Landcare Australia Limited v Jurgen Oehlschlager

[1994] ATMO 11

Trade Marks Act 1955
Decision of a Delegate of the Registrar of Trade Marks

Re:Opposition by Jurgen Oehlschlager to the registration of application 537068 in the name of Landcare Australia Limited.

On 10 September 1992, trade mark application 537068 was advertised accepted for registration.  The application is in the name of Landcare Australia Limited ("the applicant") and the services specified in the application are "services in this class being the education of the public in reference to an awareness of caring for and maintaining the land and the environment in Australia".  The trade mark the subject of the application, which was lodged on 29 June 1990, is as below:

trade mark

Registration of the application has been opposed, as provided for by sub-section 49(1) of the Trade Marks Act 1955, by Jurgen Oehlschlager ("the opponent"), on grounds which are as follows:

The above trade mark is substantially identical or deceptively similar to Trade Mark Numbers A 389815, A 430752, A 450560 & A 450561 registered in the name of Jurgen August Robert Oehlschlager.  Landcare have no permission from me, the registered proprietor, to use or alter my marks.

That notice of opposition was lodged on 9 November 1992.  The trade mark regulations allow 3 months from that date for the service of evidence in support of the opposition.  On 20 November 1992 the opponent served on the applicant a simple statement, dated two days previously:

The evidence on which I shall rely is on the fact of my registrations under the Trade Marks Act 1955 Nos. A 389815 (and as amended), A 430752, A 450560 & A 450561.

This completes my evidence in support.

As much of what follows hinges on the registrations on which the opponent wished to rely, I should note at this point that a delegate of the Registrar of Trade Marks ordered, by decision dated 30 July 1993, the removal of two of them, A 389815 and A 450560, from the register of Trade Marks. That removal was ordered under the terms of section 23 of the Trade Marks Act - failure to use the trade marks in the course of trade in the goods or services for which those marks were registered. A third registration, A 430752, has been removed under the terms of section 70 - failure to pay a fee for the renewal of the registration. The same delegate has also ordered that any application to restore that registration be refused. The surviving registration, number A 450561, relates to goods specified as "Textiles and textile goods, not included in other classes; bed and table covers". In general terms, such goods could be said to be mainly textile piece goods and textile covers for household use. The mark as so registered is

registered trade mark

Now the evidence used by the opponent in unsuccessfully resisting the removal of the former registrations, and which I will refer to as "the section 23 evidence" from this point, consists of a declaration by Mr Oehlschlager, with various supporting invoices and letters. That declaration was served on the present applicant on or about 19 October 1992, i.e. more than a fortnight before the opponent lodged opposition to the presently opposed application, and the evidence was clearly and explicitly served only as part of the section 23 proceedings. Mr Oehlschlager confimed subsequently that this was his intention and that is the view which was ultimately taken by the Trade Marks Office.

However, the fact that a proceeding under section 23 was on foot in relation to the now-removed registrations gave rise, at one stage, to an error in this Office. When we acknowledged the lodgement of the opponent's evidence in support of opposition to the registration of the present application, the material comprising the section 23 evidence was inadvertently referred to. This was done, in a routine letter sent to both parties, under a heading which specified the present application.

I will revert to the status of the section 23 evidence in the decision that follows.

The applicant has served evidence in answer to the present opposition, as provided for under the regulations.  It relies on a declaration by William Fairbanks, who is the secretary of the applicant company.  Mr Fairbanks has declared that the applicant's activities are clearly defined by the statement of services set out in the application for registration of its mark.  Its activities are essentially educational, including television exposure.  It issues, but does not sell, printed publications, stationery and stickers.

The opponent has also served evidence in reply, the final of the evidence stages ordinarily allowed by the regulations.  That evidence consists of nothing more than a letter written to the opponent by his former patent attorney.  The opponent's former attorney has expressed a professional interest in seeing material allegedly held by the applicant's attorney and relating to the origin of the drawing called (by the opponent's former attorney) the "Hands around Australia logo".

