 2)
Lawyer for Opponent
14.07.15
CEN-1 to CEN-13
Evidence in Answer
Odette Margaret Gourley (‘Gourley 3’)
Lawyer for Applicant
27.10.15
Application Group 4: 1643113
Benjamin Bruce Binns (‘Binns ’)
Director of Opponent
24.08.15
BBB-1 to BBB-26
Catriona Elanor Nagy (‘Nagy 3)
Lawyer for Opponent
14.07.15
CEN-1 to CEN-14
Evidence in Answer
Odette Margaret Gourley (‘Gourley 3’)
Lawyer for Applicant
27.10.15
The three Binns declarations shall collectively be referred to as the ‘Binns declarations’, and similarly the three Nagy declarations shall collectively be referred to as the ‘Nagy declarations’.
Counsel for the Opponent submitted that I should take into account, pursuant to regulation 21.19 of the Regulations, all of the Evidence in Support of the oppositions to the applications in Groups 2, 3 and 4 when considering the oppositions to the applications in group 1. Senior counsel for the Applicant objected to this submission.
Had the oppositions to applications in group 1 been heard in isolation to the other groups (as originally scheduled), then the evidence in the other matters would not have been considered. However, as counsel for the Opponent pointed out, since all 12 applications are being considered together, failing to take into account all of the evidence could potentially lead to inconsistent outcomes in relation to what are essentially the same trade marks, which is neither in the public interest nor in the interests of justice between the parties.
I propose to use all of the evidence in support in making my decision in all of the oppositions heard by me. The weight I shall give to various elements of the evidence will vary depending on the extent to which it is consistent with the totality of the evidence and the extent it is consistent with facts stated in the various Federal Court judgments exhibited in the Nagy Declarations.
Overview
The parties have a long and convoluted history, including relatively recent litigation in the Federal Court, both at first instance (‘First Instance Reasons’[3]) and on appeal before the Full Court[4](‘Appeal Reasons’). In the latter matter, Allsop CJ, at [2], noted:
The broad facts are that prior to 1978, and from approximately 1959, the applicant company, Winnebago Industries, Inc (Winnebago), a United States corporation, had carried on business in the United States, and in a number of other countries in the world, including the United Kingdom and Canada (but not Australia), manufacturing and selling recreational vehicles, such as motor homes and trailers. After 1978, Winnebago exported its recreational vehicles to Europe and other countries. From either 1978 or 1982, Mr Bruce Binns (the principal of Knott) and Mrs Binns, or Knott began manufacturing and selling recreational vehicles in Australia using the Winnebago name and logo in a form substantially identical to Winnebago’s use in the United States and elsewhere. Mr Binns had seen the name and logo while in the United States in the 1960s. Mr Binns’ and Knott’s use was without the knowledge (initially) or permission of Winnebago. Winnebago found out about the use of the name in Australia in 1985. Although Winnebago’s executives considered this a blatant infringement of Winnebago’s rights, nothing was done to stop the use, at least until 1991, when discussions took place between Winnebago and Knott, the content and effect of which was in dispute. A document entitled “Settlement Agreement” was entered into in 1992, the effect of which was in dispute. Knott asserted that the Settlement Agreement (in the context of conversations said to have taken place between Mr Binns and Winnebago’s founder, Mr John K Hanson) permitted Knott to use the name in Australia or that it represented that it could use the name in Australia. Winnebago asserted that the effect of the Settlement Agreement was as a “standstill agreement”, reserving its rights, holding the position and putting Knott on notice of Winnebago’s claims. In any event, it was not until 2010, 25 years after knowledge of use commenced, that Winnebago made demand upon Knott to cease using the name and logo.
[3] Winnebago Industries, Inc v Knott Investments Pty Ltd (No 2) [2012] FCA 785
[4] Knott Investments Pty Ltd v Winnebago Industries, Inc [2013] FCAFC 59
In the First Instance Reasons, Foster J upheld the Applicant’s claim that the Opponent had engaged in passing off and misleading and deceptive conduct by misappropriating the WINNEBAGO name and trade marks and using them in connection with the sale of recreational vehicles (‘RVs’) in Australia. The Opponent’s trade mark registration 729781 (identical to the Applicant’s trade mark 1349324) in Class 12 was cancelled by Foster J, who also ordered that the Opponent be permanently restrained from using the WINNEBAGO name and trade marks in connection with RVs.
The Opponent appealed that decision to the Full Court. The appeal was mainly unsuccessful, save that the Full Court modified the scope of the injunctive relief so as to permit use by the Opponent of the WINNEBAGO name and mark only where it did so in accordance with a strict and comprehensive disclaimer regime.[5]
[5] Knott Investments Pty Ltd v Winnebago Industries, Inc (No 2) [2013] FCAFC 117 (‘Relief Reasons’)
Explaining the Full Court’s modification to the injunctive relief originally ordered in the First Instance Reasons, Allsop CJ, in the Relief Reasons at [2], stated:
First, the respondent Winnebago was not enforcing a trade mark. Its suit was for passing off and in respect of misleading or deceptive conduct. (I leave aside claims not presently relevant.) Thus, the central consideration is the prevention of deception, not mere confusion as to trade origin. Secondly, although Mr Binns and Knott were to a degree attempting to exploit such goodwill and reputation of Winnebago as existed in Australia, he and it built their own business in Australia, to the knowledge of Winnebago. At least some of Knott’s reputation in the use of the name and logo was the product of the development of its own goodwill and reputation. Not all of the development of its business involved the taking advantage of Winnebago’s reputation in Australia: see [67] and [68] of the [Appeal Reasons]. Thirdly, the primary guiding principle of the injunctive relief should be, so far as possible, the protection of the public from being misled.
The First Instance and Appeal Reasons also establish a number of findings relevant to these proceedings. For example, in the First Instance Reasons, Foster J at [71] states:
Unsurprisingly, the evidence of Winnebago and its RVs being specifically referred to in Australia prior to late March 1978 was scant. On 29 October 1977 and again on 3 December 1977, advertisements for the sale of a US manufactured Winnebago RV appeared in The Sydney Morning Herald. In the first of these advertisements, the RV was referred to as a “... Fully imported, American, Winnebago, fully equipped with shower and bath”. It was otherwise described in glowing terms. It was advertised for sale by Ray McGuire Motorhome Centre in Cabramatta. In the second of these advertisements, the references were more brief.
Further, at [92], Foster J states:
I think that Bruce Binns well understood and indeed intended that, by adopting the Winnebago name and the Winnebago logos in connection with his business in Australia, he would get the benefit of any reputation which Winnebago and Winnebago RVs had in Australia. I also think that, even as early as 1978, he was of the opinion that there was sufficient awareness amongst the relevant consumers and the trade in Australia of Winnebago, its products and its reputation to make his decision to use the Winnebago marks worthwhile. His decision to do so was clearly not “... commercially irrelevant ...”. He had just experienced the collapse of the Freeway business and no doubt was keen to ensure that the new business did not suffer the same fate. One way to assist in that endeavour was to attempt to present the new business as an associate of the well-established and highly respected Winnebago. It is apparent from the passage extracted from the evidence of Bruce Binns at [91] above that he had an expectation that there would be, amongst those interested in either purchasing or renting RVs in Australia, a good smattering of persons who were aware of Winnebago and its RVs. He accepted that, in particular, persons who had travelled overseas were likely to have the relevant awareness.
The finding in the First Instance Reasons was upheld in the Appeal Reasons.[6]
[6] Appeal Reasons, per Allsop Cj at [37] (Cowdroy J agreeing at [82]), Jagot J at [145].
While the Opponent generally accepts the various Federal Court judgments, and indeed exhibits them in the Nagy Declarations, its approach to these proceedings is based on a novel approach to the resolution of the competing trade mark rights in Australia of the respective parties.
Simply put, the Opponent accepts that it is not entitled to registration of the WNNEBAGO name or device in Australia; however, the Opponent further submits that the Applicant also should not be the registered owner of the WINNEBAGO name and devices and that both parties should rely on their ‘common law rights’.
I note also that senior counsel for the Applicant seeks to employ section 219 of the Act - In an action or proceeding relating to a trade mark, evidence is admissible of the usage of the trade concerned and of any relevant trade mark, trade name or get-up legitimately used by other persons – to render inadmissible any evidence of any user that is not legitimate. Mr Darke SC submits that the Federal Court has determined that since at least 1982 the Opponent was committing the tort of passing off and engaged in false and misleading conduct, therefore the Opponent was not engaged in legitimate use of its WINNEBAGO marks. Therefore, senior counsel for the Applicant submits, any evidence of use by the Opponent is inadmissible.
Discussion
Section 58
Section 58 of the Act provides:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: for applicant see section 6.