The evidence stages having closed, the applicant requested that the matter be heard, and that hearing was set down in Canberra on 12 November 1993.  The applicant's submissions were made by Annette Freeman, patent attorney, of the attorney firm of Spruson and Ferguson.    The opponent's present solicitor, Terry Forrest, of the firm of Stratford and Co., solicitors, made submissions by telephone. 

Mr Forrest commenced by asking that the matter be adjourned in order that the opponent could submit an amended notice of opposition which might make reference to copyright in the trade mark and to the possibility that the applicant's use of the mark might cause deception or confusion because of the prior use by the opponent.  Mr Forrest argued that the public interest lies in full disclosure of all matters of relevance to the decision I am to make in deciding this opposition.  He argued that, because the opponent had only recently had legal advice on the conduct of the present opposition, the proceedings had, at their commencement, been framed in an unduly narrow way.  What Mr Forrest envisaged was that, on amendment of the notice of opposition, the entire opposition could be re-done in some way.

I gave my decision on that question, refusing to allow any adjournment.  I now set down my reasons for that decision.

The terms of sections 49 provide that an opponent "may...by notice in writing specifying the grounds of opposition and lodged at the Trade Marks Office, oppose the registration of a trade mark".  The Act does not explicitly provide for more than one attempt at specifying the grounds of opposition, though notices of opposition can be, and frequently are, amended under the general amendment provisions of section 127.  The allowance of such amendments is a discretionary one, but they must always be approached with caution.  This is because the lodgement of such a notice is the trigger for the time-table provided, in the regulations, for the subsequent evidence stages aimed at the fleshing out of the opposition.  On the other hand, section 50 requires that the fate of the opposed application be considered fully and allows the Registrar to "take into account a ground of objection whether relied on by the opponent or not".

The net effect of the two sections is that I am able to consider any objection to registration and to base my consideration on any material which I am able, in natural justice, to consider.  Therefore, since it is always open to an opponent to introduce wide ranging material in its evidence, it was open to the opponent to rely on evidence in support of the wider grounds which Mr Forrest now wishes to invoke. 

Instead, the opponent has made a deliberate decision, on which he has subsequently acted, to oppose the present application on the basis of evidence which has been narrowly framed so as to relate only to the one narrow ground originally selected.  While I see no need or justification for expanding the grounds of opposition originally specified, Mr Forrest's proposal to allow the opponent to have another attempt at conducting this entire opposition cannot be allowed to succeed.  I do not think that this office should be prepared to allow opposition proceedings to be upended or completely re-directed, simply because an opponent has made an ill-advised decision.  As Ms Freeman has argued, the opponent took it upon himself to intervene in this matter and to follow the course he has chosen.  I appreciate that his decision may have been based on less than perfect knowledge but the Trade Marks Office has a responsibility to users of the Industrial Property system to ensure that matters are dealt with in an orderly way.  While it is a truism that public interest must be weighed heavily in following the procedures set down in the regulations, this Office must ultimately come to appropriate decisions through predictable steps.  A system which provides for total negation of its processes, simply because one of the parties now wishes to do substantially everything differently, is not a system but an undesirable chaos.  There can be no public interest in the creation of such a precedent.

Given my decision that the hearing would proceed, Mr Forrest then sought leave to adduce further evidence.  Such a step is provided for in regulation 47(1)b - by special leave of the Registrar given that the applicant would not give the consent necessary for further leave under regulation 47(1)a.

In the first instance, regulation 47(3) requires that, even if it is made at a hearing, any application for leave or special leave is to be supported by a declaration setting out the grounds on which the application is made and the nature of the further evidence which it is desired to lodge.  Under other circumstances it might have been necessary to adjourn the hearing to allow that requirement to be met.  However, having heard Mr Forrest's submissions, I was able, with only a brief interruption of the hearing of the opposition itself, to decide the question of the grant of special leave.  I refused to grant special leave and I now set down my reasons for so doing.

The special leave which the opponent requested was sought to allow the introduction of the section 23 evidence. Mr Forrest was specific on the point, however, that the further evidence would not include any other material which might relate to Mr Oehlschlager's prior reputation in his trade mark. The section 23 material has already been considered in another context by a delegate of the Registrar, and Mr Forrest drew my attention to the decision in that matter. That decision notes that the device used by the opponent "has been used if at all as ancillary to the provision of services in the course of Mr Oehlschlager's trade as a signwriter and advertising designer and in connection with certain community activities".