In order to succeed under this ground of opposition, the Opponent must establish that:
· The respective trade marks of the Applicant and Opponent are either identical or substantially identical[7];
· The respective good and services of the parties are the ‘same kind of thing’[8]; and
· The Opponent’s trade mark use was prior to both the application to register and any actual use of the trade mark in Australia by the Applicant[9].
[7] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936; (1994) ALR 495.
[8] Re Hicks’ Trade Mark (1897) 3 ALR 75.
[9] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402.
The evidence establishes that since possibly 1978 but certainly 1982, the Opponent used the word WINNEBAGO and the device identical to application 1349324 (‘WINNEBAGO logo’) in connection with the manufacture and sale of RVs. Counsel for the Opponent submitted that all of the applications were substantially the same mark, being the word WINNEBAGO, either as the word itself, or with a device element as with the WINNEBAGO logo, or with a non-distinctive descriptive element, such as ‘touring’ or ‘go’.
On the other hand, senior counsel for the Applicant only conceded that applications 1349324, 1349326, 1619460, 1630007, 1630009, 1637078, 1637079 and 1637080 were substantially identical to the Opponent’s trade marks.
For the purposes of this limb of the ground, I will proceed on the basis that the Opponent’s characterisation of the various applications is correct and each is substantially identical to those used by the Opponent.
Despite counsel for the Opponent’s eloquent submission that the class 25 ‘clothing, footwear, headwear’ and class 28 ‘model cars(toys or playthings); toy cars; toys and playthings’ were goods likely to be directed at and acquired by the same consumers intending to consider purchasing a WINNEBAGO branded RV, I cannot concur. However, I do consider that both the class 12 and 37 goods and services claimed by the Applicant are the same kind of goods and services as those provided by the Opponent.
The key limb of this ground is that of first use of the trade mark. The Binns Declarations and the Federal Court judgments support the Opponent’s contention that it first used WINNEBAGO trade marks in 1978. Therefore, use of the Applicant’s trade marks in Australia before 1978 would defeat the Opponent’s claim of ownership in respect of the class 12 and 37 goods and services.
First use in Australia requires a cogent instance of first commercial use of the trade mark in Australia. It is well established that where a local trader seeks to appropriate the mark of a trader who has used that mark in other markets, a court will ‘seize upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia.’[10]. As explained by Deane J in Moorgate Tobacco Co Ltd v Philip Morris Ltd:[11]
The requisite use of the mark need not be sufficient to establish a local reputation and there is authority to support the proposition that evidence of but slight use in Australia will suffice to protect a person who is the owner and user overseas of a mark which another is seeking to appropriate by Registration under the Act.
[10] Seven-Up Company v OT Limited (1947) 75 CLR 203(‘Seven Up’) at 211 per Williams J.
[11] (1984) 156 CLR 414 at 432-3.
The rationale for the approach was described by Williams J in Seven Up at 211, as follows:
[I]n the absence of fraud it is not unlawful for a trader to become the registered proprietor under the Trade Marks Act of a mark which has been used, however extensively, by another trader as a mark for similar goods in a foreign country, provided the foreign mark has not been used at all in Australia at the date of the application for registration. But the position is different if at that date the mark has become identified with the goods of the foreign trader in Australia because those goods have been brought into Australia by the foreign trader himself or by some importer or in some other manner. The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia. It is not then a mark which another trader is entitled to apply to register under the Trade Marks Act because it is not his property but the property of the foreign trader.
The High Court’s decision in E&J Gallo Winery v Lion Nathan Australia Pty Ltd[12] (‘Gallo’) puts beyond doubt that the capacity of a trade mark to distinguish goods does not depend on whether the owner knowingly projects the goods into Australia, but simply on whether the goods are in the course of trade in Australia.[13] During the trading period, the trade mark functions as an indicator of the origin of the goods, irrespective of the location of the first sale.[14]
[12] (2010) 241 CLR 144.
[13] Gallo at [51].
[14] Gallo at [52].
Whilst a trade mark remains on goods, it functions as an indication of the person who attached or authorized the initial use of the mark.[15] Goods remain in the course of trade so long as they are upon a market for sale, and a trader’s mark is its property (and being used by it) so long as the goods are in the course of trade.[16] As I have previously noted in my decision in My Brilliance Pty Ltd v Brilliance Publishing Inc:[17]
Gallo stands for the proposition that once a trade mark owner itself supplies goods bearing the trade mark to another in the course of trade, subsequent sales of those same goods in Australia constitute use of the trade mark by the owner in Australia. The same is true where the goods are originally supplied in the course of trade by an authorised user of the trade mark and subsequently sold in Australia.