Mr Forrest argued that the section 23 evidence was able to establish a reputation in the opponent's mark, showing that use by the applicant "would be likely to deceive or cause confusion". That is a matter under section 28 of the Act, which provides:

28. A mark-
(a) the use of which would be likely to deceive or cause confusion;
(b) the use of which would be contrary to law;
(c) which comprises or contains scandalous matter; or
(d) which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

Mr Forrest argued that the reputation said to be established by the section 23 evidence might trigger s 28(a) of the Trade Marks Act. However, that position ignores the established practice of this Office in applying section 28 as a whole. That practice is as per the Official Journals of 19.7.90 and 12.9.91.  The Registrar understands the action of s 28 to be limited, in matters such as this, by the conjunctive nature of the section.  Its action is limited to situations where, in addition to its being shown that use of an applicant's trade mark was, at the relevant date, likely to deceive or cause confusion, an applicant for registration has been shown to have demonstrated, prior to the date of application, either blameworthy conduct or conduct otherwise not entitled to protection in a court of justice.

It was Mr Forrest's second contention that I could find in the section 23 decision some suggestion that, prima facie, copyright rested with the opponent. The applicant, however, has said that it will not concede that point.

The decision relied on by Mr Forrest goes on to make a point about the determination of copyright claims:  "It may well be that Mr Oehlschlager has a legitimate claim to copyright in the designs of the trade marks but that is a matter for the decision of a court of competent jurisdiction.  It is not within the competence of the Registrar of Trade Marks".  It seems to me that, particularly since the applicant disputes the copyright claim, I can go no further in determining any aspect of the questions that might or might not be open under copyright law.

In total, then, evidence that is relevant to s 28(a) in isolation cannot affect the outcome of the opposition. Nor, as I have said, is it within the Registrar's competence to make even prima facie decisions about disputes as to the law of copyright. Therefore, while I have considered the matter in terms of the liberal guidelines set out in Studio SrL v Buying Systems (Aust) Pty Ltd, (1992) AIPC 90-858, it seems to me that the proposed further evidence sought to be introduced cannot affect the final outcome.

Accordingly, it remains only to decide the opposition in terms of the ground relied on by the opponent, there being no other apparent reason to hesitate before deciding the fate of the application.

Mr Forrest's submissions here were brief. He argued that the opponent is the proprietor of a trade mark registered in class 24, no 450561, the terms of which I have referred to above. This was, he argued, substantially similar to the applicant's mark and had been in use prior to the date of first use by the applicant. Hence, use of the applicant's mark would cause deception or confusion, and such a registration was proscribed by s 33(2) of the Trade Marks Act.

That section provides that:

Subject to this Act, a trade mark is not capable of registration by a person in respect of services if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same services, of services of the same description as those services, or of goods that are closely related to those services, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

Ms Freeman simply noted that there were, on a side by side comparison, more differences than similarities between competing marks.  However, her primary argument was that there was no nexus whatsoever between the textile goods covered by the opponent's registration and the services the subject of the application.

Section 33 will operate only if I find that the goods covered by the opponent's registration are closely related to the services specified in the present application.  That cannot be, and Mr Forrest did not press the matter.  Let me, therefore, simply rely on the analysis of the law on that question in Shanahan's Australian Law of Trade Marks and Passing Off, at pages 193 - 194,

The argument could otherwise be raised under section 28 of the Act, though again it must fail.  That is so in view of both the conjunctive action of that section and the lack of any sort of nexus between the goods specified in the opponent's registration and the services specified by the applicant.

Accordingly, I decide that the existence of the opponent's registration does not impede, either under s 28 or s 33, the registration of the application now at issue.  There being no apparent impediment to registration, the applicant has met the onus on it to show that it is entitled to have its mark registered.  I therefore direct that the application proceed to registration.

No submissions were made as to costs and I make no award.

T. Williams
Hearing Officer

7 February 1994