[15] Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89 at 136 per Gummow J.
[16] Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1966) 116 CLR 254 at 266-7 per Windeyer J.
[17] [2015] ATMO 63, at [21].
The authorities on ownership establish that, for the purpose of establishing proprietorship, it is not necessary for a foreign trader to go so far as to demonstrate that it has acquired such a right to a mark at common law as would enable it to maintain an action for passing off.[18] However, the existence of such a right would be sufficient for the purpose of establishing ownership.
[18] Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 400.
Notwithstanding Foster J describing the evidence as ‘scant’ in his First Instance Reasons, he did find as a fact that goods produced by the Applicant were advertised for sale under the WINNEBAGO brand on two occasions in 1977. Following the authorities I have cited above, I am satisfied that this amounted to the first use in Australia of the WINNEBAGO trade mark.
I am not satisfied that the Opponent has established the section 58 ground for any of the Oppositions.
Section 59
The Opponent pressed the section 59 ground only in respect of applications 1349324 and 1349326.
Section 59 of the Act provides:
59Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a)to use, or authorise the use of, the trade mark in Australia; or
(b)to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
The Opponent must establish that, as at the priority date of the relevant applications (8 March 2010), the Applicant did not intend to use or authorize the use of that trade mark in Australia. That intention need not be an intention to use the mark ‘immediately or within any limited time’.[19] The act of filing an application is prima facie evidence of an intention to use a mark.[20] In Intel Corporation v Magnatex International Pty Ltd[21], Hearing Officer Homann said:
It is not appropriate in opposition proceedings for the Registrar to instigate an investigation in detail of the use or intention to use in respect of each and every item which might be covered in the applicant's specification and the lodgment of the application and the applicant's statement of use or intention to use must on the principles explained in Aston v Harlee be accepted as prima facie evidence of the relevant use or intention to use. The onus must be on the opponent to lead evidence showing a lack of intention or incapacity to use the mark for the relevant goods.
[19] Ritz Hotel Ltd v Charles of Ritz Ltd (1988) 15 NSWLR 158 at 203.
[20] Kimberly-Clark Worldwide Inc v Goulimis (2008) 78 IPR 612 at [10].
[21] (1998) 41 IPR 406, at 412.
In his submissions, counsel for the Opponent suggested that the requisite intention required ‘[s]ome definite and present intention to deal in certain goods …’, citing Wilcox J in Nikken Wellness Pty Ltd v van Voorst[22] (‘Nikken’) at [59] – [61].
[22] [2003] FCA 816.
Mr Flynn submitted that the Applicant had no definite or settled intention to use any of its marks until after the decision in the First Instance Reasons in 2012. He submitted that this was bolstered by the Applicants 2006 letter (Gonsalves, Exhibit MCG-9) suggesting an intention not to use its trade marks in Australia – either itself directly, or through a licensee.
Mr Darke SC for the Applicant submitted that the 2006 letter merely asserts historical fact that was applicable in 2006, but not at the priority date. He continued to submit that subsequent events make it clear that the Applicant had an intention at the relevant date to enter the Australian market.
Having considered the evidence and submission, I prefer the Applicant’s argument. The 2006 letter only reflects the Applicant’s intentions in that year. I note that Foster J found in the First Instance reasons, at [16]:
In recent years, commencing in about 2008, Winnebago began to show real interest in manufacturing RVs for import and sale into the Australian market. For that reason, in 2010, it revisited its consideration of Knott’s activities in Australia.
I note that Nikken was a section 92 removal of a trade mark for non-use matter, where the registered owner had not in fact used the trade mark and there was evidence of ulterior motives.
In any event the chronology of the Applicants activities in the Australian market are not inconsistent with the requisite intention.
I am not satisfied that this ground of opposition has been established.
Sections 60 and 42(b)
Because the Opponent relies on the same reputation to support the sections 60 and 42(b) grounds of opposition, I propose to consider them together, and in the order that they were argued in the hearing.
Section 60 of the Act provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note:For priority date see section 12.
The Opponent contends that the substantial reputation it enjoys in the distinctive WINNEBAGO name and logo, which are identical or substantially identical to those applied for by the Applicant, would mislead or deceive consumers such that there would be a real risk that consumers would believe that all such goods and services came from the Opponent, or had the licence or approval of the Opponent.
Mr Flynn, for the Opponent, referred to the high volume of sales and substantial advertising expenditures during the period commencing in 1978 and continuing up to the Applicant’s earliest priority date. He also cited instances of actual consumer confusion exhibited in the Binns Declarations.
This evidence would, in normal circumstances, be sufficient to establish the relevant reputation under the test set out by Kenny J in McCormick & Company Inc v McCormick[23].
[23] (2000) 51 IPR 102 at [81] – [82].
However, Mr Darke SC submitted (as explained earlier) that the evidence be rejected as inadmissible because of section 219 of the Act. The reputation, submitted Mr Darke SC, was not legitimate as it was the result of misappropriation and unlawful use of the Opponent’s marks.
Alternatively, Mr Darke SC submitted that the statutory interpretation principle of in bonum partem[24], prevented section 60 to be construed to allow the Opponent to rely on reputation acquired through its wrongful conduct in appropriating the Applicants trade marks and passing off its goods by using those marks. The Opponent seeks to infer reputation from evidence of its sales, advertising expenditure and other promotions during a period Mr Darke SC submits the Opponent was engaged in passing off and misleading and deceptive conduct by so using the Applicant’s marks. Thus, submits Mr Darke SC, the Opponent cannot establish any reputation as at the earliest priority date, without relying on its unlawful conduct.
[24] See Pearce & Geddes Statutory Interpretation in Australia (8th Ed, 2014) at [2.41].
Mr Darke SC further submitted that by reason of the Full Court’s orders[25] in its Relief Reasons, a clear disclaimer as to source must accompany all use of the WINNEBAGO mark and logo by the Opponent. Thus, looking to what will happen in the market upon registration of the Applicant’s marks, the Opponent cannot establish that as a result of the use of the marks by the Applicant, a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. Senior counsel submitted that any consumer encountering the Opponent’s products (with the Court-ordered disclaimer[26]) would know that they do not come from the same source as the Applicant’s products.
[25] Gourley 1, Exhibit OMG-5.
[26] Eg: ‘This vehicle was not manufactured by, or by anyone having any association with, Winnebago of the United States’
Having carefully considered the parties’ submission, authorities and the Act, I am not satisfied that the second limb of section 60, that is subparagraph (b), is established. I do not consider that the use of the Applicant’s marks would be likely to deceive or to cause confusion. Rather it is the previous passing off and misleading and deceptive conduct, as identified in both the First Instance and Appeal Reasons, that would be the cause of any deception or confusion.
I am not satisfied that this ground of opposition has been established.
Section 42 of the Act relevantly provides:
42 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 Opponent nominated section 18 of the Australian Consumer Law (‘ACL’), which is contravened when a party engages in conduct in trade or commerce that is misleading or deceptive, or is likely to mislead or deceive customers. There must be a ‘real but not remote chance or possibility’ of misleading or deceiving regardless of whether it is less or more than 50 percent.[27]
[27] Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 55 ALR 25 at 34, per Bowen CJ, Lockhart and Fitzgerald JJ.
However, in the circumstances of this matter, if the Opponent has not established that the use of the trade mark would be likely to deceive or cause confusion in terms of section 60, it follows that neither can it establish that the use of the trade mark would ‘mislead or deceive’ under the ACL (or its common law equivalent), which is a higher standard. In Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited[28], Gibbs C.J. said at [8]:
The words of s. 52 require the court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive . . . . . The words “likely to mislead or deceive”, which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone. In McWilliams v. McDonalds [1980] FCA 159; (1980) 33 A.L.R. 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable: I need not add to what their Honours said on this subject (33 A.L.R.) at 397-8 and 412-3. I agree too with those learned judges that the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive: see at 399-400 and 413-4. I would add that evidence that members of the public were misled, not by any conduct of the defendant, but by other circumstances for which the defendant was not responsible, would be quite irrelevant.”
[28] [1982] HCA 44; (1982) 149 CLR 191.
In the same case Mason J. said at [30]:
“. . . the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”
I am not satisfied that this ground of opposition has been established.
Decision
Subsection 55(1) of the Act provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, 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.
The trade mark applications may then 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
66. Both parties sought their costs. Costs may follow the event and I award costs against the Opponent at the scale set out in the Regulations.
Jock McDonagh
Hearings Officer
Trade Marks Hearings
22 February 2016
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